The Complainant is Qatalyst Partners LP, United States of America (“United States” or “U.S.”), represented by Shearman & Sterling LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Ann Marie Melady, 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 April 14, 2021. On April 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2021, 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 sent an email communication to the Complainant on April 22, 2021 requesting a clarification on missing annexes. The Complainant filed an amended Complaint on April 22, 2021. 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 April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021. The Center appointed William R. Towns as the sole panelist in this matter on May 21, 2021. 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, established in 2007 in San Francisco, California, United States, is a well-known investment bank specializing in mergers and acquisitions, primarily in the emerging global technology industry. The Complainant also maintains an office in London, England. The Complainant trades under the QATALYST PARTNERS name and is the holder of the following trademark registrations: QATALYST PARTNERS, U.S. Reg. No. 5489396, filed February 22, 2017, and registered June 12, 2018 (first use March 17, 2008); QATALYST PARTNERS (design + words), U.S. Reg. No. 5971319, filed May 15, 2019, and registered January 28, 2020 (first use March 17, 2008);1 QATALYST PARTNERS, United Kingdom (“UK”) Trademark Reg. No. UK00003243209, filed July 12, 2017, and registered November 3, 2017; and QATALYST PARTNERS, European Union Trade Mark (“EUTM”) Reg. No. 016979809, filed July 12, 2017, and registered November 9, 2017. The Complainant also is the holder of a Swiss Registration for QATALYST, Swiss Trademark Registration No. 604912, filed August 10, 2010, and registered September 13, 2010. The Respondent registered the disputed domain name The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s registered QATALYST and QATALYST PARTNERS marks, which the Complainant observes were registered between 2010 and 2020 and in use since the Complainant’s founding in 2007, long before the Respondent’s registration of the disputed domain name on March 25, 2021. The Complainant asserts it is a significant and well-known global participant in the field of investment banking, consulting, fundraising, and providing advice and consulting services in connection with mergers and acquisitions, primarily in the global technology industry. The Complainant explains that the Respondent when registering the disputed domain name reversed the order in the disputed domain name of the letters “s” and “t” at the end of the Complainant’s QATALYST mark, a minor difference in spelling that makes the disputed domain name appear nearly identical in look and sound to the Complainant’s mark. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant remarks that the Respondent privately registered the disputed domain name using a proxy service, has brought forth no evidence of any demonstrable use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and instead directs Internet users to blank webpages. The Complainant adds that the Respondent has not been commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant asserts that the disputed domain name was registered and is being used by the Respondent in bad faith. The Complainant maintains that the Respondent likely was aware of the Complainant’s QATALYST brand when registering the disputed domain name. The Complainant emphasizes that the QATALYST mark is well-known and globally used, and submits that the Respondent intentionally registered the disputed domain name using misspellings of the QATALYST mark. According to the Complainant, the Respondent has sought to exploit the reputation and goodwill of the Complainant’s QATALYST and QATALYST PARTNERS marks, fraudulently using the dispute domain name to confuse consumers into believing that an association exists with the Complainant. The Complainant asserts that the disputed domain name was privately registered to conceal the Respondent’s identity so that Internet users would not be able to distinguish between the registrant of the disputed domain name and the Complainant. The Complainant submits that UDRP panelists in similar circumstances have found that the infringing use of the domain name, lack of content on a webpage, and intentional concealment of the domain name owner’s identity supports a finding of bad faith registration and use, citing Fetzer Vineyards v. --, WIPO Case No. D2019-2285, and Christian Dior Couture v. Chanel Perfume/Whois Privacy Protection Service Inc.,WIPO Case No. D2007-0876. The Complainant submits from the surrounding circumstances that the Respondent registered the disputed domain name intending to take advantage of the Complainant’s well-known reputation and disrupt the Complainant’s business by misleading third parties to believe that the disputed domain name was registered in connection with the Complainant’s business. The Complainant warns there is grave potential for the Respondent to use the disputed domain name fraudulently and deceptively to deceive consumers through exploitation of the Complainant’s QATALYST mark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s QATALYST mark, in which the Complainant has established rights through registration and long and extensive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. The Complainant’s QATALYST mark is clearly recognizable in the disputed domain name.3 The transposition of the last two letters of the QATALYST mark in the disputed domain name does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark, and as such clearly reflects typosquatting.4 Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy.5 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. Nevertheless, the Respondent registered the disputed domain name, appropriating the Complainant’s QATALYST mark and engaging in typosquatting. Insofar as the record reflects, the disputed domain name does not resolve to an active website. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 disputed 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 trademark 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 trademark or service mark at issue. The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. Having regard to the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“Telstra case”). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel finds that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s QATALYST mark in mind when registering the disputed domain name. Absent any explanation from the Respondent, the Panel concludes that the Respondent has engaged in the bad faith practice of typosquatting, seeking to capitalize on the Complainant’s rights by creating a likelihood of confusion with the Complainant’s QATALYST mark. That the Respondent appears to have made no active use of the disputed domain name does not preclude a finding of bad faith registration and use in the circumstances of this case. As set forth in the Telstra case, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531. Considerations that supported a finding of bad faith in the Telstra caseare present in this case as well. The Complainant’s QATALYST mark is distinctive and well known. It is clear beyond cavil that the Respondent was aware of the Complainant’s QATALYST mark and deliberately resorted to typosquatting when registering the disputed domain name. There is no evidence of any actual or attempted good faith use of the disputed domain name by the Respondent. Based on the record in this proceeding, the Panel cannot envision any legitimate or good faith use to which the disputed domain name could be put by the Respondent. The Respondent’s conduct smacks of opportunistic bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 William R. Towns 1 The USPTO as a condition to the registration of the QATALYST PARTNERS marks required the Complainant to disclaim the exclusive right to use “PARTNERS” apart from the marks a shown. 2 See WIPO Overview 3.0 , section 1.7 . 3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy. 4 Typosquatting is characterized by a domain name consisting of a common, obvious, or intentional misspelling of a trademark, and is generally held to be confusingly similar for purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.9, and relevant decisions. 5 See WIPO Overview 3.0 , sections 1.11 , and relevant decisions.
Sole Panelist
Date: June 5, 2021
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