Complainant is Prosper Funding LLC of San Francisco, California, United States of America ("United States"), represented by Osha Liang LLP, United States.
Respondent is Domain Privacy of Beaconsfield, Victoria, Australia / Brent Groot, RUSHN Pty Limited of Wallsend, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Synergy Wholesale Pty Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2015. On October 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 7, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 10, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 3, 2015.
The Center appointed Roberto Bianchi as the sole panelist in this matter on November 11, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a wholly-owned subsidiary of Prosper Marketplace, Inc. Both companies have been providing consumer loan services since 2006, mainly through the website "". Complainant is a United States peer-to-peer lending marketplace. Presently Complainant has over two million members and USD four billion in funded loans.
Complainant's parent company, Prosper Marketplace Inc., owns the following United States trademark registrations:
PROSPER (and design), Reg. No. 3253371, Reg. date June 19, 2007, filed on April 13, 2006, for "telecommunications services, namely, electronic transmission of data and messages; online interactive bulletin board and chat room for transmission of messages among users concerning financial matters" in International Class 38. First use/first use in commerce: February 5, 2006.
PROSPER (and design) Reg. No. 3274817, Reg. Date August 7, 2007, filed on April 13, 2006, for "online website services relating to matching borrowers with potential lenders in the field of consumer lending in an auction-type environment via a global computer network" in International Class 35. First use/First use in commerce: February 5, 2006.
PROSPER, Reg. No. 3277812, Reg. Date August 7, 2007, filed on February 3, 2006, for "telecommunications services, namely, electronic transmission of data and messages; online interactive bulletin board and chat room for transmission of messages among users concerning financial matters" in International Class 38. First use/First use in commerce: February 5, 2006.
PROSPER, Reg. No. 3374113, Reg. Date January 22, 2008, filed on February 3, 2006, for "online website services relating to matching borrowers with potential lenders in the field of consumer lending in an auction-type environment via a global computer network" in International Class 035. First use/First use in commerce: February 5, 2006.
The disputed domain name was registered on January 3, 2012.
On February 12, 2015, Complainant sent Respondent a cease-and-desist letter. 5. Parties' Contentions A. Complainant
In its Complaint, Complainant contends as follows:
Complainant has long-established rights in both common law and registered service marks for the word PROSPER and variations thereof, for financial services, namely consumer lending. The disputed domain name is confusingly similar to such service marks of Complainant.
Respondent has no rights or legitimate interests in the disputed domain name because it registered the disputed domain name in bad faith, and therefore cannot be found to have made a bona fide offering of services.
Respondent is unlawfully using Complainant's registered trademarks on the website under the disputed domain name without authorization or approval by Complainant. Complainant has not granted permission to Respondent to use the disputed domain name and is not related in any way to Respondent. Respondent is not making a legitimate fair use of the disputed domain name, but rather is capitalizing on the fame and goodwill of Complainant. Respondent is not commonly known by the disputed domain name. Respondent is not making fair use of the disputed domain name because its intent is to divert consumers from Complainant's legitimate business and unlawfully profit from online advertising.
While Respondent's website states, "we are a private loan review site aimed at educating consumers about all aspects of peer-to-peer and loans," Respondent is unlawfully diverting Complaint's consumers to the "www." website through unauthorized use of Complainant's trademarks and trade name. Respondent unlawfully is profiting from this use by and through advertisements offered on the website under the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Respondent registered and is using the disputed domain name to intentionally attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's services. Respondent's registration and use of the disputed domain name indicates that such registration was done for the specific purpose of trading on the name and reputation of Complainant's service marks. Respondent's action of registering the disputed domain name, and using it to direct Internet traffic to its website, evidences a clear intent to disrupt Complainant's business, deceive consumers, and trade off Complainant's goodwill by creating an unauthorized association between Respondent and Complainant's family of service marks. Respondent's registration and use of the disputed domain name is in bad faith because Respondent did so after Complainant had established rights and publicity in the PROSPER service marks. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting printouts of the corresponding certificates (see section 4 above) Complainant has shown that its parent company, Prosper Marketplace Inc., owns several United States trademark registrations for the service mark PROSPER. Accordingly, the Panel is satisfied that Complainant has rights in the mark PROSPER. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.8. ("Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP.")
The Panel notes that the dominant element in the disputed domain name is the PROSPER mark, to which the generic terms "loans" and "review", and the generic Top-Level Domain ("gTLD") ".com" are added. It is well established that the addition of generic terms and a top level domain to a mark generally is inapt to distinguish a domain name form the mark. See WIPO Overview 2.0, paragraph 1.9. ("The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.")
