The Complainant is Credit Karma, Inc. of San Francisco, California, United States of America (“USA”), represented by Reed Smith LLP, USA.
The Respondent is Majiaai of Nanyang, Henan, China / zhangcunshuo, zhangcun shuo, 张存硕of Nanyang, Henan, China, self-represented. 2. The Domain Names and Registrars
The disputed domain names , and are registered with eName Technology Co., Ltd. The disputed domain names and are registered with Ourdomains Limited. The disputed domain name is registered with 22net, Inc (the “Registrars”). 3. Procedural History
The Complaint was filed in English against the First Respondent with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2017. It was sent to the First Respondent and the Center at the same time. On May 5, 2017 at 6:16 pm Geneva Summer Time (UTC+2) or 4:16pm UTC, the Center transmitted an email to the previous registrar Dynadot, LLC to request for registrar verification in connection with the disputed domain names. On May 7, 2017 and May 8, 2017, the registrar Dynadot, LLC replied through two emails indicating that the disputed domain names were not registered with Dynadot, LLC any more. Dynadot LLC stated that the Registration Agreements for all the domain names had been in English.
On May 9, 2017, the Center transmitted an email to the current Registrars to request for registrar verification in connection with the disputed domain names. On May 10, 2017, the Registrars transmitted by email to the Center their verification responses, disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On May 10, 2017, the Center transmitted by email to the Registrars a request to indicate the precise date and time the current registrant (i.e. the Second Respondent) obtained the registration of the disputed domain names. The Registrars replied on May 11, 2017 confirming that the disputed domain names were transferred to out of Dynadot’s system on May 5, 2017. The new Registrars stated that the disputed domain names were transferred into their system at approximately 2:30 am on May 6, 2017, Beijing Time (UTC +8) (6.30 pm on May 5, 2017 UTC) or later that day.
On May 12, 2017, the Second Respondent sent an email in Chinese stating that it cannot read English and requested communications be sent in Chinese.
The Center sent an email communication to the Complainant on May 11, 2017, providing the registrant contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 17, 2017. On May 19, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On May 20, 2017 the Second Respondent stated that its English language capabilities were limited and requested for a copy of the Complaint to be in Chinese, so that the Respondent can respond in Chinese accordingly. The Complainant requested that English be the language of the proceeding on May 21, 2017, whereas on May 22, 2017, the Second Respondent objected to the proceedings to be conducted in English.
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 in English and Chinese of the Complaint, and the proceeding commenced on May 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2017. On June 8, 2017, the Second Respondent submitted another email to the Center indicating that it has filed a lawsuit with the Zhengzhou Intermediate People’s Court in Henan Province, China pursuant to paragraph 4(k) of the Policy and that the Court has accepted the case on June 7, 2017. The Respondent did not submit any substantive response to the Complaint. The Center notified the Parties the commencement of panel appointment process on June 16, 2017.
The Center appointed Mr. Douglas Clark as the sole panelist in this matter on June 21, 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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and as such the Panel shall issue a reasoned decision in accordance with paragraph 15(d) of the Rules. 4. Factual Background
The Complainant is a personal finance company with more than 500 employees and more that 60 million members in the USA and Canada. The Complainant was established in the USA in or around 2007. It is best known for providing free credit scores to its members and assisting members to manage their finances.
The Complainant currently owns trademark registrations in the USA for CREDIT KARMA, for, inter alia, services of monitoring consumers’ credit reports (registration number 4,014,356 registered on August 23, 2011), and CREDIT KARMA & device, for, inter alia, computer software that monitors consumers’ credit scores, reports and alerts (registration number 5,057,486 registered on October 11, 2016). The Complainant has been using these trademarks since at least as early as February 1, 2008 (“CREDIT KARMA Marks”).
The Complainant owns over 350 domain names that consist of the trademark CREDIT KARMA or misspellings of CREDIT KARMA.
The disputed domain names, , , , , , , are registered with three different Registrars namely eName Technology Co., Ltd., Ourdomains Limited, and 22Net, Inc.
The disputed domain names and were registered on January 4, 2012; the disputed domain names , and were registered on January 5, 2012 and the disputed domain name was registered on April 25, 2012.
