The Complainant is Walton Street Capital, LLC, United States of America (“United States”), represented by Mayer Brown LLP, United States.
The Respondent is Kelly Fletcher, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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 November 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.
The Center appointed Evan D. Brown as the sole panelist in this matter on January 4, 2022. 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 private equity real estate firm. It owns a number of trademarks, including WALTON STREET, which it has registered the United States (Reg. No. 3,470,871, registered on July 22, 2008). According to the WhoIs records, the disputed domain name was registered on May 27, 2021. The Complainant asserts that the Respondent has used the disputed domain name to send emails while impersonating the Chief Financial Officer of the Complainant, seeking to commit financial fraud.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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. The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly SimilarThis element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the WALTON STREET mark by providing evidence of its trademark registration. The disputed domain name is confusingly similar to the WALTON STREET mark. The letters “st” plausibly comprise the abbreviation for the word “street,” and combined with the word “Walton” make that portion of the disputed domain name essentially identical to the Complainant’s mark. The disputed domain name also includes the letters “llc”, which do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark. See WIPO Overview 3.0, section 1.8. The WALTON STREET mark is sufficiently recognizable within the disputed domain name for a showing of confusing similarity under the Policy.
The Panel finds that the Complainant has established this first element under the Policy.
B. Rights or Legitimate InterestsThe Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
On this point, the Complainant asserts, among other things, that (1) the Complainant has not consented to or otherwise authorized the Respondent’s use of any of the Complainant’s trademarks, (2) the Respondent has made no bona fide offering of its own goods or services in connection with the disputed domain name but instead has registered the disputed domain name solely to impersonate employees of the Complainant and to thereby commit fraud, (3) there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, and (4) there is no indication that the Respondent is using or intends to use the disputed domain name for any legitimate noncommercial or fair use.
The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor. Accordingly, the Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad FaithThe Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
Because the Complainant used the disputed domain name to imitate an executive of the Complainant, one cannot reasonably believe that the Respondent was not aware of the Complainant and its marks when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. Bad faith use is clear from the Respondent’s activities of using the disputed domain name to send fraudulent email. For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element.
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
Evan D. Brown
Sole Panelist
Date: January 18, 2022