The Complainant is Open Invest Co., United States of America (“United States”), represented by Morrison & Foerster, LLP, United States.
The Respondent is Opurum Emmanuel, Nigeria1. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 21, 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 May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2021. The Center appointed Antony Gold as the sole panelist in this matter on June 16, 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 is a public benefit corporation with its principal place of business in San Francisco, United States. Its stated mission is to provide technology that assists with values-based investing, that is the creation of financial portfolios for investors that focus on companies which reflect the values that are important to the individual investor. The Complainant provides its services under its OPENINVEST trade mark and through its website at “www.openinvest.com”. The Complainant owns three current trade mark registrations for OPENINVEST including United States service mark, registration number 5,812,091, for OPENINVEST in class 36, registered on July 23, 2019. The disputed domain name was registered on December 30, 2020. It resolves to the home page of a website which is headed “Openinvest” (positioned next to a stylized “IN”) followed by the descriptor “World class assets investment fund” and additional wording; “Openinvestco is an investment firm whose focus is on projects related to Cannabis, Beyond Meat, Bitcoin Investments, 5G Investment, Energy Stock, Real Estate Investment, Gold Asset Management and Retirement Savings”. Subsequent pages provide further information about the range of financial products purportedly offered by the Respondent, feature apparent endorsements from satisfied customers and solicit payments from prospective investors. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is confusingly similar to its OPENINVEST trade marks. It incorporates the Complainant’s trade mark in its entirety and is therefore identical and confusingly similar to it. The only difference between the disputed domain name and the Complainant’s trade mark is the inclusion of the descriptive element “co”. Not only do these additional letters form part of the Complainant’s legal entity name, which further contributes to confusion, but they do not distinguish the disputed domain name from the Complainant’s trade mark. The Complainant says also that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. The Respondent was clearly aware of the Complainant’s mark as at the date of registration and has used information and content regarding the Complainant as part of a scheme to deceive and defraud consumers. In particular, the Respondent’s website displays the Complainant’s Securities and Exchange Commission (“SEC”) registration number, includes a picture of, and quotation from, the Complainant’s Chief Executive Officer and has copied commentary about the Complainant’s services from a third party website. The Respondent’s website purports to offer investment management services which are identical to, and compete with, the Complainant’s services and is using the disputed domain name in an effort to misappropriate the Complainant’s goodwill in its OPENINVEST mark. Use of a domain name which is confusingly similar or identical to another’s trade mark in order to divert Internet users to a competitor’s website does not comprise use in connection with a bona fide offering of goods and services. See Pitney Bowes Inc. v. Mike Ostanik,WIPO Case No. D2000-1611. Additionally, the Respondent is not commonly known by the disputed domain name, nor is it making a legitimate noncommercial or fair use of it. Nor has the Complainant authorized or licensed the Respondent to use its OPENINVEST trade mark. The Respondent is not affiliated with the Complainant, nor is it a provider of the Complainant’s services. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. Bad faith can be shown where a respondent is aware of a complainant’s well-known trade mark and has no connection to the owner of the trade mark and no authorization or legitimate purpose to use it; see MSC Mediterranean Shipping Company Holding S.A. v. Whoisguard Protected, Whoisguard, Inc. / HOSTER NODE,WIPO Case No. D2016-2105. The Respondent is clearly aware of the Complainant as it has included information and content about the Complainant on its website as part of a scheme intended to defraud consumers. The Respondent’s intention has been to make it appear that its website is sponsored by, or affiliated with, the Complainant. This use of the disputed domain name has been made without the Complainant’s permission and has no legitimate purpose other than to confuse consumers who have mistakenly arrived at the Respondent’s website. The Respondent’s actions evidence bad faith under paragraph 4(b)(iv) of the Policy because it has intentionally used the disputed domain name which is identical or confusingly similar to the Complainant’s mark, to attract Internet users for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, 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 be entitled to draw such inferences from this omission, as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is 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 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 Complainant has provided evidence of its trade and service mark registrations for OPENINVEST, full details of one of these marks having been set out above, and has thereby established its rights in this mark. For the purpose of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s OPENINVEST mark, the generic Top Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s trade mark in full, followed by the letters “co”. This additional component does not prevent the disputed domain name from being found confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Complainant’s entire mark is present within the disputed domain name and is clearly recognizable within it. The Panel therefore finds that the disputed domain name is confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made 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 in issue. The services offered by the Complainant and those purportedly offered by the Respondent are not identical in that the Complainant’s focus is on the provision of investment platforms whereas the Respondent directly solicits investments. Moreover, both the appearance and content of the parties’ websites are different. But, having regard to the fact that the Respondent has used the Complainant’s SEC registration number, in addition to a picture of, and quotation from, the Complainant’s Chief Executive Office as well as commentary about the Complainant’s services copied from a third party website, the Respondent’s clear intention is to confuse Internet users into thinking that its website is that of the Complainant or is operated with its authority and approval. The Complainant has asserted that the Respondent’s intention is to defraud prospective investors. Whilst the Complainant has provided screen prints of sections of Respondent’s website, a panel’s evaluation as to a respondent’s motive is often improved by visiting the website itself. As outlined at section 4.8 of the WIPO Overview 3.0, a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has accordingly visited the Respondent’s website (and also that of the Complainant) and has noted that when the physical address given for the location of the Respondent business in the “Contact Us” section of the website is typed into the Google search engine, it corresponds to that of a one bedroom apartment in San Francisco, United States. Having regard to claims made on the Respondent’s website such as its “international world class team of professionals” and “24×7 customer live chat” it is inconceivable that the Respondent, who is based in Nigeria, is actually conducting business of this nature and scale from a small residential apartment in San Francisco. It is appreciably more likely that the Respondent’s website and the services it purportedly offers is a sham intended to defraud investors and that its use of the Complainant’s repute and trade mark is as means of lending ostensible respectability to its activities. Use of a domain name for fraudulent purposes self-evidently cannot comprise use in connection with a bona fide offering of goods and services. There is no evidence that the Respondent has been commonly known by the disputed domain name and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; the Respondent’s website is commercial in character and the composition of the disputed domain name is such that it carries a significant risk of implied affiliation with the Complainant, which prevents its use from being considered fair. As explained at section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition; “Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. Once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith Given the confusing similarity between the disputed domain name and the Complainant’s trade mark, coupled with the use by the Respondent of other indicia directly referable to the Complainant, as more particularly described above, it is evident that, as at the date of its registration of the disputed domain name, the Respondent was aware of the Complainant and its OPENINVEST trade mark and of the capacity of the disputed domain name to attract, and cause confusion to, Internet users. Its registration in these circumstances is in bad faith; see Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited,WIPO Case No. D2016-1607. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain name falls within paragraph 4(b)(iv) of the Policy in that it resolves to a website which uses the Complainant’s OPENINVEST trade mark and which features content intended to mislead Internet users into thinking that it is operated by, or with the authority of, the Complainant in order to solicit investments for dishonest purposes. The likelihood that prospective investors will be misled is increased because of the confusing similarity between the disputed domain name and the Complainant’s OPENINVEST trade mark. Additionally, there is no conceivable good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position. These factors collectively point to bad faith registration and use of the disputed domain name; see the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447. For these reasons, the Panel finds that the disputed domain name was registered and is being 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 name Antony Gold 1 The Complaint was initially filed against “Unknown”. In response to the Registrar’s verification request, the Registrar disclosed the name and address of the entity in whose name the disputed domain name is currently registered. The amended Complaint names the underlying registrant as the Respondent.
Sole Panelist
Date: June 29, 2021
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