According to the evidence submitted by the Complainant, the websites under all the disputed domain names were pay-per-click pages in English with sponsored listings for credit services. The Panel notes that currently the webpages under the disputed domain names , and all resolve to pages with sponsored listings written in English for services such as obtaining a “Free Credit Score” or a “Free Credit Report”. The other three disputed domain names do not resolve to any pages. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
Identical or confusingly similar
The Complainant contends that all of the disputed domain names are common and purposeful misspellings of the Complainant’s Credit Karma name, and are visually and phonetically similar to both the CREDIT KARMA Marks and the various “creditkarma” domain names owned by the Complainant. The only difference between the disputed domain names and the Complainant’s registered CREDIT KARMA Marks is the omission, transposition, and/or substitution of one or two letters in the words “Credit” and “Karma” as follows:
- : Deletion of the letter “t” in “credit” / Substitution of the letter “c” for “k” in “karma”
- : Deletion of the letter “a” in “karma” / Substitution of the letter “c” for “k” in “karma”
- : Substitution of the letter “e” for “a” in “karma”
- : Deletion of the letter “r” in “karma” / Substitution of the letter “o” for “a” in “karma”
- : Substitution of the letter “i” for “e” in “credit”
- : Substitution of the letter “t” for “r” in “credit” / Transposition of the letters “d” and “e” in “credit”
As such, Internet users encountering the disputed domain names are likely to be confused into believing that there is some relation, affiliation or association between the Respondent and the Complainant, when, in fact, no such connection exists.
No rights or legitimate interests
The Complainant is the owner of trademark registrations in the USA for CREDIT KARMA and CREDIT KARMA & Device, and has used the CREDIT KARMA marks since at least as early as February 1, 2008. The Complainant has never licensed nor otherwise permitted the Respondent to use the CREDIT KARMA Marks or apply for or use any domain names that incorporate or are similar to the CREDIT KARMA Marks.
The Complainant submits, the Respondent possesses no rights or legitimate interests or is the Respondent commonly known by the disputed domain names. The Complainant has acquired a substantial reputation under common law by virtue of its extensive and significant advertising of the CREDIT KARMA Marks, whereas the Respondent does not have a legal relationship with the Complainant, nor has the Respondent a recognisable history of using the disputed domain names in relation to the bona fide offering of goods or services. The purpose of the Respondent’s activities seems to be profiting off the Complainant’s reputation, and to redirect Internet users to other commercial websites, that do not have a connection with the Complainant.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain names the Respondent had the intention of benefiting from the Complainant’s fame and registered the disputed domain names to attract business to its websites.
The Complainant further submits that the Respondent has acted in bad faith by opportunistically registering and using the disputed domain names that incorporate the CREDIT KARMA Marks and/or common misspellings thereof to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. B. Respondent
The Respondent did not submit a formal response.
The Second Respondent claimed that it had filed a lawsuit with the Zhengzhou City Intermediate People’s Court in Henan Province of China and that the Court has accepted the case on June 7, 2017. A copy of the law suit was not provided by the Respondent.
The Second Respondent also sent an email to request the language of the proceeding be Chinese. 6. Discussion and Findings 6.1. Identity of the Respondent
The Center has confirmed that the Complaint was received on May 5, 2017 and that the registrant at that time was the First Respondent.
The Center requested Dynadot, LLC on May 5, 2017 to confirm the registrant information. On May 7, 2017, Dynadot, LLC replied that the disputed domain names were not registered with it anymore.
By their emails to the Center on May 11, 2017, the Registrars confirmed the disputed domain names were transferred on May 5, 2017 or May 6, 2017 (UTC) after the complaint was sent to the First Respondent. (See Section 3 above)
The Panel notes that the registrant change occurred during the pendency of this UDRP proceeding in violation of paragraph 8 of the Policy.
Furthermore, the Panel finds that these unusual circumstances point to the conclusion that the Second Respondent is related to the First Respondent and that they acted in concert to transfer the disputed domain names (a) out of the ownership of the First Respondent to the Second Respondent and (b) and from previous Registrar to current Registrars, to attempt to evade or obstruct these administrative proceedings.
The Panel further concludes that both the First Respondent and the Second Respondent should be included as a party to this proceeding. 6.2. Request for Consolidation of Multiple Domain Names
Paragraph 3(c) of the Rules provides that a Complaint may relate to more than one domain name so long as the disputed domain names are registered to the same holder.
Paragraph 10(e) of the Rules empowers the Panel to consolidate multiple domain names disputes, so as to avoid unnecessary duplication of time, effort and expense as well as conflicting or inconsistent results arising from multiple proceedings.
