The Complainant is Marlette Funding, LLC of Wilmington, Delaware, United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2017. On November 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 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.
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 November 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2017.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on January 10, 2018. 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 a financial services technology company that was incorporated in 2013. The Complainant offers online instalment loan products under the mark BEST EGG.
The Complainant is the registered proprietor of the following trade mark registrations consisting of or including BEST EGG in the United States:
i. United States Trademark No. 4,603,274 registered on September 9, 2014;
ii. United States Trademark No. 4,603,337 registered on September 9, 2014; and
iii. United States Trademark No. 4,603,338 registered on September 9, 2014.
The Complainant is also the registered owner of the following domain names of relevance to this Complaint:
i. , which WhoIs searches indicate was registered on March 13, 2000; and
ii. , which WhoIs searches indicate was registered on January 3, 2014.
The disputed domain name was registered on May 6, 2017 and is used to host a webpage that appears to offer personal loan services. 5. Parties’ Contentions A. Complainant
The Complainant asserts, inter alia, as follows:
i. that the disputed domain name is nearly identical or confusingly similar to the BEST EGG mark in which the Complainant has rights, in particular:
(1) the disputed domain name includes the Complainant’s BEST EGG mark in its entirety, with the additions of the words “my” and “start”, which the Complainant asserts are “irrelevant” and do not serve to distinguish the disputed domain name from it BEST EGG mark;
(2) the addition of the generic Top-level Domain (“gTLD”) “.com” does not overcome the similarity with the Complainant’s BEST EGG mark;
(3) the likelihood of confusion is increased because the Complainant is the registrant of the domain name and the website presently hosted at the disputed domain name features a sub-page hosted at the URL “www.my/start”; and
(4) the inclusion of links on the website hosted at that purport to be links to “My Apply” and “My”, but resolve to the disputed domain name.
ii. that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in particular:
(1) the Respondent is not, and has never been, known by the disputed domain name;
(2) the Respondent is not related or affiliated to the Complainant or its business;
(3) no license or authorization has been granted to the Respondent to make any use or apply for registration of the disputed domain name; and
(4) the Respondent is not carrying on any legitimate business at the disputed domain name and is not making any non-infringing use of the Complainant’s BEST EGG marks.
iii. that the disputed domain name was registered and is being used in bad faith, in particular:
(1) the disputed domain name was registered some years after the Complainant’s domain names and United States trademarks were registered, and the disputed domain name takes advantage of what is claimed to be the strong reputation and well-known distinctive character of the Complainant’s BEST EGG mark, allegedly both in the United States and throughout the world;
(2) it is difficult to conceive of any actual or contemplated active use of the disputed domain name that would not be infringing to the Complainant;
(3) links on the website hosted at the disputed domain name purport to be links to the Complainant’s website but in fact resolve to the disputed domain name; and
(4) the Respondent has used a privacy service to conceal its identity and other domain name registration activity.
The Complainant requests that the disputed domain name be transferred to it.
The Complainant further requests at paragraph 38 of the Complaint that the registrar of the disputed domain name be instructed to provide the Complainant with a list of other domain names registered by the Respondent. The Panel further notes that such a request is outside the scope of the remedies permitted under paragraph 4(i) of the Rules. Accordingly, the Panel has only addressed the request for the disputed domain name to be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark 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
The Complainant has demonstrated that it has rights in the BEST EGG mark in the United States in the form of three BEST EGG trade mark registrations which each pre-date the registration of the disputed domain name by some years.
The disputed domain name fully incorporates the Complainant’s BEST EGG mark. The addition of the gTLD “.com” does not serve to distinguish the disputed domain name from the BEST EGG mark, and should generally be disregarded for the purpose of the assessment of identity or confusing similarity.
The addition of the possessive pronoun “my” does not eliminate the similarity between the disputed domain name and the Complainant’s BEST EGG mark. The Panel also finds that the addition of the word “start”, which is of low inherent distinctiveness, does not serve to distinguish the disputed domain name from the Complainant’s mark.
The Panel finds that the Complainant has therefore established that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant and no license or authorization has been granted to the Respondent in relation to the disputed domain name. The Respondent has not responded to this statement, or at all, thus it is accepted by the Panel.
There is no evidence before the Panel to suggest that the Respondent’s use of the disputed domain name amounts to a bona fide use of the disputed domain name within the meaning of paragraph 4(c) of the Policy. Support for this conclusion is drawn from the Complainant’s submission that:
“[…] Respondent’s registration of the Disputed Domain Name was clearly made for the purpose of creating a false association with Complainant and its popular BEST EGG® product because the Disputed Domain Name directs users to privacy-policy.html, a URL owned by Complainant, for a privacy policy it claims as its own, and provides instructions for users to contact […]@my, an email address owned and controlled by Complainant, for additional matters and to unsubscribe from email communications.”
Thus, the Panel finds that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent to come forward with evidence to establish its rights or legitimate interests in the disputed domain name. The Respondent has not participated in the proceedings and has presented no evidence to support such rights or legitimate interests.
Accordingly, the Panel considers paragraph 4(a)(ii) of the Policy satisfied and that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which indicate that the Respondent may have registered and used the disputed domain name in bad faith.
The Panel considers that the following circumstances indicate that the Respondent has registered and is using the disputed domain name in bad faith:
(i) from the evidence submitted by the Complainant, which was not responded to by the Respondent, it appears to the Panel more likely than not that the disputed domain name was registered with the knowledge of the BEST EGG mark, which the Complainant has used in relation to its financial services for around 4 years before the registration of the disputed domain name;
(ii) it appears likely from the Complainant’s evidence that the Respondent intended to take advantage of the Complainant’s mark by including the BEST EGG mark in the disputed domain name to attract users to its website, in particular, in the light of inter alia (a) the Complainant’s use of the URL “www.my/start”; (b) the Respondent’s use of links on the website at the disputed domain name that apparently resolve to the Complainant’s website but in fact resolve to the disputed domain name; and (c) the inclusion of an email address on the website hosted at the disputed domain name which is controlled by the Complainant.
The Panel again notes that the Respondent has not submitted any response or participated in these proceedings.
On the basis of the above reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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.
Charters Macdonald-Brown
Sole Panelist
Date: January 24, 2018
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