WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Designer Technologies, Inc. d/b/a TRADEway v. Gregory M. Lollis
Case No. D2020-1313
1. The Parties
The Complainant is Designer Technologies, Inc. d/b/a TRADEway, United States of America (“United States”), represented by Naman, Howell, Smith & Lee, PLLC, United States.
The Respondent is Gregory M. Lollis, United States.
2. The Domain Name and Registrar
The disputed domain name <tradewayoptions.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2020. On May 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2020, 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 May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2020.
The Center appointed William R. Towns as the sole panelist in this matter on June 24, 2020. 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, headquartered in Corsicana, Texas, United States, is a registered investment advisory firm regulated by the Financial Industry Regulatory Authority in the United States, providing investment advice and education services. The Complainant is the holder of a United States trademark registration for TRADEWAY, U.S. Reg. No. 5070208, filed on February 2, 2016, and registered with the United States Patent & Trademark Office (“USPTO”) on October 25, 2016. The Complainant also has applied to the USPTO to register the design plus words mark TRADEWAY BIG GOALS SMALL STEPS, U.S. Serial No. 88822315, filed on March 5, 2020 (the “TRADEWAY logo”).1 The Complainant features its TRADEWAY mark and TRADEWAY logo on the Complainant’s “www.tradeway.com” website, and has actively used the TRADEWAY mark and TRADEWAY logo in commerce since June 2016.
The disputed domain name <tradewayoptions.com> was registered by the Respondent on October 13, 2019, according to the Registrar’s WhoIs records. The disputed domain name resolves to a “clone site” displaying the Complainant’s TRADEWAY mark and TRADEWAY logo, appearing to impersonate the Complainant. Upon becoming aware of this, the Complainant sent a cease and desist letter to the Respondent by mail. The letter according to the Complainant was addressed to the contact information provided by the Respondent, but was returned to the Complainant marked undeliverable.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <tradewayoptions.com> is confusingly similar to its registered TRADEWAY mark. According to the Complainant, the Respondent is using the disputed domain name to deceive the Complainant’s customers into making investments on the Respondent’s website, believing that the Respondent’s services are connected with, sponsored or endorsed by the Complainant.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant notes that its TRADEWAY mark has been in use since 2016, at least three years prior to the Respondent’s unauthorized registration and use of the disputed domain name. The Complainant explains that the Respondent has copied and re-posted on his website the Complainant’s trademarks and the Complainant’s website content on the Respondent’s website, in an obvious attempt to confuse and trick the Complainant’s current and potential customers for financial gain.
The Complainant represents there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the Complainant’s first use and registration of the Complainant’s TRADEWAY mark. The Complainant submits there is no evidence that the Respondent has been commonly known by the disputed domain name at any time prior to the Complainant’s first use and registration of the Complainant’s TRADEWAY mark. The Complainant further maintains there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends for the reasons stated above that the Respondent registered and is using the disputed domain name in bad faith. The Complainant reiterates that the Respondent registered the disputed domain name some three years after the Complainant’s initial use of the TRADEWAY mark. The Complainant and submits that the Respondent’s misuse of the Complainant’s TRADEWAY mark and TRADEWAY logo and copying of the Complainant’s protected content convincingly demonstrates that the Respondent registered and is using the disputed domain name in bad faith, falsely associating the Complainant and the Complainant’s mark with the Respondent’s website in an attempt to lend legitimacy to Respondent’s fraudulent activity.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain name”, also known as “cybersquatting”. Weber‑Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <tradewayoptions.com> is confusingly similar to the Complainant’s TRADEWAY mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s TRADEWAY mark is clearly recognizable in the disputed domain name.3 The inclusion of the term “options” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.4 Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s TRADEWAY mark. The Respondent notwithstanding registered the disputed domain name, misappropriating the Complainant’s TRADEWAY mark, and by all appearances using or attempting to use the disputed domain name for purposes of a fraudulent investment scam.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed 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, even if it 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 mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s TRADEWAY mark in mind when registering the disputed domain name. As noted earlier, the disputed domain name is confusingly similar to the Complainant’s mark, and the record is convincing that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, in all likelihood seeking to impersonate the Complainant in furtherance of a fraudulent investment scam.
Having regard to the relevant circumstances in this case, and absent any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy, and nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain name in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent clearly was aware of the Complainant and had the Complainant’s TRADEWAY mark in mind when registering the disputed domain name. The Respondent in all probability provided false or fictitious information when registering the disputed domain name, and the record is convincing that the Respondent registered and has used the disputed domain name to create a likelihood of confusion with the Complainant’s mark, with the intent of profiting illicitly therefrom.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <tradewayoptions.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: July 7, 2020
1 The Complainant’s pending trademark application was published for opposition by the USPTO on June 19, 2020.
See WIPO Overview 3.0 , section 1.7.
See WIPO Overview 3.0, section 1.8 and cases cited therein.