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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACORE Capital LP v. WhoisGuard Protected, WhoisGuard, Inc. / Wes Fulford

Case No. D2021-0104

1. The Parties

Complainant is ACORE Capital LP, United States of America (“United States”), represented by Ropes & Gray LLP, United States.

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Wes Fulford, United States.

2. The Domain Name and Registrar

The disputed domain name <acore-capital.org> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2021. On January 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 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 Complainant on January 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 20, 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 Respondent of the Complaint, and the proceedings commenced on January 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 12, 2021.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 24, 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 Background

Complainant is a commercial real-estate financing company, with operations throughout the United States and Canada. Since 2015, Complainant has offered its services under the ACORE CAPITAL mark. Complainant has several trademark registrations for its ACORE CAPITAL mark. These include, United States Registration No. 4,890,476 (registered January 19, 2016) for ACORE CAPITAL in standard character form; and United States Registration No. 5,020,909 (registered August 16, 2016) for a composite mark, for ACORE CAPITAL and design.

Complainant owns the registration for a domain name that incorporates the ACORE CAPITAL mark. Specifically, Complainant owns the registration for <acorecapital.com> (registered April 7, 2015). Complainant uses the URL associated with this domain name to inform customers about its ACORE CAPITAL mark and its commercial real-estate financing services.

The disputed domain name <acore-capital.org> was registered on December 2, 2020. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant. The websites highlights various “financial” services from “Acore Capital,” and asks users to click on a link, to provide further information. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that the (i) disputed domain name <acore-capital.org> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it is a “leading” company with a distinctive mark and a strong reputation in the field of commercial real-estate financing. Complainant contends that it has established rights in the ACORE CAPITAL mark, as well as an active Internet presence via its domain name <acorecapital.com>. Complainant contends that Respondent has merely added a hyphen to Complainant’s ACORE CAPITAL mark, in a form of typosquatting.

Complainant contends that Respondent has used the disputed domain name to lure in customers looking for Complainant, with a website that appears to mimic an official website of Complainant. Complainant further contends that Respondent has no rights or legitimate interest in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in registering and using the disputed domain name, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not file a reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <acore-capital.org> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.

The disputed domain name directly incorporates Complainant’s registered trademark ACORE CAPITAL, with the minor addition of a hyphen. The Panel finds that the hyphen does not prevent Complainant’s trademark from being recognizable within the disputed domain name. Furthermore, to the extent it could be, this would fall under the rubric of what is commonly known as “typosquatting”, where a domain name registrant deliberately registers common misspellings of a well-known or distinctive mark in order to divert consumer traffic. Other UDRP panels have routinely found typosquatted domain names like this one to be “confusingly similar” for purposes of a finding under the UDRP. See Edmonds.com, Inc. v. Yingkun Guo, WIPO Case No. D2006-0694 (<edunds.com>); Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489 (<disneychanel.com>, <disneywolrd.com>, <walddisney.com>); see also Credit Karma, Inc. v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2017-0194 (<credidkarma.com>).

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.

Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a website that appears to mimic Complainant’s website but which is unaffiliated with Complainant or Complainant’s products and services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.

The Panel therefore finds that Respondent lacks rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant, and which attempts to confuse consumers, by highlighting various “financial” services from “Acore Capital”, and asking users to click on a link to provide further information.

Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Given the nature of the site content and the disputed domain name which incorporates Complainant’s ACORE CAPITAL mark, with only the minor addition of a hyphen, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, and in particular with regard to Complaint’s financing services offered under the ACORE CAPITAL mark.

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <acore-capital.org> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: March 8, 2021

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