The Complainant is Credit Karma, Inc. of San Francisco, California, United States of America (“United States”), represented by Reed Smith LLP, United States.
The Respondent is Domain Hostmaster, Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia / Zhichao Yang of Hefei, Anhui, China. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2017. On April 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 15, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 18, 2017, 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 April 24, 2017.
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 April 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2017. The Complainant sent an email communication to the Center on April 27, 2017.
The Center appointed Torsten Bettinger as the sole panelist in this matter on May 27, 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
The Complainant is an American multinational personal finance company headquartered in San Francisco, United States.
The Complainant is the owner of trademark registrations for the mark CREDIT KARMA (such as United States Registration No. 4,014,356, filed November 20, 2009 and registered August 23, 2011 in class 35), as well as CREDIT KARMA & DESIGN (United States Registration No. 5,057,486 filed September 10, 2015 and registered October 11, 2016 in classes 9, 35, 36, 38, 41, 45) (individually and collectively the “Complainant’s Mark”).
Additionally, the Complainant owns more than 350 domain names that incorporate the Complainant’s mark CREDIT KARMA, including the domain name (registered on August 30, 2005) along with a corresponding website, that are used by the Complainant to market a wide range of financial services under its CREDIT KARMA brand.
Respondent registered the disputed domain names on the following dates:
: March 21, 2012
: January 9, 2012
: February 27, 2012
: January 9, 2012
The disputed domain names direct visitors to web pages containing pay-per-click (“PPC”) advertising links related to third party competitor websites of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that since 2007 it has been the provider of, and has continuously used the Complainant’s Mark in connection with a free credit and financial management platform that also provides consumers with access to educational content and reviews for a wide range of financial products, including automobile insurance, credit cards, savings and checking accounts, home equity and personal loans.
The Complainant states that it has more than 500 employees, and more than 60 million members in the United States and Canada. The Complainant states that it has developed a global reputation as a leading personal finance company and has received a total of USD 368.5 million in equity funding from investors. Complainant states that the press last reported its valuation at USD 3.5 billion.
The Complainant alleges that the Complainant’s Mark is famous and enjoys a wide-reaching reputation in connection with high-quality personal finance products and services and that it has expended significant time, money and resources to promote its products and services using the CREDIT KARMA Mark on television and in radio commercials, social media, billboards, print and digital advertisements, Internet websites, mobile applications and other media outlets. The Complainant alleges that it has developed significant goodwill in the Complainant’s Mark and has grown the Complainant’s Mark into one of the most recognized and well-known brands in the personal finance industry realizing USD 350 million in operating revenue.
With regard to the confusing similarity between the trademark and the disputed domain names, the Complainant argues that the disputed domain names are common and purposeful misspellings of Complainant’s CREDIT KARMA mark and visually and phonetically similar to its trademark CREDIT KARMA, as the only difference between the Complainant’s trademark and the disputed domain names is the addition or substitution of one letter in the word “credit”.
With regard to the Respondent having no rights or legitimate interests in the disputed domain names, the Complainant submitted that: (1) it has never licensed nor otherwise permitted the Respondent to use the CREDIT KARMA Mark or use domain names that incorporate or are similar to the CREDIT KARMA Mark, and (2) by using the disputed domain names for PPC parking websites with links to competitors of the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
With regard to the disputed domain names having been registered and being used in bad faith, the Complainant argues that the Complainant’s long standing use and reputation of the trademark CREDIT KARMA indicates that the Respondent has been aware of Complainant’s rights at the time of registration of the disputed domain names.
The Complainant further argues that bad faith should be presumed due to the Respondent’s pattern of registering domain names that bear a resemblance to famous and/or famous marks and that by opportunistically registering and using the disputed domain names that incorporate misspellings of Complainant’s CREDIT KARMA Mark for a PPC parking website, the Respondent has intentionally attempted to attract internet users to an online location by creating a likelihood of confusion with the Complainant’s CREDIT KARMA Mark as to the source, sponsorship, affiliation or endorsement of the website available under the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain names , , and are confusingly similar to the Complainant’s CREDIT KARMA Mark.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; and BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480.
