WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabbage, Inc. v. Oneandone Private Registration, 1&1 Internet Inc. - www.1and1.com / Robert Hanssen, Ridiculous File Sharing
Case No. D2015-1507
1. The Parties
Complainant is Kabbage, Inc. of Atlanta, Georgia, United States of America ("USA"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law LLC, USA.
Respondent is Oneandone Private Registration, 1&1 Internet Inc. - www.1and1.com of Chesterbrook, Pennsylvania, USA / Robert Hanssen, Ridiculous File Sharing of Las Vegas, Nevada, USA.
2. The Domain Names and Registrar
The disputed domain names <kabbagefund.com>, <kabbagefunding.com>, <kabbagemail.com>, <kabbageworkingcapital.com>, <kabbage4amazon.com> and <kabbage4etsy.com> are registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 24, 2015. On August 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 28, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 28, 2015.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceeding commenced on September 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 22, 2015.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on October 26, 2015. 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 November 9, 2015, the Panel requested the Center to issue Administrative Panel Procedural Order No. 1, to which Complainant responded on November 12, 2015. Procedural Order No. 1, among other things, extended the date for forwarding this Decision to the Center until November 20, 2015. Substantive aspects of the Procedural Order and Complainant's response are elaborated below.
4. Factual Background
Complainant owns multiple registrations for the trademark KABBAGE, for example United States Registration Nos. 3,905,311 and 4,682,136 in International class 36, each with a first use in commerce date of June 30, 2010.
The disputed domain names were registered as follows:
<kabbagefunding.com> and <kabbagemail.com>, February 28, 2013;
<kabbage4amazon.com>, <kabbage4etsy.com>, and <kabbageworkingcapital.com>, March 5, 2013;
and <kabbagefund.com> March 8, 2013.
All the disputed domain names at the time of filing of the Complaint redirected users to the same commercial website promoting beacon hardware and software services for mobile platforms. As of this writing, all the disputed domain names now redirect users to a website offering paid online training courses. Both of the websites to which the disputed domain names redirected users are entirely unrelated to Complainant's business connected to the KABBAGE marks.
5. Parties' Contentions
Complainant avers that it is a highly successful company founded in 2008. Complainant avers that, through its technologically advanced application and data analysis techniques, it streamlines the process for financing small online businesses.
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain names are confusingly similar to Complainant's trademark, (2) Respondent has no rights or legitimate interests in the disputed domain names, and (3) the disputed domain names were registered and are being used in bad faith, all in violation of the Policy.
Complainant also notes that it was awarded transfer of the domain name <kabbageinc.com> by a UDRP panel in an earlier unrelated proceeding against the present Respondent, Robert Hanssen/Ridiculous File Sharing. See Kabbage, Inc. v. Robert Hanssen, Ridiculous File Sharing, et al.,WIPOCase No. D2015-0842.
On the above grounds, Complainant requests transfer of the disputed domain names.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain names are confusingly similar to Complainant's trademarks.
UDRP panels commonly disregard the generic Top-Level Domain (gTLD) suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607.
The disputed domain names all include Complainant's KABBAGE mark in its entirety, adding only the generic terms "fund", "funding", "mail", "working capital", and the phrases "4amazon" and "4etsy". Omitting the gTLD suffix, the Panel finds that the addition of the generic terms and phrases with third-party trademarks is not sufficient to distinguish the disputed domain names from the KABBAGE mark.
In fact, the Panel finds that Respondent's addition of the terms "fund", "funding", "working capital" and even the addition of the "4amazon" and "4etsy" terms is in each case likely to increase the confusion that Internet users would experience, since the terms are suggestive of the products with which Complainant uses its mark. Cf. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 ("[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark…."). In the case of "4amazon" and "4etsy", the added terms suggest specific large potential customer bases targeted by Complainant for its special online business lending.
The Panel concludes that the first element of Policy, paragraph 4(a) is fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods or services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraph 4(c).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of production passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id.,(citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
The Panel accepts the Complaint's undisputed allegations that Respondent has no authorization to use Complainant's trademarks and that Respondent is not making bona fide use of the disputed domain names under the Policy. The Panel also agrees that Respondent is not commonly known by the disputed domain names.
