WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Karma, Inc. v. Neil Oterovasques
Case No. D2017-0469
1. The Parties
The Complainant is Credit Karma, Inc., of San Francisco, California, United States of America ("U.S."), represented by Reed Smith LLP, U.S.
The Respondent is Neil Oterovasques of Greensboro, North Carolina, U.S.
2. The Domain Name and Registrar
The disputed domain name <creditkarmaloan.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the corresponding contact details for the Domain Name to the Center.
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 March 16, 2017. In accordance with the Rules, paragraph 5, the due date for the Respondent to file a Response was April 5, 2017. The Respondent did not submit a response. Accordingly, the Center notified the parties of the Respondent's default on April 6, 2017.
The Center appointed Marylee Jenkins as the sole panelist in this matter on April 18, 2017. 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
Based on the review of the uncontested evidence submitted by the Complainant, the Panel determines that the Complainant is the owner of trademark registrations for the mark CREDIT KARMA (U.S. Reg. No. 4,014,356 filed November 20, 2009 and registered August 23, 2011 in class 35) as well as CREDIT KARMA & DESIGN (U.S. Reg. No. 5,057,486 filed September 10, 2015 and registered October 11, 2016 in classes 9, 35, 36, 38, 41, 45) (individually and collectively the "Complainant's Mark"). Additionally, the Complainant owns more than 240 domain names that incorporate the Complainant's mark CREDIT KARMA, including the domain name <creditkarma.com> (registered on August 30, 2005) along with a corresponding website, that are used by the Complainant to market a wide range of financial services under its CREDIT KARMA brand.
The Respondent registered the Domain Name on August 13, 2015. The Domain Name previously directed visitors to a web page that contained pay-per-click advertising links related to "Loans and Credit Cards for Bad Credit" and third party competitor websites of the Complainant. The Domain Name now directs visitors to a parked web page of the Registrar that contains pay-per-click advertising links to the Complainant's web site at "www.creditkarma.com" as well as to third party competitor websites.
5. Parties' Contentions
The Complainant submits that since 2007 it has been the provider of, and has continuously used the Complainant's Mark in connection with a free credit and financial management platform that also provides consumers with access to educational content and reviews for a wide range of financial products, including automobile insurance, credit cards, savings and checking accounts, home equity and personal loans.
The Complainant states that it has more than 500 employees, and more than 60 million members in the U.S. and Canada. The Complainant states that it has developed a global reputation as a leading personal finance company and has received a total of USD 368.5 million in equity funding from investors and that the press last reported its valuation at USD 3.5 billion.
The Complainant states that the Complainant's Mark is famous and enjoys a wide-reaching reputation in connection with high-quality personal finance products and services and that it has expended significant time, money and resources to promote its products and services using the CREDIT KARMA marks on television and in radio commercials, social media, billboards, print and digital advertisements, Internet websites, mobile applications and other media outlets. The Complainant alleges that it has developed significant goodwill in the Complainant's Mark and has grown the Complainant's Mark into one of the most recognized and well-known brands in the personal finance industry realizing USD 350 million in operating revenue.
The Complainant alleges that the Domain Name incorporates the Complainant's "Credit Karma" name and the Complainant's Mark in its entirety, and, as such, creates sufficient similarity between the Complainant's Mark and the Domain Name to render them confusingly similar. The Complainant argues that the only difference between the Domain Name and the Complainant's Mark is "the addition of the generic descriptor 'support'[sic]". The Complainant continues by stating that it provides information, offers and personalized recommendations for personal, auto, student and business loans. Because the Domain Name is visually and phonetically similar to both the Complainant's Mark and various "creditkarma" domain names owned by the Complainant, the Complainant alleges that a user encountering the Respondent's Domain Name is likely to be confused into believing that there is some relation, affiliation, connection, approval or association between the Respondent and the Complainant, when, in fact, no such affiliation exists.