In this case, the disputed domain names are visually and phonetically similar to the Complainant’s CREDIT KARMA Mark. In fact, the only difference between the disputed domain names and the Complainant’s registered CREDIT KARMA trademark is the addition or substitution of one letter in the word “credit”:
- (addition of the letter “F” in the word “CREDIT”);
- (substitution of the letter “F” for “T” in word “CREDIT”);
- (addition of the letter “K” in word “CREDIT” and
- (addition of the letter “O” in the word “CREDIT”
These differences are insufficient to distinguish the disputed domain names from the CREDIT KARMA Mark (See Telfonaktiebolaget L M Ericsson (Ericsson) v. Eight Business Names,WIPO Case No. D2010-1485).
Furthermore, it has been long established under the UDRP jurisprudence that the specific generic Top-Level Domain (“gTLD”) designation such as , is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.11).
For the foregoing reasons the Panel concludes that the disputed domain names are confusingly similar to Complainant’s CREDIT KARMA Mark in which Complainant has exclusive rights. B. Rights or Legitimate Interests
A Respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Because the Respondent did not file a Response, there is no evidence showing that Respondent is a licensee of, or otherwise affiliated with the Complainant, and has been authorized by the Complainant to use its CREDIT KARMA Mark.
There is also no evidence that Respondent has been commonly known by the domain names, or has made a bona fide use of the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names.
The evidence provided by the Complainant demonstrates that the sole purpose of the disputed domain names is to resolve to PPC advertising websites and collect click-through revenue from advertising links.
It is well-established that operating a PPC parking page using a third-party trademark or minor misspelling thereof in a domain name is characteristic of “typosquatting” and does not confer rights or legitimate interests arising from a bona fide offering of goods or services (see WIPO Overview 3.0, paragraph 2.9).
Accordingly, in the light of the unrebutted prima facie case made out by the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domains names. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain names as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
Based on the record in this proceeding, the Panel is satisfied that Complainant’s CREDIT KARMA Mark is widely known and solely associated with the Complainant’s products and services. As the disputed domain names consist of common and purposeful misspellings of Complainant’s CREDIT KARMA Mark, the Panel concludes that on the balance of probabilities the Respondent was aware of the Complainant’s trademark CREDIT KARMA at the time of registration of the disputed domain names.
This and the fact that the websites available under the disputed domain names provides multiple advertising links to services of third parties competing with those of the Complainant demonstrate that the sole purpose of the registration of the disputed domain names is to collect click-through revenue from advertising links.
This is sufficient to satisfy the Panel that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s CREDIT KARMA Mark as to the source, sponsorship, affiliation, or endorsement of these websites in accordance with paragraph 4(b)(iv) of the Policy.
The Respondent’s use of the disputed domain names with the intention to attract Internet users for commercial gain is established by the advertising links on its website.
The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain names are misspellings of Complainant’s CREDIT KARMA Mark and the Complainant’s own domain name .
The fact that the websites available at the disputed domain names include links to sites offering competing products or services of the Complainant aggravates the likelihood of confusion (see Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044; Fresh Intellectual Properties, Inc. v. Matt Braska,WIPO Case No. D2005-0096; and Nine West Development Corporation v. Registrant [1168318] / Moniker Privacy Services / Registrant [1260512]: Domain Administrator,WIPO Case No. D2008-0154; Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; and Advance Magazine Publishers Inc. v. Pablo Palermao,WIPO Case No. D2008-0026, which confirm that bad faith is evidenced where a respondent uses virtually the same mark as a domain name and where a respondent attempts to trade on the goodwill associated with a mark in which the complainant has rights).
Moreover, the Respondent’s registration of four disputed domain names consisting of misspellings of the Complainant’s CREDIT KARMA Mark is telling of a pattern of bad faith conduct; see WIPO Overview 3.0, paragraph 3.1.2.
On the basis of the evidence put forward by the Complainant, the Panel is therefore satisfied that Respondent has registered and is using the disputed domain names in bad faith, in accordance with paragraph 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 disputed domain names, , , and be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: June 9, 2017
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