WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Karma, Inc. v. Privacy Protection Service – Whoisproxy.ru / Levchenko Mikhail
Case No. D2017-1034
1. The Parties
The Complainant is Credit Karma, Inc. of San Francisco, California, United States of America (“United States” or “US”), represented by Reed Smith LLP, United States.
The Respondent is Privacy Protection Service – Whoisproxy.ru of Moscow, Russian Federation / Levchenko Mikhail of Petrenok, Russian Federation, self-represented.
2. The Domain Name and Registrar
The disputed domain name <creditkarma-online.loan> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2017. On May 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2017, 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 the Complainant on June 1, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 4, 2017.
On June 1, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. On June 4, 2017, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 the Respondent in English and Russian of the Complaint, and the proceedings commenced on June 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2017.
Several email communications were received from the Respondent in the Russian language between June 14 and June 27, 2017. In the Respondent’s email of June 20, 2017, the Respondent appeared to be willing to settle with the Complainant. On June 20, 2017, the Center invited the Complainant to comment if it would like to suspend the proceeding to explore possible settlement with the Respondent. Upon the Complainant’s request of June 26, 2017, the proceeding was suspended on the same day until July 26, 2017. Upon the Complainant’s request of July 27, 2017, the proceeding was re-instituted on the same day, and the Center confirmed that the Response due date was August 2, 2017.
Several email communications were received from the Respondent between July 25 and August 10, 2017. On August 3, 2017, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on August 14, 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
The Complainant is a US based company which operates a free credit and financial management platform which provides consumer with an access to i.a.,. weekly updated credit data and reports from major bureaus online in both the United States and Canada; credit monitoring services to help identify and prevent theft and personalized financial recommendations based on each individual user’s credit profile.
The Complainant owns the following trademark registration for CREDIT KARMA mark:
- the US trademark registration for a word mark, No. 4014356, registered on August 23, 2011 for goods and services in class 35;
- the US trademark registration for a combined mark, No 5057486, registered on October 11, 2016 for goods and services in classes 9, 35, 36, 38, 41 and 45.
The Complainant evidenced that it has actively promoted the CREDIT KARMA mark through various media.
Additionally, the Complainant owns many domain names that are comprised of the “Credit Karma” name, which Complainant uses in connection with its financial software and products, and which are accessible to consumers throughout the world, including the United States and Canada.
The Respondent is an individual who does not provide more information about himself.
The disputed domain name was registered on July 9, 2016. It resolves to an inactive website.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the CREDIT KARMA mark and “Credit Karma” name. The Complainant emphasises that the disputed domain name contains the CREDIT KARMA mark in its entirety, and, as such, creates sufficient similarity between the mark and the disputed domain name to render them confusingly similar. According to the Complainant, the only difference between the disputed domain name and the CREDIT KARMA mark is the addition of the generic descriptor “online,” and the generic Top-Level Domain (“gTLD”) .loan”. Since the Complainant owns several domain names that contain the generic term “loan” (e.g., <creditkarmaforloans.com>, <creditkarmaforstudentloans.com>, <studentloancreditkarma.com>) and the Complainant’s products, services, tools, and information are offered and made available to consumers via Complainant’s website and online credit and financial management platform, the use of the word “online” and the gTLD “.loan” may even increase the risk of confusion of the Internet’s users.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not referred to or commonly known by the name “creditkarmaloan” and has no legal relationship with the Complainant. In particular, the Complainant emphasises that it has never licensed nor otherwise permitted the Respondent to use the CREDIT KARMA mark or apply for or use any domain names incorporating this mark. Moreover, the Complainant claims that the Respondent neither have an identifiable history of using the disputed domain name in connection with a bona fide offering of goods or services nor make any legitimate noncommercial or fair use of the disputed domain name. The Complainant finds that the Respondent’s failure to associate content with the disputed domain evinces a lack of rights and legitimate interests pursuant to Policy, paragraph 4(a)(ii).
Thirdly, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant claims that given the fame and widespread use of the CREDIT KARMA mark, any use by the Respondent of the domain name in dispute would constitute an infringement of the Complainant’s trademark rights. In the Complainant’s opinion, bad faith can be presumed in that Respondent was aware of the Complainant’s well-known marks and claim of rights therein. The Complainant asserts that even if this presumption does not apply, 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 CREDIT KARMA mark to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion.
In the email communication, the Respondent stated that while registering the disputed domain name he had had no knowledge about the Complainant’s mark and he had not been aware of affecting anyone’s business. However, the Respondent admitted that he was informed by the third parties about the Complainant’s business and then he decided not to use the disputed domain name. The Respondent emphasized that the Complainant suffered not damage because of his actions.
6. Discussion and Findings
(i) Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that the disputed domain name was registered in the English language and is written in the modern English alphabet. The Complainant also submits that translating the Complaint would unnecessarily burden the Complainant and delay the proceedings.
The Respondent did not comment upon the question of the language of the proceedings.
In this circumstance, the Panel finds that it is appropriate to allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
(ii) Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed 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 in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The disputed domain name <creditkarma-online.loan> contains the Complainant’s CREDIT KARMA mark in its entirety with an addition of a generic word “online” after a dash. It is well-established that the addition of a single, generic term to an otherwise strong trademark does not necessarily eliminate the confusing similarity between a trademark and domain name. (See National City Corporation v. MH Networks, LLC, WIPO Case No. D2004-0128).
It is well established that the mere adjunction of a generic TLD (“gTLD”) “.loan” is insufficient to avoid a finding of confusing similarity (Heineken Italia S.p.A. v. xiongmiao, WIPO Case No. D2016-2193 and Les Laboratoires Servier v. miller / JunZe zhang, WIPO Case No. D2016-2029).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the CREDIT KARMA mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes that the Complainant has neither authorized nor licensed the Respondent to use its trademarks. The Parties have no business relationship with each other. Moreover, the Respondent did not present any arguments nor evidence demonstrating the preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
In the light of above, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, noting the circumstances of the case and the near instantaneous and global reach of the Internet and search engines, the Panel finds that on the balance of probabilities the Respondent knew or should have known about previously registered CREDIT KARMA mark. Moreover, the Respondent has not provided any plausible explanation as to the reason why it registered the disputed domain name, or any evidence regarding (demonstrable) preparations to use the disputed domain name.
Secondly, the disputed domain name resolves to an inactive website, which this Panel considers an instance of passive holding. As many UDRP panels indicted in numerous prior UDRP decisions, the fact that a domain name is held passively does not prevent a finding of bad faith (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232). The Panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trade mark, no response to the complaint having been filed, and the registrant’s concealment of its identity”. See section 3.3 of the WIPO Overview 3.0. In this case, no formal Response was filed, the Respondent has not submitted evidence on the rationale for registering the disputed domain name and evidence of potential or intended use in good faith which can cast doubts on the good faith of the Respondent. The mere assertion that the Respondent did not aim to hurt the Complainant’s business does not prevent a finding of bad faith.
Moreover, given the fact that the Complainant concentrates its business on the Internet and operates a financial management platform, the addition of the word “online” with the CREDIT KARMA mark and the gTLD “.loan” in the disputed domain name may create confusion to the Internet users.
Therefore, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.
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 <creditkarma-online.loan> be transferred to the Complainant.
Date: August 28, 2017