The Complainant is Credit Karma, Inc. of San Francisco, California, United States of America (“United States”), represented by Reed Smith LLP, United States.
The Respondents are Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Michael Morgan, Mike Morgan of Elmsdale, Nova Scotia, Canada, and Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States / Mike Morgan, Mike Morgan of Elmsdale, Nova Scotia, Canada (collectively referred to as “the Respondent”). 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , and are registered with DomainSite, Inc. The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with eNom, Inc. (collectively referred to as “the Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2018. On January 9, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On the same day, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2018 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 January 22, 2018.
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 January 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on February 22, 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 credit information and financial services provider, based in San Francisco, United States. It was founded in 2007 and launched a website for its online business in 2008. The Complainant now has more than 75 million members in the United States and Canada.
The Complainant advertises its services across a range of media, including radio, social media, billboard advertising and through the Internet. It has also produced a mobile app through which its services can be accessed, which has been extensively downloaded.
The Complainant has registered trademarks for CREDIT KARMA, namely;
- United States trade mark, registration number 4,014,356 for CREDIT KARMA, in word only form, registered on August 23, 2011 for services in International class 35; and
- United States trade mark, registration number 5,057,486, for CREDIT KARMA, in stylised form and in conjunction with a logo, registered on October 11, 2016 for services in International classes 9, 35, 36, 38, 41 and 45.
The Complainant owns more than 350 domain names which comprise its CREDIT KARMA trade mark or variants of it, including , and , which the Complainant uses in relation to its business.
The disputed domain names were registered by the Respondent at various dates between 2008 and 2014. They resolve to sponsored or pay-per-click directory pages which contain links to credit-related services, such as “Free credit report”, “Credit report and credit score” and “How to get free credit report and score”. 5. Parties’ Contentions A. Complainant
The Complainant says that it has been using the CREDIT KARMA trading style since 2007. It owns the trade mark registrations for CREDIT KARMA, as set out above, in the classes of services which cover its activities as a free credit and financial information platform. In addition, the Complainant has acquired common law rights in the CREDIT KARMA trade mark because of its extensive use and promotion of its CREDIT KARMA trade mark since, at least, February 1, 2008.
The disputed domain names are identical or confusingly similar to the mark CREDIT KARMA. In the case of , the generic descriptor “my” has been added as a prefix to the Complainant’s trade mark. All of the other disputed domain names comprise variants of, or misspellings of, the Complainant’s trade mark, with a single letter from the mark either omitted, transposed, added or substituted.
Previous panels have found that the introduction of “small typographical changes or deliberate errors” do not distinguish a domain name from a complainant’s trade mark. See Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc.,WIPO Case No. D2000-1259. Moreover, the addition of a generic term may increase the likelihood of confusion, as is the case with . This is particularly likely to be associated with the Complainant, given the personalised financial services it offers.
There is a risk that Internet users will be confused into believing that there is an association or affiliation between the Respondent and the Complainant. This risk is heightened by the fact the Complainant owns numerous domain names which feature the same, or similar, misspellings to the disputed domain names. For these reasons, all the disputed domain names are confusingly similar to CREDIT KARMA.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain names. It is not commonly known by the disputed domain names and has no legal relationship with the Complainant. The Complainant has never licensed or otherwise permitted the Respondent to use its CREDIT KARMA trade mark, or to apply for, or use, any domain name incorporating it. Moreover, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain.
There is no indication that the Respondent has used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. It has been established by previous panels that using a domain name that is a misspelling of a trade mark of a complainant does not comprise use in connection with a bona fide offering of goods or services. See, for example, Associated Banc-Corp v. Paulo,WIPO Case No. D2010-1285 and also Forest Laboratories, Inc. v. Jeff Brown,WIPO Case No. D2008-0412, where the panel held that use of a domain name to redirect Internet users to commercial websites unrelated to the complainant, and with the evident purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in that domain name. The sole motivation of the Respondent in registering the disputed domain names appears to have been in order to redirect Internet traffic to parked websites which contain sponsored or pay-per-click links.
