The Complainant is Opportunity Financial, LLC of Chicago, Illinois, United States of America ("United States"), represented by Powers & Greengard, United States.
The Respondent is Dern Luetarn of Bangkok, Thailand. 2. The Domain Names and Registrar
The disputed domain names, (the "First Domain Name") and (the "Second Domain Name") (together the "Domain Names"), are 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 Names. On July 27, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 5, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on August 10, 2016, removing two other domain names included in the original Complaint .
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 August 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 2, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 2, 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 5/5stars by Google customers".
The First Domain Name was registered on February 3, 2013. The Second Domain Name was registered on September 30, 2013. As at April 5, 2016, according to the unchallenged evidence of the Complainant (supported by screenshots) the Domain Names were connected to websites offering pay day loans and featuring numerous references to the Complainant's website. When the Panel attempted to visit those websites all that appeared were error pages. 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 Names are identical or confusingly similar to the Complainant's "OppLoans" common law trade mark, that "the similarities between the websites of respondent and complainant are readily apparent" and that "numerous references to complainant's website, Oppl, exist on respondent's website."
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. It claims that it has no connection with the Respondent. It claims that the Respondent acted in bad faith in registering and maintaining the Domain Names, which are connected to websites seeking to mimic the look and feel of the Complainant's website. Both websites claim to offer the same services as those offered by the Complainant and, as stated, feature numerous references to the Complainant's website. 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 Names, the Complainant must prove that:
(i) The Domain Names are 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 Names; and
(iii) The Domain Names have been registered and are being used in bad faith. B. Preliminary matter
The amended Complaint features several defects. It continues to feature references to the two domain names removed from this administrative proceeding; it features aspects which relate toWIPO Case No. D2016-1524, not this case; the text dealing with the second element appears under the heading for the third element and the text dealing with the third element appears under the heading for the second element. The claim to unregistered trade mark rights relies heavily on unsupported assertions of reputation and goodwill and fails to include any details of sales and advertising, the matters identified in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") as being necessary to support claims of unregistered trade mark rights. It is not as if the paragraph 1.7 of WIPO Overview 2.0 was unknown to the Complainant's representative for a carefully selected extract (omitting the key material) was quoted in the Complainant.
However, having visited the Complainant's website, which appeared to the Panel to be a genuine website and for reasons relating to the behavior of the respondent inWIPO Case No. D2016-1524 (a propensity for registering domain names featuring trade marks of North American financial institutions), the Panel found it to be more likely than not that the Complainant had acquired unregistered trade mark rights in respect of its "OffLoans" trading name.
Having found, for the purposes of that case, that the Complainant had the relevant trade mark rights, it would be perverse to come to a different conclusion in this case notwithstanding the material defects in the amended Complaint. For completeness, however, the Panel repeats below mutatis mutandis the section of its decision inWIPO Case No. D2016-1524 dealing with the issue of identity and confusing similarity under paragraph 4(a)(i) of the Policy. C. Identical or Confusingly Similar
The Panel is satisfied that the Domain Names, containing as they do the Complainant's trading name "OppLoans" and featuring no other distinguishing matter are 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 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 inWIPO Case No. D2016-1524 had 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 and the Panel finds it unlikely that the respondent in that case 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 found it more likely than not that the domain name in issue 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 Names are confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
The unchallenged evidence of the Complainant is that as at April, 2016 the Domain Names were connected to websites offering pay day loans and featuring numerous references to the Complainant's website. The screenshots annexed to the Complaint indicate clearly that the Respondent was seeking to impersonate the Complainant and provide loan services similar to those provided by the Complainant. 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 Names.
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 Names 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 Names. E. Registered and Used in Bad Faith
The Panel has found that in using the Domain Names as he has, the Respondent has been seeking to impersonate the Complainant and provide loan services similar to those provided by the Complainant. In so doing the Respondent has been seeking to attract traffic on the back of the Complainant's reputation and goodwill in respect of its "OppLoans" unregistered trade mark.
The Panel finds that the Respondent registered the Domain Names in bad faith for the very purpose for which he has been using them.
The fact that the Respondent may now have ceased use of the Domain Names for that purpose is of no assistance to the Respondent. In the view of the Panel the Domain Names in the hands of the Respondent represent a continuing abusive threat hanging over the head of the Complainant and as such a continuing bad faith use.
On the evidence before the Panel the Panel finds that the Domain Names were registered and are 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 Names, and , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: September 9, 2016
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