The Complainant is Oportun, Inc. aka Progreso Financiero of Redwood City, California, United States of America ("USA", "US" or "United States"), represented by Potomac Law Group, PLLC, USA.
The Respondent is Derrick Richardson of Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2017. On April 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2017, 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. On April 6, 2017, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on April 7, 2017. The Respondent did not comment on the language of the proceeding by the specified due date. On April 7, 2017, the Complainant submitted an Amended Complaint upon the Center's request.
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 in English and Japanese the Respondent of the Amended Complaint, and the proceeding commenced on April 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 3, 2017.
The Center appointed Haig Oghigian as the sole panelist in this matter on May 10, 2017. 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
As there is no submission from the Respondent, in principle, the facts are taken from the Complaint and generally are accepted as true.
The Complainant is a financial technology company founded in 2005 in the United States that provides affordable loans that help people with little or no credit history. The Complainant is headquartered in Redwood City, California. The Complainant offers bilingual (English and Spanish) servicing and documentation to individuals via telephone, the Internet, mobile, and in-person through a large number of its retail locations in several US states, including California, Illinois, Nevada, Texas, Utah and Arizona. The Complainant changed its name from "Progreso Financiero" to "Oportun" in January 2015.
The disputed domain name was registered on December 19, 2016. The disputed domain name previously resolved to a website purporting to offer financial services under the "Progreso Financiero" mark and currently resolves to an inactive website. 5. Parties' Contentions A. Complainant
The Complainant requests transfer of the disputed domain name.
The Complainant argues that the disputed domain name is confusingly similar to the PROGRESO FINANCIERO mark in which the Complainant has (common law) rights. The disputed domain name is comprised of the PROGRESO FINANCIERO mark in its entirety plus the additions of the generic term "reviews" and the generic Top-Level Domain ("gTLD") ".com". The Complainant has rights on the PROGRESO FINANCIERO mark as the Complainant continues to use the PROGRESO FINANCIERO mark in connection with its financial services and spent significant resources in advertising, marketing, and promoting the mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant. The Respondent's website is/was intended for commercial gain by misleading consumers to believe that the website and the Respondent's lending services are provided by, or somehow affiliated with, the Complainant.
The Complainant further claims that the disputed domain name was registered and is being used in bad faith. The PROGRESO FINANCIERO mark is well-known within the individual small loan industry, and in particular, within specific segments of the Hispanic-American, Spanish-speaking consumer demographic. The Respondent must have been aware of the PROGRESO FINANCIERO mark when it registered the disputed domain name. The website (previously) under the disputed domain name contains a number of uses of the "Progreso Financiero" mark. The Respondent's blatant use of the PROGRESO FINANCIERO mark is clearly intended to confuse, mislead, or otherwise falsely suggest to consumers that the Respondent's website is run by or affiliated with the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Although the language of the Registration Agreement for the disputed domain name is Japanese, the Complainant in the Amended Complaint and its email sent on April 7, 2017 requests that the administrative proceeding be conducted in English.
Paragraph 11(a) of the Rules provides that in principle the language of the administrative proceeding shall be the language of the Registration Agreement, "subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". There are a number of rulings by UDRP panels that paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition.
See for example General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334, and SWX Swiss Exchange v. SWX Financial LTD,WIPO Case No. D2008-0400.
Despite the Center's notification regarding the language of the proceeding to the Respondent in both Japanese and English on April 6, 2017, the Respondent made no objection regarding the language of the proceeding, nor did it submit any Response by the due date. The Panel notes that the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.
The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese, and further that, since the website under the disputed domain name was provided in English, English would not give the Complainant unfair advantage over the Respondent.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English. 6.2 Substantive Matters
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.
It is well-established that the addition of other descriptive and generic terms does not mitigate the confusing similarity between the disputed domain name and the complainant's trademark. See for example Cantor Fitzgerald Securities, Cantor Index Limited v. Mark Mark, Chen Xian Sheng/Whois Protect,WIPO Case No.D2014-0125, and J. Choo Limited v. Weng Huangteng, WIPO Case No. D2010-0126.
Further, it is recognized that the incorporation of a trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
The Panel notes that the disputed domain name reproduces the Complainant's PROGRESO FINANCIERO mark in its entirety, with the additions of descriptive term "reviews" and the gTLD ".com". Accordingly, there is no question that the disputed domain name is confusingly similar to the PROGRESO FINANCIERO mark.
The real question is whether the Complainant has unregistered trademark rights on the PROGRESO FINANCIERO mark since the Complainant does not allege any registered trademark rights. Paragraph 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") states that:
"[t]o establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys."
The same paragraph also establishes that"
"The fact that a respondent is shown to have been targeting the complainant's mark (e.g., based on the manner in which the related website is used) may support the complainant's assertion that its mark has achieved significance as a source identifier."
Despite the Center's email sent to the Complainant on April 6, 2017, noting that it is unclear in the original Complaint whether the Complainant in fact claims registered or common law trademark rights, the Amended Complaint contains only limited allegations and evidence purporting to establish such common law trademark rights. Although the Complainant submits Annex 3 to 3.3 to establish such common law trademark rights, no particular evidence has been submitted by the Complainant regarding, inter alia, the amount of sales under the PROGRESO FINANCIERO mark, detailed nature and extent of advertising using such mark, or consumer surveys. The website located at "", one of the Complainant's corporate websites according to the Amended Complaint, is currently inactive, and therefore the Panel cannot conceive of how the PROGRESO FINANCIERO mark has been used in that website.