As the disputed domain names are controlled by the same Respondent the Panel is of the view that there is sufficient unity of interest to consolidate the proceedings into a single proceeding pursuant to paragraph 10(e) of the Rules. (See section 4.11.2 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).) 6.3. Lawsuit in Zhengzhou City Intermediate People’s Court in Henan Province of China
The Panel has considered if the litigation the Respondent states to be pending in the Zhengzhou City Intermediate People’s Court give any cause to suspend or terminate these proceedings.
Paragraph 18(a) of the UDRP Rules gives the panel discretion to suspend, terminate, or continue a UDRP proceeding where the disputed domain name is also the subject of other pending legal proceedings. Section 4.14.1 of WIPO Overview 3.0 provides that “appointed panels are reluctant to suspend a UDRP case due to concurrent court proceedings, most notably because of the potential for indeterminate delay; the WIPO Center would similarly be reluctant to facilitate such suspension”.
Section 4.14.2 of WIPO Overview 3.0 further provides that, where there are pending court proceedings, it is within the panel’s discretion to determine the relevance to ascribe to such proceeding in the UDRP context, in light of the case circumstances.
The Respondent has only sent an email stating that it has filed court proceedings and that these proceedings have been accepted by the court. The Center requested the Parties to keep the Center advised of developments in the proceedings. However, no further information or documentation has been provided by the Respondent or the Complainant.
The Panel does not have sufficient information regarding the court proceedings, nor, indeed, any evidence that such proceedings have in fact been filed. Given this, the Panel does not therefore consider there are any grounds to suspend or terminate the proceedings. 6.4. Language of the Proceedings
The Registration Agreements for the disputed domain names , , and are in Chinese. The Registration Agreements for the disputed domain names and are in English.
The Complainant requested the language of the proceeding to be in English on the grounds that at least one of the registration agreements was in English and that the websites that the disputed domain names resolve to are exclusively written in English. Further, the Complainant asserted that it does not speak Chinese and the obligation to translate all relevant documents would be an unfair disadvantage to the Complainant and would cause unnecessary burden and delay.
The Second Respondent through two emails stated that its comprehension of English was limited and that it wished to see the Complaint in Chinese and to be able to respond in Chinese.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The original Registration Agreements with the First Respodent were all in English. Two of the current Registration Agreements are in English; four are in Chinese.
The webpages under the disputed domain names all resolved to pages with sponsored listings written in English for services such as obtaining a “Free Credit Score” or a “Free Credit Report”. The websites under the disputed domain names , and continue to resolve to pages in English. There are good reasons to believe the Respondent understands sufficient English to deal with the Complaint.
Translating the Complaint would cause unnecessary delay in this matter.
For the above reasons, the Panel determines to follow the Center’s preliminary determination and accept the Complaint filed in English and it will render its decision in English. 6.5. Substantive Decision A. Identical or Confusingly Similar
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and used in bad faith.
As stated under Section 4 above, the Complainant has trademark rights for CREDIT KARMA in the USA since 2008. The Panel notes that the Complainant does not have a registered trademark for CREDIT KARMA in China when the disputed domain names were filed. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview 3.0).
The disputed domain names , , , , , , are confusingly similar to the Complainant’s trademark CREDIT KARMA. The disputed domain names are all purposeful misspellings of the Complainant’s CREDIT KARMA trademarks, which are intended to confuse consumers.
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of WIPO Overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
None of the circumstances that exist in paragraph 4(c) of the Policy, which sets out how a Respondent can prove its rights or legitimate interests, are present in this case. Paragraph 4(c) provides:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii)
(i) before any notice to you 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 (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 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”.
The Panel notes that currently three of the disputed domain names do not resolve to any pages. Three of the disputed domain names resolve to webpages with sponsored links to credit services. This use does not satisfy paragraph 4(c) of the Policy.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second element of the paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names , , , , , have been registered in bad faith, and are being used in bad faith.
It is highly likely that the Respondent knew of the Complainant when the Respondent registered the disputed domain names as they comprise of purposeful misspelling of the Complainant’s mark and all of the pages have been used to provide sponsored links to credit services.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Respondent has registered the disputed domain names that are deliberate misspellings or the CREDIT KARMA trademark. This indicates the Respondent’s intention was to cause confusion so that Internet users believe that the sites were linked to the Complainant’s business.
The fact the other three disputed domain names do not currently resolve to any pages does not preclude a finding that they have been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3). In the circumstances of this case where three of the disputed domain names have been used in bad faith, the Panel has no doubt the other three domain names, namely, , and , have been registered with the intent to use them in bad faith.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied. 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.
Douglas Clark
Sole Panelist
Date: July 25, 2017
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