The redirection of users by Respondent to websites promoting commercial products unrelated to the trademarks precludes any finding that there is a legitimate noncommercial interest in, or fair use of, the disputed domain names, without intent for commercial gain to misleadingly divert consumers.
The Complaint makes out a prima facie case. Filing no response, Respondent has not rebutted Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of rights or legitimate interests in use of the disputed domain names.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith. Policy, paragraph 4(b)(iv). See, e.g., L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The record shows that Respondent registered the disputed domain names long after Complainant perfected its trademark rights. The terms used to make up the disputed domain names make obvious that Respondent was aware of the nature of Complainant's business associated with its trademarks. Respondent deliberately attempted to attract Internet users to redirect traffic to commercial websites for commercial gain, by creating a likelihood of confusion with Complainant's marks. This is evidence of bad faith registration and bad faith use.
The Panel also finds that bad faith is established under Policy, paragraph 4(b)(ii): Respondent has engaged in a pattern of multiple registrations of domain names that incorporate Complainant's trademark, which appear to the Panel to have been made "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name". Id.; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition paragraph 3.3; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 ("[a] 'pattern of conduct' as required in Paragraph 4.b.(ii) . . . may involve multiple domain names directed against a single complainant"). Not only has Respondent registered the six confusingly similar disputed domain names , but also registered the domain name <kabbageinc.com>, ruled in a recent UDRP decision to be in bad faith. Kabbage, Inc. v. Robert Hanssen, Ridiculous File Sharing, et al., supra.
The Panel further finds that Respondent's failure to reply to the Complaint in these circumstances is cumulative evidence of use in bad faith.
Consequently, the Panel concludes that the requirements of the third element of Policy, paragraph 4(a) are fulfilled. Having met all the requirements of Policy, paragraph 4(a), Complainant is clearly entitled to transfer of the disputed domain names <kabbagefund.com>, <kabbagefunding.com>, <kabbagemail.com>, and <kabbageworkingcapital.com>.
The appropriate remedy with respect to Respondent's registration and use of the disputed domain names <kabbage4amazon.com> and <kabbage4etsy.com>, however, bears further consideration.
D. Appropriate Remedy for Domain Names Combining Complainant's Marks with the Marks of Third Parties
The issue of whether to transfer to a UDRP complainant disputed domain names containing combinations of marks owned in part by third-party right holders that are not present in the proceeding does not arise frequently. In the Panel's view, a complainant ideally should try to obtain the third party's consent before seeking transfer.
Where such consent is unlikely, the Panel ruled a few years back in an unrelated proceeding that the appropriate remedy was cancellation under Policy, paragraph 4(i). Incase Designs Corp. v. Rogenie LLC, Rogenie Cordero, WIPO Case No. D2012-1491 (<iphoneincase.com>; "Apple Inc. is not a party to this proceeding. As conceded by Complainant, there is no indication . . . that Apple Inc. would consent to the remedy of transfer to Complainant. . . . it would not be consistent with the Policy to order transfer to Complainant in the absence of consent from the third-party holder of the iPHONE trademark." (citations omitted)). While seeking transfer, the complainant in Incase Designs Corp. v. Rogenie LLC, Rogenie Cordero, supra, had also suggested that cancellation might be an appropriate remedy in the circumstances.
The Panel was not alone in reaching the conclusion that cancellation may be an apt remedy when there is no consent by the third-party trademark holder. E.g., Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions, WIPO Case No. D2003-0725, cited in Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794.
Several UDRP panels have reached the opposite result, granting transfer in the absence of third-party consent. Many of those proceedings involved domain names combining trademarks of opposing brands, e.g., Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 (<chevron-texaco.com>), or combining marks unrelated to the complainant's business, e.g., LEGO Juris A/S v. Suka LLC, WIPO Case No. D2011-1057 (<legohalo.org> and <legospiderman.net>).
This situation is different. Here, both the AMAZON and ETSY marks are used by their respective owners in businesses that are a fertile and significant source of prospective customers for Complainant's business under the KABBAGE marks.1 For this reason, on November 9, 2015, the Panel issued Administrative Panel Procedural Order No. 1. The Order gave Complainant three days to submit evidence that the relevant third-party right holders of the trademarks AMAZON and ETSY had consented to transfer. Procedural Order No. 1 also invited both Parties to make submissions about the appropriate remedy, since <kabbage4amazon.com> and <kabbage4etsy.com> incorporate marks of third parties not present in this proceeding.
