The Complainant is Prosper Funding, LLC of San Francisco, California, United States of America ("United States") represented by Osha Liang LLP, United States.
The Respondent is Pongskorn Petwong of Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name (the "disputed domain name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2015. On October 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on October 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 10, 2015.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 13, 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
The Complainant, Prosper Funding LLC, is a wholly-owned subsidiary of Prosper Marketplace, Inc. These Companies have been providing services in the consumer loan industry since 2006.
The Complainant's services are provided mainly through the website to which the domain resolves.
The Complainant claims to have more than two million members and four billion dollars in funded loans.
The Complainant is the owner of the following trademark registrations (among others):
Reg. No.
Filing Date/Granting Date
Trademark
Class
Territory
3253371
April 13, 2006/June 19, 2007
PROSPER (stylized)
38
United States of America
3253372
April 13, 2006/June 19, 2007
36
United States of America
3274817
April 13, 2006/August 7, 2007
PROSPER (stylized)
35
United States of America
3277812
March 2, 2006/August 7, 2007
PROSPER
38
United States of America
3374113
March 2, 2006/January 22, 2008
PROSPER
35
United States of America
The Complainant claims to also have long-established rights in common law marks for the word "PROSPER" and variations thereof, for financial services, namely consumer lending.
The disputed domain name was registered on May 7, 2015. 5. Parties' Contentions A. Complainant
The Complainant argues the following: A. Identical or Confusingly Similar
That, since at least as early as 2006, it has continuously operated a website using the domain name offering services related with the consumer loan industry.
That it has filed an application for registration in the United States Patent and Trademark Office for the trademark "PROSPER.COM" for "online website services providing a platform for borrowers and investors in the field of consumer lending via a global computer network, namely, matching borrowers with potential lenders in the field of consumer lending" in Class 35 and "providing online information in the field of financial planning and management in the fields of consumer lending services; facilitating and arranging for the financing of consumer loans; evaluation of credit bureau data and evaluation of the credit worthiness of companies and private individuals" in Class 36.
That the disputed domain name is likely to cause confusion as to source or origin because the Respondent is unlawfully using the Complainant's registered trademarks on the website to which the disputed domain name resolves.
That the similarity between the disputed domain name, the services offered in the website to which it resolves, the trademarks of the Complainant, and the services covered by them is likely to cause consumer confusion. B. Rights or Legitimate Interests
That the Respondent is not making legitimate fair use of the disputed domain name, but rather is unfairly capitalizing on the fame and goodwill of the Complainant.
That the Respondent is unlawfully using the Complainant's registered trademarks on the website to which the disputed domain name resolves without any authorization or approval by the Complainant.
That the Respondent is not commonly known by the disputed domain name.
That the Respondent is not making a noncommercial fair use of the disputed domain name because his intent within the website to which the disputed domain name resolves is to divert consumers that are searching for the Complainant and its business. C. Registered and Used in Bad Faith
That the Respondent registered and is using the disputed domain name to intentionally attract (for his commercial gain) Internet users to the website to which the disputed domain name resolves, creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's services.
That the 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 the Complainant's service marks.
That by registering the disputed domain name the Respondent was attempting to deceive consumers and direct Internet traffic to the website to which said domain resolves.
That the Respondent's use of the disputed domain name (and the website to which it resolves) shows an attempt to disrupt the Complainant's business, and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's PROSPER family of service marks.
That the Respondent has a history of registering domain names in bad faith, adding to the bad faith of the Respondent in this case. B. Respondent
The Respondent did not reply to the Complainant's contentions.
As the Respondent has failed to submit a Response to the Complainant's contentions, the Panel may choose to accept as true all of the Complainant's reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's PROSPER trademarks because it wholly incorporates them.
The term "loan" is likely to increase confusing similarity between the disputed domain name and the Complainant's trademarks. Users and consumers could relate the term "loan" with the services provided by the Complainant under its trademarks, which is why the addition of said term does not exclude the likelihood of confusion between the disputed domain name, the Complainant's trademarks and the Complainant's services (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The addition of the generic Top-Level-Domain ("gTLD") ".com" is immaterial for purposes of assessing the confusing similarity test, because said suffix has no legal significance and does not have any importance in the confusing similarity test (see Diageo p.l.c. v. John ZuccariniWIPO Case No. D2000-0541).
The addition of the hyphens in the disputed domain name does not add any distinctiveness to said domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where respondents may have rights or legitimate interests in the disputed domain name:
(i) Before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if they have acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted any evidence showing an actual bona fide use, or preparations to use the disputed domain names with a bona fide offering of services, nor has the Respondent demonstrated that it has been commonly known as .
