The Complainant is Greenlight Financial Technology, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough LLP, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 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 October 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 8, 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 BackgroundThe Complainant is a North American financial technology company founded in 2014.
The Complainant owns GREENLIGHT trademark registrations in the United States, obtained on December 20, 2016 (trademark registration number 5106237), and in Canada, obtained on October 8, 2020 (trademark registration number TMA1,084,040).
The Complainant is also the owner of domain names containing the term “greenlight”, such as
The Respondent registered the disputed domain name
The Panel accessed the disputed domain name on December 18, 2021, which was linked to a parking page advertising scheme. Also, the Complainant brought evidence that some of the parked pages advertise products and services in direct competition with the Complainant.
5. Parties’ Contentions A. ComplainantThe Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Long prior to the Respondent’s registration of the disputed domain name on August 24, 2021, the Complainant obtained trademark rights in the GREENLIGHT expression dating back as early as in 2016. The disputed domain name is unquestionably confusingly similar to the GREENLIGHT mark as the disputed domain name wholly incorporates the GREENLIGHT mark followed by the misspelled descriptive term “carrd”, a term directly related to the Complainant’s GREENLIGHT products and services. It is well established that where the relevant trademark is recognizable within the disputed domain name, adding a descriptive or generic word to a trademark in a domain name, particularly when such additional word relates to the goods or services with which the trademark is used, does not avoid finding confusing similarity. Moreover, the disputed domain name, a classic typosquatting example, is also virtually identical to the Complainant’s
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the names “Greenlight” or “Greenlight Carrd”. Moreover, the Complainant has not authorized the Respondent to use the Complainant’s well-known GREENLIGHT mark nor is the Respondent a licensee of the GREENLIGHT mark. The Respondent cannot assert that it has been using the disputed domain name, prior to any notice of the present dispute, in connection with a bona fide offering of goods or services or that it has made demonstrable preparation to do so. The disputed domain name is being used to resolve to a website which features sponsored advertisement confusingly similar to the Complainant’s well-known GREENLIGHT mark. The Respondent intends to drive traffic to its parked webpages based on the creation of confusion with the Complainant’s GREENLIGHT mark, capitalizing on the goodwill and notoriety associated with such trademark. Furthermore, the combination of the Complainant’s GREENLIGHT mark and the misspelled, generic term “card”, a term which directly relates to the Complainant’s products and services, is implicit proof of the Respondent’s knowledge of the Complainant and of the Complainant’s GREENLIGHT mark prior to registration of the disputed domain name, as well as of the Respondent’s intention to target the GREENLIGHT mark. Finally, the Respondent’s actions are suggestive of an intent to use the disputed domain name for malicious purposes such as phishing or fraud.
- The disputed domain name was registered and is being used in bad faith. Bad faith registration can be found where a respondent knew or should has known of the complainant’s trademark rights and nevertheless registered a domain name in which he had no rights or legitimate interests. The Respondent’s knowledge of the Complainant’s GREENLIGHT mark is apparent from the fact that the disputed domain name is comprised of the GREENLIGHT mark plus the misspelled word “carrd”, which is term directly related to the Complainant’s products and services. The disputed domain name was intentionally selected to create confusion and to trade off the good will and reputation of the Complainant’s GREENLIGHT mark or otherwise create a false association with the Complainant. Furthermore, prior panel decisions have consistently recognized that the registration of domain names which are used to operate “click-through” sites can be considered to be evidence of bad faith use. The Respondent’s failure to respond to the Complainant’s cease and desist email and the Respondent’s use of privacy services are further evidence of the Respondent’s bad faith registration and use of the disputed domain name. Lastly, while the Complainant is not presently aware of any such attempts, the Complainant contends that the totality of the circumstances supports a finding that the Respondent acted in bad faith and that it is more likely than not that the Respondent registered the disputed domain name to facilitate a phishing and/or business email compromise attack.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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 SimilarAnnex 7 to the Complaint shows registrations of GREENLIGHT trademarks obtained by the Complainant in the United States and in Canada.
The trademark GREENLIGHT is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark basically by the addition of the term “carrd”, as well as of the gTLD “.com”.
Previous UDRP decisions have demonstrated that additions (such as “card” or its misspelling variation “carrd”, for financial services) do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the 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; 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The Respondent has not answered the cease-and-desist letter sent by the Complainant, didn’t present any response to the present proceeding, and has not even explained why he has chosen the peculiar expression “greenlightcarrd” to compose the disputed domain name. Nevertheless, the Respondent is obtaining revenues from webpages and advertisement parked in the disputed domain name, under the Complainant’s trademark. Moreover, the composition of the disputed domain name, namely the addition of the misspelled “carrd” to the Complainant’s mark, is such to carry a risk of implied affiliation that cannot constitute fair use.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2021) the trademark GREENLIGHT was already directly connected to the Complainant’s financial activities.
The disputed domain name encompasses the trademark GREENLIGHT, together with a misspelling version of a word descriptive of the Complainant’s products and services (“carrd”).
The disputed domain name is also virtually identical to the Complainant’s
Therefore, the Panel concludes that it is very unlikely that the Respondent was not aware of the Complainant’s trademark and that the adoption of the expression “greenlightcarrd” could be a mere coincidence.
Furthermore, the website at the disputed domain name is linked to parking page advertisement. In doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtains revenue from this practice; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant.
Former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Finally, the absence of a reply from the Respondent is further evidence of bad faith from the Respondent in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.
7. DecisionFor 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
Rodrigo Azevedo
Sole Panelist
Date: December 22, 2021