Moreover, since Complainant provides financial services consisting of consumer loans, the generic term "loans" contained in the disputed domain name rather reinforces the association of the disputed domain name with the PROSPER mark. Also, since the term "review" apparently refers to commenting on Complainant's services, it further reinforces such association. For these reasons, the Panel concludes that the disputed domain name is confusingly similar to Complainant's mark. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because it registered it in bad faith, and therefore cannot be found to have made a bona fide offering of services. Complainant further states that Respondent is unlawfully using Complainant's registered trademarks on the website under the disputed domain name without authorization or approval by Complainant. Complainant also states that it has not granted permission to Respondent to use the disputed domain name, and that Complainant is not related in any way to Respondent. Complainant contends that Respondent is not making a legitimate fair use of the disputed domain name, but rather is capitalizing on the fame and goodwill of Complainant. Further, Respondent is not commonly known by the disputed domain name. Nor is Respondent making fair use of the disputed domain name because it intends to divert consumers from Complainant's legitimate business and unlawfully profit from online advertising.
In support of these contentions Complainant submits a printout of the website at the disputed domain name as of September 27, 2015. The Panel notes that this website, as suggested by the term "review" in the disputed domain name, does contain a review of Complainant consumer loan services, which seems to be a legitimate exercise of criticism or comment. However, the website also prominently contains links to commercial websites such as "/FhaHomeLoans", an online lender in Texas, and to other companies unrelated to Complainant, also offering financial services.
In the opinion of the Panel, the posting of these links to businesses competing with Complainant strongly suggests that Respondent's review of Complainant services is ancillary to what appears to be the real purpose of the "www." website: posting links to online locations offering financial services in competition with Complainant, thus allowing Respondent to collect fees or commissions. In the Panel's view, this is neither a use in connection with a bona fide offering of goods pursuant to Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to Policy paragraph 4(c)(iii). See Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation,WIPO Case No. D2007-0440 ("The Panel finds that the Respondent's domain name provides links to goods and services of the Complainant's competitors through what appears to be a "click-through" site. In similar circumstances, prior UDRP panels have decided that the use of a confusingly similar domain name in connection with a "click-through site" does not serve to establish a bona fide offering of goods and services. (See The Evening Store v. Henry Chan,WIPO Case No. D2004-0305, and Lilly ICOS LLC v. Saban Mihailovic,WIPO Case No. D2005-0356.")
The Panel also agrees with Complainant that there is no evidence that Respondent is known – commonly or otherwise – by the disputed domain name pursuant to Policy paragraph 4(c)(ii).
In the Panel's opinion, Complainant's contentions and supporting evidence, taken together, are apt to constitute a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. See WIPO Overview 2.0 paragraph 2.1. ("[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP").
Since Respondent has not presented the Panel with any comments or evidence in its own favor, the Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant has shown that several registrations for the PROSPER mark by its parent company pre-date the registration of the disputed domain name by at least four years. See section 4 above.
The Panel notes that the disputed domain name clearly refers to consumer loan services provided by Complainant under the PROSPER mark. Because Respondent's review and comments on Complainant's services presuppose knowledge of Complainant's PROSPER mark, the Panel believes that Respondent knew of, and had Complainant and PROSPER mark and services in mind, at the time of registering the disputed domain name. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith.
Also, as shown by Complainant, until recently the website at the disputed domain name included comments on Complainant's consumer loan services together with links to commercial websites where financial services in competition with Complainant are offered, from which Respondent presumably was seeking to extract a profit via click-through and referral fees. The Panel agrees with Complainant that Respondent, by using the disputed domain name in such a manner, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which is a circumstance of registration and use of the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iv). The Panel is aware that at the end of the main page of the website at the disputed domain name there appears a disclaimer stating, "Prosper Loans Review is not in any way connected with, nor indorsed by P. Instead, we are a private loan review site aimed at educating consumers about all aspects of P-Peer and loans". The Panel notes that this disclaimer does not suffice to dispel the confusion with Complainant's PROSPER mark since the legend is in a rather small print, and located at the foot of the webpage. By the time the Internet user reaches the disclaimer, confusion with Complainant's PROSPER mark has already been created.
Lastly, a Panel's visit to the website at the disputed domain name conducted on November 18, 2015 showed as only content a legend stating, "PendingWIPO Case No. D2015-1746 ". In the Panel's opinion this text, together with the use of the disputed domain name as described above, suggest that Respondent does not contemplate any use for the disputed domain name other than seeking to extract a profit from Complainant's PROSPER mark, i.e., a use in bad faith.
The Panel concludes that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: November 23, 2015
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