The Complainant further alleges that it has acquired a substantial reputation under common law by virtue of its extensive and significant advertising of the Complainant's Mark and its substantially exclusive and continuous use of the Complainant's Mark and domain names since at least as early as February 1, 2008. The Complainant counters that the Respondent, on the other hand, has no rights or legitimate interests in the Domain Name based on the Respondent not being referred to or commonly known by the name "creditkarmaloan", has no legal relationship with the Complainant, does not have any identifiable history of using the Domain Name in connection with a bona fide offering of goods or services and has not developed any legitimate business relating to or incorporating the Domain Name. The Complainant further alleges that the Respondent appears to have registered the Domain Name for the sole purpose of profiting off of the goodwill of the Complainant.
The Complainant further notes that it has never licensed nor otherwise permitted the Respondent to use the Complainant's Mark or apply for or use any domain names incorporating the Complainant's Mark. More importantly, the Complainant alleges that the Respondent's use of a Domain Name that is confusingly similar to the Complainant's Mark to redirect Internet users interested in the Complainant's products and services to a website that promotes and sells competitive products and services is evidence of a lack of rights and legitimate interests and thus the Respondent does not have any legitimate rights or interests in the Domain Name.
The Complainant continues by alleging that given the fame and widespread use of the Complainant's Mark, any use by the Respondent of the Domain Name would constitute an infringement of the Complainant's trademark rights and that bad faith can be presumed in that the Respondent was aware of the Complainant's well-known marks and claim of rights therein.
The Complainant further states that the Respondent has acted in bad faith pursuant to paragraph 4(b)(iv) of the Policy by opportunistically registering and using a Domain Name that incorporates the Complainant's Mark (including in the source code of the website associated with the Domain Name) to intentionally attract, for commercial gain, Internet users to the Respondent's website and competitors of the Complainant by creating a likelihood of confusion.
The Respondent did not file a response with respect to this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above elements are present.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant's Mark.
A review of the second-level domain of the Domain Name shows that it comprises the Complainant's Mark (i.e., CREDIT KARMA) in its entirety along with the word "loan" as a suffix. A review of the Complainant's trademark registration for the word mark CREDIT KARMA used in connection with financial based services in class 35 since at least 2008 as well as the uncontested evidence of the Complainant's website at "www.creditkarma.com" providing information on personal, auto, student and business loans supports the finding that the word "loan" is descriptive of the Complainant's services. Coupled with the use of the word mark CREDIT KARMA pre-dating the registration of the Domain Name, any possible goods or services offered on a website at this Domain Name would accordingly suggest or imply that such are authorized by or affiliated with the Complainant. Based on the uncontested evidence and assertions of the Complainant, the Panel finds that the Domain Name is confusingly similar to the Complainant's Mark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the panel to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holder's rights to or legitimate interests in a domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder 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.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making any demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Name. In addition, no evidence has been presented to suggest that the Complainant has ever allowed or permitted the Respondent to register or use any domain name incorporating the Complainant's Mark in any fashion. Rather it is apparent that the Complainant had rights in the Complainant's Mark at the time of the Respondent's registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. Directing the Domain Name to a web page with pay-per-click links as well as to competitor websites does not create a right or legitimate interest in this Domain Name by the Respondent. The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 the complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 website or location or of a product or service on the holder's website or location.
No evidence has been presented that the Respondent is commonly known by the Domain Name or that the Complainant has, at any time, assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant's Mark. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. Based on the uncontested evidence and assertions of the Complainant, the Panel finds that the Respondent had knowledge of the Complainant's Mark and its rights therein based on the registration of the Domain Name including the Complainant's Mark in its entirety along with the word "loan" which is descriptive of the Complainant's services.
The evidence further shows that the registration of the Domain Name by the Respondent does not predate the Complainant's earlier first use and first use in commerce of the Complainant's Mark and its name. Rather the Complainant has sufficiently proven that the Respondent likely acquired the Domain Name in bad faith primarily for the purpose of diverting Internet users looking for the Complainant to the Respondent's site for its own commercial benefit. The Complainant has submitted uncontested evidence showing that the Domain Name directs to a web page containing pay-per-click links related to "Loans and Credit Cards for Bad Credit" as well as to websites of the Complainant's competitors. A review of the current web page at the Domain Name now shows a parked web page also with pay-per-click links to third party competitor web sites. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its parked web page so as to create a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation or endorsement thereof for apparent commercial benefit. The Panel therefore concludes that the Respondent has registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <creditkarmaloan.com> be transferred to the Complainant.
Date: May 10, 2017