WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marlette Funding, LLC v. Micheal Ard

Case No. D2018-0064

1. The Parties

Complainant is Marlette Funding, LLC of Wilmington, Delaware, United States of America, represented by Kelley Drye & Warren, LLP, United States of America.

Respondent is Micheal Ard of Fort Worth, Texas, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <marlettefundingllc.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2018. On January 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2018.

The Center appointed Richard Page as the sole panelist in this matter on February 16, 2018. 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 was founded in 2013 as a specialty finance company. The company entered the market with an online installment loan product branded BEST EGG. Since launch, Complainant has provided technology and services for over USD 4.5 billion in BEST EGG loans.

Complainant holds rights in MARLETTE FUNDING, including U.S. Reg. No. 4,848,312 on the supplemental register since November 3, 2015, and U.S. Reg. No. 4,888,780 (design) on the principal register since January 19, 2016.

The Disputed Domain Name was registered on August 1, 2017 which has been used in connection with a website offering financial services.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the exclusive owner of all right, title and interest in and to the MARLETTE FUNDING Marks, U.S. Reg. No. 4,848,312 and U.S. Reg. No. 4,888,780. The MARLETTE FUNDING Marks have been featured prominently in connection with the promotion of the BEST EGG loan product and related technology and services. The MARLETTE FUNDING Marks have an active presence on the Internet, including the websites “www.marlettefunding.com” and “www.bestegg.com”, which are devoted to the promotion and sale of Complainant’s goods and services bearing the MARLETTE FUNDING Marks in the United States. Complainant’s websites have become a valuable tool in promoting its goods and services as they include an online loan application. Since its inception, Complainant’s websites have encountered 9,186,056 sessions, across 5,024,761 unique users, resulting in 52,116,966 page views. Complainant also advertises its MARLETTE FUNDING goods and services via various social media platforms, including Facebook and Twitter.

Complainant further contends that the MARLETTE FUNDING Marks are well-known by virtue of the excellence of Complainant’s good and services, and its long-standing use, extensive promotion, advertising and unsolicited publicity relating to its MARLETTE FUNDING Marks and related goods and services.

Complainant further contents that as a result of its long-standing use, extensive promotion, advertising and unsolicited publicity. Complainant’s MARLETTE FUNDING Marks and related goods and services are well-known in the United States of America. Complainant has established a valuable reputation and has achieved enormous goodwill of immeasurable value in the MARLETTE FUNDING Marks. Complainant has an A+ rating with the Better Business Bureau and the BEST EGG loan product has been nominated by Lendit, the leading industry conference for online consumer lending, as a top consumer lending platform.

Complainant alleges that the Disputed Domain Name uses Complainant’s MARLETTE FUNDING Marks without Complainant’s authorization or consent. By including the entirety of Complainant’s Marks and creating a website that purports to offer services that are related to the financial services space in which Complainant operates.

Complainant further alleges that Respondent registered the Disputed Domain Name with the intention of attracting users and buyers and thereby trading on the goodwill of the MARLETTE FUNDING Marks for its own commercial gain.

Complainant further alleges that on December 18, 2017, Complainant sent a letter by mail and email to the address provided in the WhoIs domain registry: (i) noting Complainant’s well-known trademark rights in the MARLETTE FUNDING Marks; (ii) alerting Respondent that it considered the registration of the Disputed Domain Name to be trademark infringement; and (iii) demanding that Respondent immediately agree to assign all rights in the Disputed Domain Name to Complainant. No response was received.

Complainant argues that the Disputed Domain Name is nearly identical and confusingly similar to the MARLETTE FUNDING Marks. Complainant has extensive, exclusive rights in the well-known MARLETTE FUNDING Marks throughout the United States of America in connection with financial services.

Complainant further argues that the Disputed Domain Name registered and used by Respondent is confusingly similar to the well-known and distinctive MARLETTE FUNDING Marks in that it contains the entirety of the MARLETTE FUNDING Marks.

Complainant further argues that the only difference between the Disputed Domain Name and the MARLETTE FUNDING Marks is the addition of the abbreviation “LLC” and the gTLD “.com.” The additional abbreviation “LLC” is irrelevant as it does not serve to distinguish from or alleviate the similarity between the Disputed Domain Name and the MARLETTE FUNDING Marks. In fact, it only exacerbates the likelihood of confusion because Complainant’s full legal name is “Marlette Funding, LLC”. It is well established that the gTLD is irrelevant in the confusing similarity analysis because it fails to alleviate the similarity between Disputed Domain Name and the MARLETTE FUNDING Marks.

Complainant further argues that by incorporating the entirety of the MARLETTE FUNDING Marks in the Disputed Domain Name, Respondent has attempted to attract consumers seeking to apply for financial services offered by Complainant.

Complainant avers that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Disputed Domain Name is not the trade name or company name of Respondent. Respondent is not commonly known by that name, is not a licensee of Complainant, and is not otherwise authorized to use Complainant’s MARLETTE FUNDING Marks.

