Complainant is Greenspring Associates, Inc. of Owings Mills, Maryland, United States of America (“United States”), represented by Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C., United States.
Respondent is Lisa Knowles, Victoria capital pty of New York, New York, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2019. On February 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 11, 2019.
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 Respondent of the Complaint, and the proceedings commenced on February 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 5, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 13, 2019. 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
Complainant is an investment advisory and services firm that trades under the mark GREENSPRING. The mark GREENSPRING is registered with the United States Patent & Trademark Office under Reg. No. 3,971,472, with a registration date of May 31, 2011, and a March 25, 2010, date of first use in commerce.
Complainant’s main website is located at “”. Complainant also owns the domain name , which Complainant points to its main website, and which Complainant also uses for its email addresses.
Complainant provides back office accounting, tax, and investor relations support services using the name WINDHAM VENTURES.
The Domain Name was registered on November 22, 2018. That same day, less than two hours after the Domain Name was registered, Respondent began sending emails from an email address windham@. According to Complainant, and as supported by documents annexed to the Complaint, “the emails sent from windham@ included a notice of a capital call, i.e., a request for funds from investors in the Windham fund affiliated with Complainant”. Complainant asserts that “the bogus emails and capital call included an attachment requesting transfer of the requested funds to a bank in Hong Kong.” Complainant alleges further that “the true email address of the sender of the bogus capital call was masked, and appeared as windham@”. Because Complainant’s official email addresses also terminate with “@”, it is alleged, Respondent “deliberately masked the email address to trick and thereby defraud Complainant’s customers or potential customers”. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent has not replied to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Panel concludes that Complainant has rights in the mark GREENSPRING through demonstrated registration and use. The Panel also finds that Complainant has limited unregistered trademark rights in the mark GSPRING. This is because Complainant has used the domain name to redirect those Internet users using that domain name to reach Complainant’s main website, . To that extent, Complainant has in fact used the domain name as a source identifier for its services. One person who cannot dispute that fact is Respondent, who (as is discussed below) deliberately targeted that source identifier () to attempt to perpetrate a fraud via confusion. The Domain Name differs from the GSPRING mark only to the extent that the Domain Name replaces the “i” with an “l”. The visual similarity between the “i” and the “l” – especially when the font is small – is obvious.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain its bona fides in connection with the Domain Name. The undisputed record indicates that Respondent used the Domain Name to send bogus email messages in order to perpetrate a fraud. This patently does not vest Respondent with a legitimate interest in the Domain Name.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of a trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As is discussed above, the undisputed record in this case is that Respondent registered the Domain Name and immediately used it to attempt fraud.
Complainant has established Policy paragraph 4(a)(iii). 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 Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: March 14, 2019
Full & Egal Universal Law Academy