In response to Procedural Order No. 1, Complainant first confirmed that neither Amazon nor Etsy had consented to transfer of the disputed domain names to Complainant.
Complainant nonetheless maintains that transfer of these disputed domain names is proper and consistent with UDRP decisions. Complainant also represents that even if the Panel grants transfer, Complainant is mindful of the requirements in paragraph 2 of the Policy, including the undertaking that Complainant's "registration of the domain name[s] will not infringe upon or otherwise violate the rights of any third party". In this light, Complainant also suggests that it may not make active use of these two disputed domain names.
Finally, in its response to Procedural Order No. 1, Complainant requests thirty days to attempt to secure consent from Amazon and Etsy in the event that the Panel intends to order cancellation. Respondent did not respond to Procedural Order No. 1 or Complainant's submission.
Against this background, the Panel first observes that several decisions cited by Complainant are inapplicable. Unlike the present proceeding, those decisions either involve domain names combining marks from disparate, unrelated fields, or domain names combining the marks of competing businesses.2
The Panel also observes that while authority is divided, there is a growing trend among UDRP panels to support transfer in the absence of third-party right holder consent. A few of the more recent decisions also grant transfer in circumstances that the Panel finds analogous to this proceeding. Eg., Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603 (granting transfer of domain names <gucciipadcase.net> and <gucciipadcases.com>, panel noted that the complainant marketed cases designed for Apple's iPad product); Decathlon SAS v. Nadia Michalski, WIPO Case No. D2014-1996 (<decathalon-nike.com> domain name combining marks of sports apparel and third-party retail outlet).
This Panel recognizes that to the extent practicable, the Policy should be interpreted in a consistent manner. The Panel also believes that the remedy of cancellation, for sound reasons, is disfavored by UDRP panels and should be avoided when possible. Particularly where Complainant has fulfilled all the elements of Policy paragraph 4(a), expressed a strong preference for transfer over cancellation, and demonstrated to the satisfaction of the Panel that it is cognizant of its obligations to respect the rights of third-party trademark holders, the Panel is willing to reach a result different from that embraced in the Panel's decision three years ago in Incase Designs Corp. v. Rogenie LLC, Rogenie Cordero, supra.
As others have written, "neither the Policy nor the Rules expressly require the consent of a third party and previous panels have accepted complaints request[ing] that a domain name may be transferred to the complainant, noting that such decision would be expressly without prejudice to any rights, which may be asserted by third party trademark holder". Decathlon SAS v. Nadia Michalski, supra. See, e.g., F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751.
On balance, the Panel rules, therefore, that it is appropriate and consistent with the summary nature of the UDRP to grant transfer of all the disputed domain names in the instant case.
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 names <kabbagefund.com>, <kabbagefunding.com>, <kabbagemail.com>, <kabbageworkingcapital.com>, <kabbage4amazon.com> and <kabbage4etsy.com> be transferred to Complainant.
The order of transfer of <kabbage4amazon.com> and <kabbage4etsy.com> is without prejudice to any rights that may be asserted by Amazon or Etsy with respect to their marks.
Jeffrey D. Steinhardt
Date: November 20, 2015
1 In fact, one of Complainant's principal websites comments on both Amazon's and ETSY's business models and practices, associating the commentary with offers that promote Complainant's business.
2 Moreover, three of four UDRP decisions claimed by Complainant to involve the transfer of domain names combining the ETSY mark with other third-party marks are not relevant; those three cases are unrelated to the question of domain names that combine the marks of multiple right holders. Instead, in each case, the contested domain name combined or embedded generic words with trademarks and resulted in appearance of the letter string "etsy"; there was no indication in any of those three cases that the letter string was intended by the respondent to mimic or employ the ETSY mark. See, e.g, Nutri/System IPHC, Inc. v. Domain Name Proxy Service, Inc., WIPO Case No. D2013-2127 (<nutradietsystem.com> (Complainant's submission here writes "nutradiETSYstem")); Inter IKEA Systems B.V. v. First name Last name, WIPO Case No. D2013-1035 (<ikeaclosetsystems.org> (Complainant's submission here writes "ikeasclosETSYstems.org>")).