The Complainant is Opportunity Financial, LLC of Chicago, Illinois, United States of America (“United States”), represented by Powers & Greengard, United States.
The Respondent is Zhichao Yang of Hefei, China. 2. The Domain Name and Registrar
The disputed domain name, (the “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 July 26, 2016. On July 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 27, 2016, 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 August 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 30, 2016. 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 is engaged in the financial services business. It has an operating website connected to the domain name, , a domain name which it registered on January 12, 2010. The website makes provision for online applications for personal loans and features inter alia a strap line reading “***** Become one of our 25,000+ happy customers today. Rated 5/5 stars by Google customers”.
The Domain Name was registered on July 22, 2012 and the Complainant contends that the Respondent was the original registrant. However, according to the Registrar (in response to the Center’s request for Registrar verification) the Domain Name has been registered to the Respondent “since at least November 15, 2013.” Using the WhoIs history research facility available at DomainT the Panel finds that the Domain Name registration was transferred by the original registrant to the Respondent on a date between November 1, 2012 and July 20, 2013.
The Domain Name is connected to a typical pay-per-click parking page featuring a bullet point list of links all related to loans, e.g. “Apply for A Loan”, “Get A Loan”, “Payday Loan Company”, “Personal Loan Quick Cash”.
Between January 2013 and January 2016 the Respondent was found on at least 30 occasions to be in possession of bad faith domain names registrations. Of significance is the fact that a large number of those domain names targeted trade marks held by North American financial institutions such as John Hancock Life Insurance Company, The Toronto Dominion Bank, Bloomberg Finance L.P., Capital One Financial Corporation, MoneyGram International Inc., Kabbage Inc., Fair Isaac Corporation, Wells Fargo & Company and OneWest Bank FSB. 5. Parties’ Contentions A. Complainant
The Complainant acknowledges that it does not have a registered trade mark, but claims to have a common law trade mark under the law of Illinois on the basis that it is the first entity within its geographic region to use its unique name “OppLoans” and there is as yet no United States federal trade mark to supersede it.
The Complainant claims to have used its domain name for its operational website since at least October 2010 and claims “during that time, OppLoans did extensive sales and continued to update, promote and grow its website and its business.”
The Complainant further claims that “there exists numerous media and commercial recognition of OppL, lending credence to the existence of a common law trade mark.”
The Complainant draws attention to the transcript of an interview with MoneyC, “a website devoted to personal finance” in which the Complainant stated:
“OppLoans is the nation’s leading socially-responsible online lender and one of the fastest-growing organizations in the FinTech space today. Embracing a character-driven approach to modern finance, we emphatically believe all borrowers deserve a dignified alternative to payday lending. Currently rated 5/5 stars on Google and LendingTree, OppLoans is redefining online lending through caring service for our customers.”
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s “OppLoans” common law trade mark, that “the titles of the websites are confusingly and overly similar”, that “Respondent’s website shares much wording to complainant’s website.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It claims that it has no connection with the Respondent. It claims that the Respondent acted in bad faith in registering the Domain Name and “is currently squatting on O” on the basis that “the only commercial activity is a custom landing page with sponsored listings.”
The Complainant contends that the Respondent is a notorious cybersquatter with a long track record of “attempting to profit off of typosquatting from legitimate enterprises” and that the Domain Name is another example. In support the Complainant produces a list of about 30 UDRP cases in which the Respondent has been found to have registered and used domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s trading name “OppLoans” and to its domain name, . The issue is as to whether or not the Complainant has any trade mark rights in respect of those names.
The Complainant has no registered trade mark rights in respect of the name, “OppLoans”, the name under which it trades, or its domain name, . It claims to have filed for trade mark protection of the name, “OppLoans”, but no evidence in respect of that application has been produced to the Panel and, in any event, trade mark applications of themselves give rise to no trade mark rights.
The Complainant recognizes that it is incumbent upon a complainant to prove the existence of unregistered trade mark rights. The Complaint features the following passages:
“The WIPO website states “Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.””
“While complainant certainly needs to prove the existence of a common-law trademark, the similarities between the websites of respondent and complainant are readily apparent. In addition, numerous references to complainant’s website, OppL, exist on respondent’s website.”
“While Complainant may shoulder the burden in proving it has a common-law trademark, respondent should also shoulder burden in proving that it is not attempting to fool end customers by its outward similarity to complainant’s website.”
