The Complainant is Credit Karma, Inc. of San Francisco, California, United States of America (“USA”), represented by Reed Smith LLP, USA.
The Respondent is Domain Admin, Information Privacy Protection Services Limited of Hangzhou, Zhejiang, China / yangzhichao of Hefei, Anhui, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , and (the “Domain Names”) are registered with 22net, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2018. On January 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 9, 2018, 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 January 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese regarding the language of the proceeding to the Parties. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on January 15, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 proceedings commenced on January 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on February 28, 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 commenced business in 2007 as a free credit and financial management platform giving consumers access to credit data reports from major bureaus online in the USA and Canada, credit monitoring services, credit and calculator simulation tools and personalized recommendations. The products and services are provided under the mark CREDIT KARMA. The Complainant has more than 700 employees and more than 75 million members in the USA and Canada. The latest reported valuation of the company is USD 3.5 billion.
The CREDIT KARMA trade marks are registered in the USA, the earliest of which was registered on August 23, 2011 (registration no. 4,014,356) (the “Trade Mark”). The Complainant also has an extensive portfolio of more than 350 domain names which incorporate the Trade Mark including misspellings of the Trade Mark.
The Respondent is an individual who registered the Domain Names using a privacy or proxy registration service. The Domain Names were registered on April 15, 2012, except for which was registered on April 20, 2012. The Domain Names are connected or redirected to third party commercial websites including pay-per-click websites (the “Websites”). The Websites include those providing services which compete with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark 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 were registered and are being used in bad faith. 6.1. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English and that no prejudice will result from conducting it in English. The Complainant contends that the Domain Names are in English. The content of the Websites are exclusively in the English language. As the Complainant does not speak Chinese, conducting the proceeding in Chinese would require the papers to be translated causing delay and places an undue burden on the Complainant.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. 6.2. Substantive Analysis A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Names consist of misspellings of the Trade Mark as follows:
1.
Substitution of the letter “d” for “r” in “credit”
2.
Addition of the letter “d” to “credit”
3.
Substitution of the letter “f” for “r” in “credit”
4.
Addition of the letter “f” to “credit”
5.
Substitution of the letter “i for “k” in “karma”
6.
Substitution of the letter “f” for “r” in “karma”
7.
Substitution of the letter “q” for the first “a” in “karma”
8.
Substitution of the “k” for “i” in “credit”
9.
Substitution of the letter “x” for “d” in “kredit”
10.
Substitution of the letter “s” for “e” in CREDIT
11.
Substitution of the letter “f” for “c” in CREDIT
12.
Addition of the letter “f” to “credit”.
It is well established that domain names which consists of a common, obvious, or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (See section 1.9.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This is a typical typosquatting case as the 12 Domain Names are clearly misspellings of the Trade Mark.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) irrespective of the particular TLD and the ordinary meaning ascribed to a particular TLD. It is viewed as a standard registration requirement.
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not referred to or commonly known by the Domain Names or the Trade Mark. It has no legal relationship with the Complainant. The Websites do not show any bona fide offering of goods or services. The Respondent is also not making any legitimate noncommercial or fair use of the Domain Names. The Complainant has never licensed or otherwise permitted the Respondent to use the Trade Mark or apply or use any domain names that incorporate the Trade Mark or trade marks which are confusingly similar. The Websites either redirect Internet users to third party commercial websites which are unrelated to the Complainant or are pay-per-click sites, none of which confer any rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Marks when he registered the Domain Names. It is implausible that he was unaware of the Complainant when he registered the Domain Names given that all 12 Domain Names are misspellings of the Trade Mark and the popularity of the Trade Mark. In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
It is inconceivable that the Domain Names were selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Names fall into the category stated above and the Panel finds that registration is in bad faith.
Further the use of the Domain Names is also in bad faith. Firstly, there is a presumption of bad faith in the registration and use of a domain name in typosquatting cases. As stated in TPI Holdings, Inc. v. LaPorte Holdings,WIPO Case No. D2006-0235, typosquatting—intentionally adding or deleting a letter or two, or transposing letters in, a valid mark of another in one’s domain name — is presumptive evidence of bad faith in registration and use of a disputed domain name.
In addition, this is also a case where the Respondent has a pattern of registering domain names that are confusingly similar to trade marks or well-known and famous trade marks in violation of paragraph 4(b)(ii) of the Policy. There are at least 50 UDRP decisions against the Respondent involving domain names that incorporate well-known trade marks. These are some of the cases: Comerica Inc. v. Zhichao Yang / Whois Privacy Protection Service, Inc., Whois Agent,WIPO Case No. D2013-1184; National Grid Electricity Transmission PLC and Ngrid Intellectual Property Ltd. v. Zhichao Yang,WIPO Case No. D2015-2339.
The Respondent’s use of the Websites also support a finding that Respondent has registered the Domain names, with a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Websites and the products sold on them were authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy.
Thus the Panel concludes that the Respondent’s registration and use of the Domain Names are 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 Domain Names, , , , , , , , , , , , and , be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: Mach 14, 2018
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