The Complainant is Ripple Labs, Inc. of San Francisco, California, United States of America, represented by Feldman Gale, P.A., United States of America.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama/ Test Test of Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2015. On October 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 the Complainant on November 4, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same date.
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 the Respondent of the Complaint, and the proceedings commenced on November 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2015.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 4, 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 indicates that it offers a payment network that can be used to transfer currencies.
The Complainant is the owner of the following trademark registrations (among others):
Reg. No.
Filing Date/Granting Date
Trademark
Class
Territory
4,532,727
August 30, 2013/ May 20, 2014
RIPPLE
38
United States of America
4,528,772
August 30, 2013/May 13, 2014
RIPPLE
36
United States of America
4,532,726
August 30, 2013/ May 20, 2014
RIPPLE
9
United States of America
4,532,724
August 30, 2013/ May 20, 2014
38
United States of America
4,528,771
August 30, 2013/May 13, 2014
36
United States of America
The Complainant indicates that some of its RIPPLE marks have been used in commerce as early as July 31, 1998.
The Complainant is the owner of the domain , which was registered on February 11, 2006.
The disputed domain name was registered on August 11, 2015. 5. Parties’ Contentions A. Complainant
In essence, the Complainant argues the following: 1. Identical or Confusingly Similar
That by virtue of its trademark registrations, it has long-standing trademark rights in (and to) the RIPPLE marks.
That the disputed domain name (and the phishing scam displayed on the website to which the disputed domain name resolves), are confusingly similar to its trademark registrations.
That the disputed domain name is a slightly misspelled version of its trademarks and its domain name . 2. Rights or Legitimate Interests
That the Respondent does not own any trademark or service mark registrations encompassing the disputed domain name, nor any variations thereof.
That the Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name.
That the Respondent is using a phishing scam on the website to which the disputed domain name resolves with an intent for commercial gain to misleadingly divert consumers from the Complainant’s goods and services offered under the RIPPLE marks.
That the Respondent is engaging in the unlawful diversion of the Complainant’s consumers to competitors for commercial gain. 3. Registered and Used in Bad Faith
That the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.
That by using the disputed domain name, the Respondent is intentionally redirecting Internet users to its website (offering goods and services that compete with those of the Complainant) creating a likelihood of confusion with the RIPPLE marks as to the source, sponsorship, affiliation, or endorsement of the products found on the website of the Respondent.
That the conducts displayed by the Respondent directly disrupt the Complainant’s ability to conduct business whereby consumers looking for the Complainant’s goods/services will be diverted to the Respondent’s linked site, which is not affiliated with (or sponsored by) the Complainant.
That the website to which the disputed domain name resolves is a clear replica of the Complainant’s website, suggesting that the Respondent was aware of the Complainant’s trademarks and its use on the date of registration of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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.
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). A. Identical or Confusingly Similar
The Complainant is the owner of trademark registrations for RIPPLE, among others.
The disputed domain name is confusingly similar to the Complainant’s RIPPLE trademark because it wholly incorporates said mark.
The addition of the letter “s” and the term “labs” after the trademark RIPPLE is irrelevant for the purposes of this analysis, as they do not provide any distinctiveness to the disputed domain name. The referred addition is essentially insignificant, because the disputed domain name does not create a new visual or orthographical impression than the one produced by the Complainant’s trademark.
The referred addition does not prevent the confusing similarity between the Complainant’s trademark and the disputed domain name (seeSanofi v. Contact Privacy Inc. Customer 0132380420 / ICS inc.,WIPO Case No. D2013-0367. See alsoExpress Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302). Moreover, the corporate name of the Complainant is Ripple Lab, Inc., which is why the addition of said letter and term to the disputed domain name (creating an overall impression for “rippleslabs”) is likely to increase confusion.
The addition of the generic Top-Level Domain (“gTLD”) “.com” in this case is immaterial for purposes of assessing confusing similarity. This Panel will not take into account the gTLD “.com”, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
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.