The first of the above extracts from the Complaint quotes a passage from paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which provides a consensus view on the question: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”. The quoted passage is materially incomplete. For example, it omits the introduction to paragraph 1.7 which reads:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.” The passage in the Complaint also omits the closing caution to the effect that unless the complainant’s claim to unregistered trade mark rights “is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
Suffice it to say that, apart from bare assertions, the Complaint and its annexes contain no details of “the length and amount of sales under the trademark” and “the nature and extent of advertising, consumer surveys” although if one is to accept at face value some of the material on the Complainant’s website, it is more likely than not that the Complainant has achieved a measure of “media recognition”.
As indicated in section 5A above, the Complainant contends that it has unregistered trade mark rights under Illinois law. It puts its claim as follows:
“Under Illinois Law, an entity acquires a common law trademark if it is the first business to use it within a geographic region. See generally Steak & Brew Inc. v. Beef & Brew Restaurant, Inc., 370 Supp. 1030 (S.D.Ill. 1974). A common law trademark exists when an entity first begins to use it. Given that OppLoans is based in Illinois, but operates throughout the US, under Illinois law, OppLoans has a registered trademark throughout the United States UNTIL there is a federal trademark that superscedes it. See generally Burger King of Florida Inc. v. Hoots, 403 F. 2d 904 (7th Cir. 1968). The fact that there is no federal trademark for anything resembling OppLoans (from either complainant or respondent) lends weight to the Illinois common law trademark. See generally Burger King of Florida Inc. Given that complainant is in the process of trademarking OppLoans (as is discussed in subsection E), complainant has a common law trademark.”
Traditionally, panelists (in particular United States panelists) have tended to discount United States state trade mark registrations and federal registrations on the Supplemental Register unless accompanied by evidence to demonstrate secondary meaning along the lines of that outlined in paragraph 1.7 of the WIPO Overview 2.0 quoted above, it apparently being the case that they are unenforceable unless supported by evidence to establish reputation and goodwill. The Panel doubts that Illinois common law trade marks are in any different position, but whether or not that it is correct, the Panel prefers to adopt the approach and criteria set out in paragraph 1.7 of the WIPO Overview 2.0.
On a first reading of the case file the Panel assumed that the reason the Complainant selectively quoted from paragraph 1.7 of the WIPO Overview 2.0 and failed to produce in evidence the material necessary to establish a secondary meaning in respect of its “OppLoans” name was because the necessary evidence did not exist.
However, on a second reading, the Panel believes that this may have stemmed from a belief (in the Panel’s view an erroneous belief) that the “OppLoans” name is so distinctive and non-descriptive as not to require evidence of secondary meaning.
While the Complaint is, in the view of the Panel, defective in seeking to establish trade mark rights in respect the name “OppLoans”, the Panel has visited the Complainant’s website, which seems to the Panel to be a genuine operational website, and believes it possible that the Complainant had acquired unregistered trade mark rights in respect of that name by the date of the Complaint.
The Panel’s view is strengthened by a review of some of the previous cases under the Policy in which the Respondent has been a respondent and been found to be in possession of bad faith registrations. In many of those cases the complainants were North American financial institutions (see section 4 above) and the Panel finds it unlikely that the Respondent selected the Domain Name, a confusingly similar name to the trading name of another North American financial institution, by chance. In the circumstances the Panel finds it more likely than not that the Domain Name was attractive to the Respondent because of the Complainant’s position in the financial services industry and that self-evidently the Complainant must therefore have and have had the requisite reputation and goodwill giving rise to rights for purposes of the Policy.
Thus the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant asserts that the Respondent selected the Domain Name simply to monetize it on the back of the Complainant’s trade mark and without any justification. The Complainant confirms that the Respondent has no connection with the Complainant and that the Complainant has granted the Respondent no permission to use the Domain Name.
The Domain Name is connected to a pay-per-click parking page featuring sponsored links devoted to loans and lenders and is on the face of it likely to be deriving pay-per-click revenue therefrom. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name and that that case calls for an answer from the Respondent.
In the absence of an answer from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Panel has found on the balance of probabilities that in registering the Domain Name the Respondent had the Complainant and its trade mark in mind. In the absence of any other explanation it seems inconceivable that the Respondent selected the Domain Name for any reason other than to derive pay-per-click revenue from visitors to the Respondent’s website visiting the site in the belief that it is a website of or associated with the Complainant.
On the evidence before the Panel the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy. 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: September 8, 2016
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