Complainant further avers that by registering the Disputed Domain Name, which contains the entirety of the MARLETTE FUNDING Marks, Respondent’s sole intention was to benefit financially from, and/or unlawfully trade upon, the renown associated with Complainant’s trademarks.

Complainant further avers that use of the MARLETTE FUNDING Marks does not bear any legitimate relationship to Respondent’s business, but for seeking to create a false association with Complainant, and to attract visitors seeking Complainant’s website and/or information about Complainant’s goods and services for its own commercial gain by increasing traffic to Respondent’s own website.

Complainant further avers that given the prior use by Complainant of its MARLETTE FUNDING Marks for several years before the Disputed Domain Name was registered, and the renown of the MARLETTE FUNDING Marks and associated goods and services at the time the Disputed Domain Name was registered, there can be no doubt that Respondent was well aware of Complainant’s right in the MARLETTE FUNDING Marks at the time it registered the Disputed Domain Name, and that it did so for illegitimate purposes.

Complainant concludes that Respondent’s use of the Disputed Domain Name is in bad faith. By including the entirety of the MARLETTE FUNDING Marks in the Disputed Domain Name and creating a website at the Disputed Domain Name that purports to offer services that are related to the financial services space in which Complainant operates, Respondent is seeking to create a false association with Complainant. Respondent clearly intended to attract Internet users to its website to capitalize on the goodwill of the MARLETTE FUNDING Marks for its own commercial gain by creating the likelihood of confusion with Complainant’s Marks.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in this domain name dispute proceeding, but once it fails to do so, asserted facts that are not unreasonable would be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the MARLETTE FUNDING Marks in which Complainant has rights; and,

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has registrations of the MARLETTE FUNDING Marks, that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the MARLETTE FUNDING Marks. Complainant contends that the MARLETTE FUNDING Marks are well-known, especially within the United States of America.

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested Complainant’s contentions of the existence, validity and ownership of the MARLETTE FUNDING Marks. Therefore, the Panel finds that Complainant has enforceable trademark rights for the purposes of this proceeding.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the MARLETTE FUNDING Marks pursuant to paragraph 4(a)(i) of the Policy.

Complainant further argues that the only difference between the Disputed Domain Name and the MARLETTE FUNDING Marks is the addition of the abbreviation “LLC” and the gTLD “.com.” The additional abbreviation “LLC” is irrelevant as it does not serve to distinguish from or alleviate the similarity between the Disputed Domain Name and the MARLETTE FUNDING Marks. In fact, it only exacerbates the likelihood of confusion because Complainant’s full legal name is “Marlette Funding, LLC”. It is well established that the gTLD is irrelevant in the confusing similarity analysis because it fails to alleviate the similarity between Disputed Domain Name and the MARLETTE FUNDING Marks.

Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the MARLETTE FUNDING Marks.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the MARLETTE FUNDING Marks is incorporated into the Disputed Domain Name. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of the non-distinctive phrase “LLC” or the gTLD “.com”, it is still confusingly similar to the trademark. See, F.Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel finds that the entirety of the MARLETTE FUNDING Marks is contained in the Disputed Domain Name. The additional “LLC” and “.com” are not distinctive. Therefore, Complainant has satisfied the required elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the MARLETTE FUNDING Marks.

Complainant avers that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Disputed Domain Name is not the trade name or company name of Respondent. Respondent is not commonly known by that name, is not a licensee of the Complainant, and is not otherwise authorized to use Complainant’s MARLETTE FUNDING Marks.

Complainant further avers that by registering the Disputed Domain Name, which contains the entirety of the MARLETTE FUNDING Marks, Respondent’s sole intention was to benefit financially from, and/or unlawfully trade upon, the renown associated with Complainant’s trademarks.

Respondent has not contested these allegations of lack of rights or legitimate interests.

The Panel concludes that there is nothing in the record before it to demonstrate that Respondent has rights or legitimate interests in the Disputed Domain Name. Therefore, Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the MARLETTE FUNDING Marks or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the MARLETTE FUNDING Marks in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the MARLETTE FUNDING Marks as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant concludes that Respondent’s use of the Disputed Domain Name is in bad faith. By including the entirety of the MARLETTE FUNDING Marks in the Disputed Domain Name and creating a website at the Disputed Domain Name that purports to offer services that are related to the financial services space in which Complainant operates, Respondent is seeking to create a false association with Complainant. Respondent clearly intended to attract Internet users to its website to capitalize on the goodwill of the MARLETTE FUNDING Marks for its own commercial gain by creating the likelihood of confusion with Complainant’s Marks.

Respondent failed to contest the allegations of bad faith.

The Panel finds that the record for this proceeding supports the conclusion that Respondent intentionally sought to attract Internet users to its website through use of the confusingly similar Disputed Domain Name for commercial gain.

Therefore, Complainant has established the required elements of paragraph 4(b)(iv) of the Policy, which in turn satisfied the requirements of paragraph 4(a)(iii).

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, <marlettefundingllc.com> be transferred to the Complainant.

Richard Page
Sole Panelist
Date: March 2, 2018