WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Panchain, Inc. v. Domain Administrator, See PrivacyGuardian.org / Vildan Erdogan
Case No. D2018-2808
1. The Parties
The Complainant is Panchain, Inc. of Wilmington, Delaware, United States of America (“United States”), represented internally.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States / Vildan Erdogan of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <panchainsecurities.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 December 9, 2018. On December 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2018, 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 December 13, 2018, 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 December 13, 2018.
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 of the Complaint, and the proceedings commenced on December 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on January 15, 2019. 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, which distributes a stock dealing mobile app, was incorporated in the state of Delaware in June 2017 and began trading around October / November 2017. The Complainant began using <panchaininc.com> as an email address in October 2017. It raised approximately USD 2 million through a United States Securities and Exchange Commission securities offering in January 2018.
In or around August 2018, the Complainant started to promote its product via a website at “www.panchain.co” and a “Panchain”-branded Facebook page, which had garnered 701 likes and 717 follows by December 13, 2018. The Complainant has spent some USD 9,500 on Facebook advertising.
On November 7, 2018, a United States entity named “Panchain Securities, LLC” was incorporated in the state of Delaware. (The connection between this entity and the Complainant is discussed in section 6C below.)
The disputed domain name was registered on November 7, 2018. At some point thereafter, the disputed domain name resolved to a website offering the disputed domain name for sale for USD 950.
On December 5, 2018, the Complainant filed for a United States trade mark for PANCHAIN in classes 9, 36, 38, 41 and 45.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The Complainant has unregistered trade mark rights in the name “Panchain”, which has become a distinctive identifier associated with the Complainant and its services.
The Complainant has extensive plans to continue to use the name “Panchain” in the financial services industry.
The disputed domain name is identical or confusingly similar to the Complainant’s unregistered trade mark which it entirely incorporates.
The Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence of use in connection with a bona fide offering of goods or services or that the Respondent has been commonly known by the disputed domain name. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The registration of the disputed domain name on the same day as incorporation of Panchain Securities, LLC, shows that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its mark in the corresponding domain name and primarily to disrupt the business of the Complainant.
The Respondent’s use of the disputed domain name for a website offering the disputed domain name for sale indicates that the disputed domain name was acquired primarily for sale to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
While the Complainant has only been trading for a relatively short period and to a modest degree, nonetheless it has engaged in significant investment-seeking activity, it has launched a website and Facebook page under its “Panchain” brand and it has spent some USD 9,500 on Facebook advertising, resulting in a respectable amount of social media engagement.
In these circumstances, and also bearing in mind that the first element is generally required as a “threshold requirement” and also that the Respondent has not appeared in this proceeding to contest the Complainant’s claims, the Panel considers that the Complainant has established unregistered trade mark rights in the term “Panchain”.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the domain name and, accordingly, the addition of the descriptive term “securities” is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances, which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, use of the disputed domain name for a website offering the disputed domain name for sale does not constitute a bona fide offering in the circumstances outlined in section 6C below.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
To the Panel, the crucial fact in this case is that the Respondent registered the disputed domain name on the very day that Panchain Securities, LLC (“LLC”) was incorporated in Delaware.
The Complainant does not explain its exact relationship with the LLC, simply stating that “its” registration of the LLC was indicative of the Complainant’s intention to use the name “Panchain Securities”. In the Panel’s view, it is reasonable to infer from this statement and from the evidence that the LLC is a subsidiary of the Complainant, or at any rate that they are part of the same group of companies.
Given the above timing, the distinctive nature of the name “Panchain Securities”, and the fact that the Respondent offered the disputed domain name for sale at USD 950, the Panel considers it overwhelmingly likely that the Respondent registered the disputed domain name with a view to selling it to the LLC for valuable consideration in excess of out of pocket expenses, in the expectation that “Panchain Securities” was an intended trading name.
While the Respondent may not have had the Complainant in mind, as opposed to the LLC, the Panel nonetheless considers it reasonable to treat the Complainant and the LLC interchangeably for these purposes, given their corporate connection as well as the lack of any appearance by the Respondent to argue otherwise.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(i) of the Policy.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <panchainsecurities.com>, be transferred to the Complainant.
Date: January 24, 2019