Lastly, the Complainant says that the Respondent registered and is using the disputed domain names in bad faith. The Complainant says that, in view of the fame of the Complainant’s marks, the Respondent should be deemed to have actual or constructive knowledge of them. Moreover, bad faith should be presumed because the Respondent is typosquatting; see TPI Holdings, Inc. v. LaPorte Holdings,WIPO Case No. D2006-0235, where the panel said that “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”.
Bad faith should also be presumed because of the Respondent’s pattern of registering domain names that bear a resemblance to famous and/or well-known trade marks. In this respect, the Complainant refers to three earlier decisions under the Policy in which panels have ordered the transfer or cancellation of domain names registered by the Respondent. In any event, the Respondent has acted in bad faith by opportunistically registering the disputed domain names, which are virtually identical to the Complainant’s CREDIT KARMA trade marks, with the intent of causing confusion and diverting consumers seeking the Complainant to parked pages which contain advertisements for, and links to, competitors of the Complainant. Such conduct has consistently been found to constitute bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Procedural Issues
Before dealing with the substantive issues, and having regard to the fact that the Complaint relates to multiple disputed domain names, it is first necessary to deal with the Complainant’s request for consolidation pursuant to paragraphs 3(c) and 10(e) of the Rules and paragraph 4(f) of the Policy.
The initial Complaint included claims in respect of two additional domain names which do not feature in the amended Complaint. These domain names were seemingly owned by parties other than the Respondent and this prompted the Complainant’s request for consolidation. The information provided by the Registrars in response to the Center’s request for Registrar verification, established the identity of the underlying registrants. The amended Complaint only refers to domain names which have been registered by the personal Respondent, Mike Morgan.
Paragraph 3(c) of the Rules, expressly provides for a complaint to relate to more than one domain name, where such domain names are registered to the same domain-name holder. Whilst different privacy protection services have been used by Mr. Morgan, he is the underlying registrant of each disputed domain name. Accordingly, it is not necessary to consider the Complainant’s request for consolidation; it is entitled under the Rules to bring this single Complaint in respect of all of the disputed domain names. B. Identical or Confusingly Similar
The Complainant has established that it has trade mark rights in CREDIT KARMA; see the details of the trademarks owned by the Complainant, as set out above.
It is well established that, for the purpose of determining whether domain names are identical or confusingly similar to a complainant’s trade mark, the generic Top-Level Domain (“gTLD”) – “.com”, in this instance – is disregarded as it is a technical requirement of registration.
The disputed domain name simply adds a personal pronoun to the Complainant’s trade mark. This is insufficient to provide any differentiation between this disputed domain name and the Complainant’s trade mark. The remaining disputed domain names differ from the Complainant’s CREDIT KARMA trade marks only by the substitution, addition, transposition or removal of one letter, from those comprised within the registered mark, with another letter. None of these alterations renders any of the disputed domain names dissimilar to the Complainant’s trade mark; the extent of the changes are sufficiently modest as to render each of them apt to be confused with the Complainant’s trade mark. Each of the disputed domain names is accordingly confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name. How these provisions are usually applied in practice is explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This says that the consensus view of panellists is that, “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.”
The evidence submitted by the Complainant provides a strong prima facie case that the use to which the Respondent has put the disputed domain names is both commercial in character and not bona fide, in that the Respondent is seeking to misleadingly divert Internet users seeking the Complainant’s services to websites either operated by it, or from which it derives some form of pay-per-click revenue or commission. As explained at section 2.9 of the WIPO Overview 3.0, panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links, as is the case here, compete with, or capitalise upon the reputation and goodwill of a complainant’s trade marks.
In the absence of any evidence from the Respondent in an attempt to satisfy the burden of production referred to above, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the disputed domain names in bad faith.
The Complainant’s trade marks were registered on August 23, 2011 and October 11, 2016. Eighteen of the disputed domain names were registered in 2008 (the earliest registrations being in July, 2008) and twenty seven of the disputed domain names were registered in 2009. These disputed domain names were accordingly registered prior to the date of registration of the Complainant’s first trade mark in August 2011. The four remaining disputed domain names were registered in the period 2013-2015.