There is no evidence on the record indicating that the Respondent has any rights to, or legitimate interests in the disputed domain name. The Respondent has not demonstrated that it has any rights over the RIPPLE trademark nor provided any arguments/evidence to support its use over it. 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).
The Respondent has not submitted any evidence showing an actual bona fide use, or preparations to use the disputed domain name with a bona fide offering of services, nor has the Respondent demonstrated that it has been commonly known by the disputed domain name.
The Complainant has argued that it has not, in any way, authorized the Respondent to register or use the trademark RIPPLE in any manner. This assertion has not been denied by the Respondent, showing an apparent lack of rights or legitimate interests over the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
On the other hand, the Complainant has shown that it is the rightful owner of the trademark RIPPLE.
From the evidence filed by the Complainant, this Panel notices that the website to which the disputed domain name has resolved, displayed the RIPPLE (stylized) trademark. This shows that the Respondent knew about the existence of the Complainant’s trademarks when registering the disputed domain name.
In the Panel’s view, the Respondent in the circumstances of this case does not have rights or legitimate interests in the disputed domain name which incorporates the trademark of the Complainant, because the Respondent’s conduct can cause confusion among the Internet users and consumers (See The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
The evidence contained in the file does not show any trace or existence of disclaimers clarifying that the Respondent and its website are not affiliated to, sponsored by, and/or owned by the Complainant. On the contrary, said evidence shows that the disputed domain name has resolved to a site that actually reproduces the RIPPLE (stylized) trademarks, registered by the Complainant.
Previous UDRP panels have indicated that no bona fide offering can be found where the website to which the disputed domain name resolves is using the complainant’s logo and its trademarks without displaying a proper disclaimer. This Panel agrees (see e.g., Houghton Mifflin Co. v. Weathermen, Inc.,WIPO Case No. D2001-0211; R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201; Easy Heat, Inc. v. Shelter Products,WIPO Case No. D2001-0344).
The Respondent is benefitting from the confusion created by the disputed domain name. In this case, Internet users could assume that the disputed domain name (and the website to which it resolves) are related to the Complainant and its products/services, believing that they will be conducted to the Complainant’s website. Instead, they will actually be conducted to the site of the Respondent, a use that cannot be considered as a bona fide offering of goods or services (see CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul,WIPO Case No. D2004-0988 and Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206).
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 on-line 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 made of the website associated with the disputed domain name, and attending to the facts that have been proven by the Complainant, the Panel is satisfied that the Respondent knew about the Complainant’s RIPPLE trademark when registering the disputed domain name, and that the disputed domain name would create 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.
From the evidence filed by the Complainant, which was not rebutted by the Respondent, it looks like the Respondent is offering commercial services on the website to which the disputed domain name resolves. With that in mind, this Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to said website, creating a likelihood of confusion with the Complainant’s RIPPLE trademark (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,WIPO Case No. D2007-1415; Owens Corning v. NA,WIPO Case No. D2007-1143).
The fact that the website to which the disputed domain name resolved gives the impression of being a website that is endorsed by, or affiliated with the Complainant, and since there is no disclaimer or other information to the contrary (i.e., information that could explain that the Respondent is not associated to the Complainant), shows that 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 its website.
Moreover, this Panel notes that the Respondent has been subject to another UDRP proceeding, in which the Respondent registered and used a domain name incorporating the RIPPLE trademark (see Ripple Labs, Inc. v. Whoisguard Inc. / CCSAFDSAFDS CCD, Test Test,WIPO Case No. D2015-1357) and that, in this case and in the cited UDRP proceeding, the Respondent took active steps to hide its true identity by providing false contact details. These facts add to the bad faith in the registration and use of the disputed domain name.
Therefore, the Panel finds that the Respondent has registered and is using 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: December 18, 2015
Full & Egal Universal Law Academy