The Complainant has argued that it has not, in any way, authorized the Respondent to use the trademarks PROSPER in any manner. This assertion has not been denied by the Respondent, and thus no rights or legitimate interests over the disputed domain name have been proven (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
The Respondent has not demonstrated that it has any rights over the PROSPER trademarks nor provided any arguments/evidence to support his use of said term.
On the other hand, the Complainant has shown that it is the rightful owner of the trademarks PROSPER.
However, from the evidence provided by the Complainant (in Annex 11) this Panel notes that the Respondent has registered more than eighty domain names related to money lending and cash loans (which happen to be related with the services offered by the Complainant under its trademarks PROSPER).
In addition, this Panel notices that some of these domain names include trademarks that have been registered before the United States Patent and Trademark Office. Such is the case of: a) the domain , which includes the trademark Reg. No. 2098979 NATIONAL CASH ADVANCE (stylized); b) the domain , which incorporates the trademark Reg. No. 1766918 GLOBALPAY; c) the domains , and , which contain the trademark Reg. Nos. 3087794 MAGNUM CASH ADVANCE THE SMARTER PAYDAY LOAN and 78611688 MAGNUM CASH ADVANCE YOUR MULTIPAYMENT PAYDAY LENDER; d) the domain which incorporates the trademark Reg. No. 3701135 WE FIX MONEY; e) the domain which includes the trademark Reg. No. 2821354 PAYDAY ONE and the domain name which contains the trademark Reg. No. 0876459 SMALL LOANS BIG CHANCES.
From this Panel's perspective, the above evidence shows that the Respondent is familiarized with United States financial Institutions (that focus their services on the consumer loan industry), and some of their trademarks.
In light of the above, and taking into account the website to which the disputed domain name resolves, the Respondent is displaying the term PROSPER in connection to an offering of services that are covered by the trademarks of the Complainant, it is reasonable to infer that the Respondent knew about the existence of the Complainant's trademarks when registering the disputed domain name.
Annex 10 of the Complaint proves that the Respondent is attempting to divert traffic to a website that offers the same services that are covered by the Complainant's trademarks, increasing the potential for confusion (see AltaVista Company v. O.F.E.Z. et al.,WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan,WIPO Case No. D2001-1220; CSA International v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071). This illustrates that the Respondent has no rights or legitimate interests in the disputed domain name.
The evidence comprised on the record shows that the Respondent is causing the disputed domain name to resolve to a website which displays the trademark PROSPER, and where services similar to those normally offered by the Complainant are being offered. This fact proves the Respondent's intention to attract and divert Internet users for commercial gain. Given the circumstances of this case, this cannot be seen as a fair or legitimate use of the disputed domain name (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
In the Panel's view, the Respondent in this case is not entitled to register a domain name incorporating the trademarks of the Complainant, because this conduct can cause confusion among Internet users and consumers (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
There is no evidence on the record that would indicate that the Respondent has any rights or legitimate interests in the disputed domain name. Mere registration of a domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092).
Therefore, since the Respondent is making a commercial use of the disputed domain name without permission or consent of the Complainant, by offering services similar to those of the Complainant, and displaying the Complainant's trademark PROSPER, it can be deducted that the Respondent is trying to generate an impression of affiliation or sponsorship with the Complainant, and to deviate Internet traffic for profit. Therefore, the Panel finds no rights or legitimate interests on the side of the Respondent.
The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to their website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
Given the use that the Respondent has made of the website associated with the disputed domain name, and taking into account the evidence comprised in Annex 11 (see evidentiary analysis above), which has not been contested by the Respondent, the Panel concludes that the Respondent knew about the Complainant's PROSPER trademarks and that by registering the disputed domain names, there could be confusion among Internet users searching for the Complainant's websites and services. The conduct of the Respondent constitutes a risk of deception and confusion among consumers.
The website has since been taken down, but as annexed in the Complaint, the Respondent was offering services that were similar to those marketed and provided by the Complainant, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to such websites, creating a likelihood of confusion with the Complainant and its PROSPER trademarks (see e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA,WIPO Case No. D2007-1143).
The Respondent (by registering and using the disputed domain name) has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name, with the purpose of attracting Internet users to his web site for commercial gain (see Produits Berger v. Romana Go,WIPO Case No. DPH2005-0001).
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
The third element of the Policy has been met. 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 the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: November 27, 2015
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