The Complainant is Providence Equity Partners L.L.C., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Matthew Mitchell, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2020, 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 August 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2020. The Center appointed Anne Gundelfinger as the sole panelist in this matter on September 3, 2020. 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 Providence Equity Partners L.L.C. (“Complainant”) is a global asset management firm with approximately $60 billion in assets under management. Since its inception in 1989, the Complainant has invested in over 180 companies and has become a leading investment firm focused on the media, communications, education, and information industries. It has over 350 employees, senior advisors, and operating partners, collectively working from offices in the United States and Europe. The Complainant owns United States Trademark Registration No. 2,777,345 for the mark PROVIDENCEEQUITY (“Mark”), registered for use in connection with financial services. The registration issued on October 28, 2003, is valid and incontestable, and claims a date of first use in 1996. The Complainant operates a website accessible at “www.provequity.com” and owns the domain name. On its website, the Complainant prominently uses its PROVIDENCEEQUITY Mark in connection with advertising its financial services. The disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its well-established, registered, and incontestable PROVIDENCEEQUITY Mark because the disputed domain name is nearly identical in visual appearance, meaning, and overall impression, with only immaterial differences. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Specifically, the Complainant asserts inter alia that (a) the Complainant has given no authorization for use of the disputed domain name, (b) the Respondent is not commonly known by the disputed domain name and has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, (c) the Respondent’s use of the disputed domain name for a parking page containing financial services-related PPC links fails to establish rights or legitimate interests and also demonstrates the Respondent’s bad faith registration and use, (d) the Complainant’s Mark is famous and well known, so much so that the Respondent “obviously” knew of and targeted the Mark in registering the disputed domain name, from which bad faith can be inferred, (e) the Respondent’s use of the disputed domain name is misleading and creates a likelihood of confusion as to the source or sponsorship of the Respondent’s website, and (f) the Respondent’s failure to respond to the Complainant’s June 2020 demand letter is further evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to be successful in this action: (i) the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name is nearly identical to the Complainant’s long-used, long-registered, and incontestable mark PROVIDENCEEQUITY in its visual appearance, meaning, and overall impression, the only differences being that the disputed domain name uses the plural form of “equity” and appends the descriptive business designator “group”. Here, the pluralization of “equity” makes no material difference in visual appearance, meaning, and overall impression relative to the Complainant’s Mark. Moreover, it is well established that slight differences in spelling (e.g., typosquatting) and/or the addition of other terms (whether generic, descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a disputed domain name and that mark. See sections 1.7, 1.8, and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark, and that the first element of the test is satisfied. B. Rights or Legitimate Interests It is well established that a complainant must present a prima facie case in relation to the second element of the test, not mere allegations. Once a prima facie showing is made, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. This burden-shifting is appropriate given that the respondent is often the only party with access to evidence of its own rights or legitimate interests. Given this, where a respondent fails to file a response, a panel may draw inferences from the failure to respond as appropriate under the circumstances of the case and while still weighing all available evidence irrespective of whether a response is filed. See, section 2.1 of the WIPO Overview 3.0 and cases cited therein. See also, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here the Complainant has averred that it did not authorize the Respondent’s use and argues that the Respondent is not commonly known by the disputed domain name, given that his name is Matthew Mitchell. The Panel notes there is no evidence before it that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name, nor any evidence that the Respondent is preparing to make a use of the disputed domain name that might support rights or legitimate interests. Further, the Complainant has demonstrated with clear and convincing evidence that the disputed domain name resolves to a parking page displaying PPC links relating to various financial services companies, including competitors of the Complainant, and to related financial services and investment information. While there is nothing wrong with merely parking a domain name, it is the consensus view that the display of PPC links related to a complainant’s business is neither a noncommercial fair use nor a bona fide offering of goods or services under the Policy and therefore does not establish rights or legitimate interests. See, e.g., Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao,WIPO Case No. D2016-2302. See also, section 2.9 of the WIPO Overview 3.0 and cases cited therein. Based on the evidence before it, and in the absence of countervailing evidence from the Respondent, the Panel is constrained to conclude that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the test is satisfied. C. Registered and Used in Bad Faith The third element of the test requires a showing that the disputed domain name has been registered and is being used in bad faith. Without providing any supporting evidence, the Complainant asserts that its Mark is famous and well known, and that it is therefore “obvious” that the Respondent knew of the Complainant’s rights and targeted the Complainant’s Mark, which in turns supports an inference of bad faith. However, in the absence of any evidence of the fame of the Complainant’s Mark, the Panel does not think the matter is quite so “obvious”. The Complainant is certainly a large successful business, but it is not at all clear that its Mark is a household name. Moreover, “Providence” is a commonly used name and mark in the financial services and insurance industries, and the Panel is therefore not willing to assume that the PROVIDENCE element is uniquely associated with the Complainant. Nor is the Panel willing to infer bad faith based solely on the alleged fame of the Complainant’s Mark. The Complainant may wish to consider submitting actual evidence of its alleged fame in future proceedings. That said, and regardless of the fame or lack of fame of the Complainant’s Mark, the evidence we have available does, on the balance of the probabilities, suggest that the Respondent was targeting the Complainant’s Mark. The Respondent is not merely using “providence” in the disputed domain name but is using the combination of “providence” and “equities”. Based on the available record, it appears that the Complainant is the only user and registrant of a mark that combines “providence” and “equity” (or “equities”), and that the Complainant has been using the PROVIDENCEEQUITY Mark for well over 20 years. Moreover, while the Complainant’s Mark may or may not be famous, there is no doubt that the Complainant is a large, established, and known company. As such, and in the absence of any evidence from the Respondent, it appears more likely than not that the Respondent’s use of the disputed domain name was intended to target the Complainant’s Mark. Finally, the disputed domain resolves to a parking page that displays financial service-related PPC links, including links relating to the Complainant’s competitors. In other words, the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Mark. This constitutes bad faith registration and use. See, paragraph 4(b)(iv) of the UDRP; sections 3.1, 3.1.4, and 3.5 of the WIPO Overview 3.0; Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753. Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith, and that the third element of the test is 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 name Anne Gundelfinger
Sole Panelist
Date: September 17, 2020
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