The Complainant is Ivy Hill Asset Management, L.P., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Johnson, Gname.com Pte. Ltd., Singapore. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 18, 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 June 21, 2021, 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 June 26, 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 June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2021. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 10, 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. On August 11, 2021, the Center received an email communication from a third party. On the same day, the Center sent an email to the third party requesting that the third party identify herself or himself, clarifying her/his relationship (if any) to the Respondent, and provide information sufficient to establish the legitimacy of her/his request in the context of the current proceedings. On August 12, 2021, the third party emailed the Center. On the same day, the Center repeated its request to the third party, however, no answer has been received. 4. Factual Background The Complainant is a registered investment advisor in the United States. The Complainant delivers comprehensive financing solutions to the middle-market. The Complainant is the owner of the trademark IVY HILL (United States Trademark Reg. No. 3965370, which was registered on May 24, 2011). The Complainant is also the owner of the following domain names: The Respondent registered the Disputed Domain Name The Complainant´s contentions can be summarized as follows: Identical or confusingly similar The Complainant contends that the Disputed Domain Name incorporates essentially the identical IVY HILL trademark owned by the Complainant, changing the trademark only by adding a hyphen and the generic Top-Level Domain (“gTLD”) “.com” after it, which does not avoid confusing similarity with the Complainant´s trademark. Rights or legitimate interest The Complainant alleges that the Respondent is not commonly known by the Disputed Domain Name, nor has the Complainant authorized, licensed, or otherwise permitted the Respondent to register and/or use the Disputed Domain Name. The Complainant further states that the Respondent has not used or prepared to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Disputed Domain Name to redirect and forward website visitors to the website, which is a referral link to the gambling website, presumably generating affiliate revenue for the Respondent. Registration and use in bad faith The Complainant states that the Respondent acquired and is commercially using the Disputed Domain Name, which is virtually identical to the Complainant’s IVY HILL trademark to divert Internet traffic intended for the Complainant to affiliate links to commercial gambling websites, causing likely confusion of the Internet visitors and generating affiliate revenue for the Respondent. The Complainant also contends that at the time of registration of the Disputed Domain Name, it is evident that the Respondent had actual knowledge of the Complainant’s IVY HILL trademark since the Disputed Domain Name is virtually identical to the Complainant’s IVY HILL trademark, which is highly distinctive and lacks any meaning as an English phrase apart from the meaning created by the Complainant as a brand for its services. Furthermore, the Respondent is likely using the Disputed Domain Name in bad faith with respect to email addresses based on the Disputed Domain Name. In fact, the Disputed Domain Name has active MX (mail exchange) records, which evidences a likelihood of additional bad faith use of the Disputed Domain Name. The Respondent also used a privacy service to register the Disputed Domain Name, which further demonstrates the Respondent’s bad faith use and registration of the Disputed Domain Name. Finally, the Complainant states that the Respondent was involved in six prior UDRP panel decisions under the Policy against the Respondent Gname in the last year alone, which concern the Respondent registering and using domain names incorporating well-known and famous trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. The Center received two email communications on August 11 and 12, 2021, from a third party alleging receipt of Center communications and requesting further information. Despite repeated requests from the Center for the third party to identify its relationship and connection to the Respondent and/or proceeding, no further communications or submissions were received. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case: (i) the Disputed 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 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 Based on the evidence submitted, the Panel finds that the Disputed Domain Name The Disputed Domain Name only differs from the Complainant’s trademarks with the addition of a hyphen between the trademarks term. This addition does not prevent a finding of confusing similarity between the Complainant’s trademark and the Disputed Domain Name. Moreover, the addition of the gTLD “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity. Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent 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 at issue. There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use its trademark in the Disputed Domain Name. Furthermore, there is no evidence that the Respondent is commonly known by the Disputed Domain Name. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions. As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Disputed Domain Name was registered on March 21, 2021, while the Complainant’s trademark was registered on March 24, 2011. The Respondent did not reply to the Complainant’s assertions. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights. Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. In the case at hand, the Respondent’s registration of a domain name confusingly similar to the Complainant’s trademark, used for forwarding website visitors to a gambling website, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name, and its failure to respond to the Complaint, constitutes bad faith. Due to this conduct, it is obvious that the Respondent intentionally created a likelihood confusion with the Complainant’s trademark and websites in order to attract Internets users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy. While the Disputed Domain Name is currently inactive, the change in the use of the Disputed Domain Name does not alter the Panel’s findings, rather it may constitute a further indication of bad faith. Moreover, the fact that the Respondent was previously involved in six UDRP cases is further indication of the Respondent’s bad faith. Finally, the Respondent has taken active steps to conceal its true identity through a privacy service. This particular conduct in the circumstances of this case is a further evidence supporting a finding of the Respondent’s bad faith. Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name. 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, Pablo A. Palazzi
Sole Panelist
Date: August 24, 2021
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