However, the Complainant was founded in 2005 and changed its company name from Progreso Financiero to Oportun in January 2015, and Annex 3.1 to 3.3 of the Amended Complaint suggest that the PROGRESO FINANCIERO mark was used to advertise the Complainant's financial services at least on its website. In light of these facts and finding, especially given the fact that the PROGRESO FINANCIERO mark represents the Complainant's previous company name for a decade, the Panel infers that the Complainant has spent significant monetary and other resources to advertise the PROGRESO FINANCIERO mark in relation to its financial services and that consumers came to recognize the same.
In addition, the Complainant has provided its financial services via a large number of its locations in the United States. Annex 3 of the Amended Complaint states that "[t]he customer experience is designed with the Hispanic customer in mind and delivered through a network of more than 160 locations", and the website of the Complainant shows "Oportun operates more than 230 retail locations and delivers bilingual (English/Spanish) customer service via retail locations, contact centers, and mobile to customers in Arizona, California, Illinois, Missouri, Nevada, Texas, and Utah." Accordingly, in the absence of any response from the Respondent, the Panel infers that the PROGRESO FINANCIERO mark, representing the Complainant's previous company name used in hundreds of locations, is well-known at least within Spanish-speaking consumer demographic in a number of prominent US states.
Furthermore, the Panel notes that the Respondent did not respond to two trademark cease-and-desist demand emails sent by the Complainant on March 9 and March 27, 2017 respectively, nor has it made any response in this administrative proceeding. Annex 6 of the Amended Complaint suggests that the website under the disputed domain name was previously used to advertise small amount money loan services to individuals, the same type of business as the Complainant, and that the website contained statement "Oportun Progreso Financiero" (emphasis added). Given these findings, in the absence of any response from the Respondent, the Panel infers that the Respondent intentionally targeted the Complainant's PROGRESO FINANCIERO mark, and therefore considers that the PROGRESO FINANCIERO mark has achieved significance as a source identifier.
Accordingly, in the absence of any response from the Respondent, the Panel finds that the PROGRESO FINANCIERO mark has become a distinctive identifier, and therefore that for purposes of the UDRP the Complainant has unregistered trademark rights on PROGRESO FINANCIERO mark.
The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the complainant must establish that the respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:
- Use of or demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
- An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
- Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
It is established that where the complainant successfully makes out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
See for example Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, and Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912.
As stated in 6.2A above, the Panel infers that the PROGRESO FINANCIERO mark, representing the Complainant's previous company name, is well-known at least within Spanish-speaking consumer demographic in several US states. In addition, Annex 6 of the Amended Complaint suggests that the website under the disputed domain name was previously used to advertise small amount money loan services to individuals, the same type of business as the Complainant, and that the website contained the PROGRESO FINANCIERO mark on the top of each webpage and specifically the statement "Oportun Progreso Financiero" (emphasis added). Accordingly, the Panel finds that the website under the disputed domain name was intended to misleadingly divert (a significant number of) Internet users from the website of the Complainant and ostensibly enabled the Respondent to gain monetary profit through the advertised small amount money loan services.
Accordingly, in the absence of any response from the Respondent, the Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services, and that the Respondent has not made any legitimate noncommercial or fair use of the disputed domain name without intent to divert consumers or to tarnish the trademark.
In addition, the Panel notes that there is no evidence to suggest that the Respondent has been or is commonly known by the disputed domain name. Further, the Panel notes that no evidence has been submitted that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name, the PROGRESO FINANCIERO mark, or any other mark confusingly similar thereto.
Therefore, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name and therefore the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests. The Respondent did not respond to the Amended Complaint and therefore has failed to rebut the Complainant's prima facie showing.
Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove that the disputed domain name has been registered and is being used in bad faith. Although paragraph 4(b) lists four circumstances that are evidence of the registration and use of the disputed domain name in bad faith, these circumstances are illustrative only and bad faith may be found otherwise.
It is recognized in a number of UDRP cases that registration of a well-known trademark by the respondent with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
See for example Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry- Succession Saint Exupéry – D'Agay v. Perlegos Properties,WIPO Case No. D2005-1085, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163, and Nintendo of America, Inc. v. Garrett N. Holland et al,WIPO Case No. D2000-1483.
As stated above, the Panel infers that the PROGRESO FINANCIERO mark is well-known at least within Spanish-speaking consumer demographic in several US states. Such reputation of the PROGRESO FINANCIERO mark indicates that the Respondent was or should have been aware of the PROGRESO FINANCIERO trademarks prior to registering the disputed domain name. See Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517, and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113.
The Panel also notes that the disputed domain name reproduces the PROGRESO FINANCIERO mark in its entirety, and that no evidence has been submitted that shows that the Respondent was in some way connected to the Complainant or was authorised by the Complainant to own or use the disputed domain name. As stated in Section 6.2 B above, the Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services, and that the Respondent has not made any legitimate noncommercial or fair use of the disputed domain name without intent to divert consumers or to tarnish the trademark. Accordingly, the Panel cannot conceive of any bona fide use that the Respondent could make of the disputed domain name.
Therefore, in the absence of a formal Response to the Complaint, the Panel considers that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirement of paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Date: May 29, 2017
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