In order for the Complainant to succeed in its Complaint, insofar as it relates to the disputed domain names which pre-date the date of its first trade mark registration, it needs to demonstrate that its unregistered trade mark rights in CREDIT KARMA, as at the dates of registration by the Respondent of its first tranche of disputed domain names in July 2008, were sufficiently established that the Respondent must have known, or ought to have known, of the Complainant’s common law rights at that time. The relevant standard is outlined at section 1.3 of the WIPO Overview 3.0; “To 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”. Section 1.3 continues “Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case [emphasis added], would not normally suffice to show secondary meaning”.
Despite extensive material submitted by the Complainant in support of other assertions in its Complaint, its evidence is unhelpfully scant as to the extent of its common law trade mark rights as July 2008 and does not go much beyond mere assertion. Accordingly, it does not meet the standards outlined above.
The Panel, however, takes account of the following. First, the Respondent has not challenged the Complainant’s assertions that the Complainant has been making “substantially exclusive and continuous use of the CREDIT KARMA trademarks and domain names since at least as early as February 1, 2008” or, indeed any other part of the Complainant’s case. Second, the Complainant’s two trade mark registrations each claim a first use in commerce date of February 1, 2008, which provides some corroboration for its assertions. Third, the only known use of the disputed domain names has been to point to directory pages containing pay-per-click links to services which compete with those of the Complainant. This is consistent with the Respondent having registered each of the disputed domain names with the Complainant’s business in mind. Moreover, the fact that the disputed domain names comprise either typosquat variants on the name of the Complainant’s business or, in the case of , uses the Complainant’s trade mark exactly but adds a personal pronoun prefix, points to an awareness by the Respondent of the Complainant’s business. Fourth, the very large number of disputed domain names registered in July 2008 is more consistent with the Respondent registering them in order to divert Internet users who had been seeking the Complainant’s services than it is with an intention to use them as part of a bona fide business. Fifth, the Respondent has been the subject of many other decisions under the Policy in which bad faith registration and use by it has been found. The factual summary by the panel in NBC Universal, Inc. v. MM, M Morgan,WIPO Case No. D2007-1744, refers to seven such proceedings under the Policy and describes these as “just a sampling” of those produced in evidence by the complainant. This is not, in isolation, determinative of bad faith registration and use in these proceedings. However, it is a factor to take into account when making an overall assessment as to whether that the disputed domain names registered by the Respondent in July 2008 (as well as those registered subsequently) were registered for reasons unconnected with the Complainant or because the Complainant had developed sufficient common law rights as at July 2008 that its business and trading style had come to the Respondent’s attention.
A complainant is required to prove its case on a balance of probabilities (see section 4.2 of the WIPO Overview 3.0). In the light of the facts and matters set out above, and notwithstanding the lacuna in the Complainant’s evidence, the Panel, by a narrow margin, finds that the Complainant’s common law trade mark rights in CREDIT KARMA were sufficiently extensive by July 2008 that the Respondent registered each of the disputed domain names, with an awareness of that reputation and in order to take advantage of it and that the registrations of the disputed domain names were accordingly in bad faith. However, it would have been preferable for the Complainant to have adduced specific and targeted evidence to show the extent of its common law rights as at this date and it is only because each of the factors itemised above were, in combination, present that the Panel has made this finding.
The only known use to which the disputed domain names have been put is to point to directory pages which contain links to services which compete with those of the Complainant. This comprises bad faith use; see, by way of example, Philip Morris USA Inc. v. Compsys Domain / Compsys Domain Solutions Private Limited,WIPO Case No. D2017-2395, in which the panel commented that “It is well-settled that the practice of typosquatting constitutes an evidence of the bad faith registration of a domain name. See Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069 (Finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Huang,WIPO Case No.
D2004-1039 (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816 (“[typosquatting] is presumptive of registration in bad faith”)”.
The Respondent’s conduct falls within the non-exhaustive circumstance of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain names, it has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites or services on it.
The Panel accordingly finds that the disputed domain names were registered and 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 names , , , , , , , , , , and are registered with DomainSite, Inc. The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: March 6, 2018
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