WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dragoneer Investment Group, LLC v. Domain Admin, Privacy Protect, LLC / Robert Best
Case No. D2018-2834
1. The Parties
The Complainant is Dragoneer Investment Group, LLC of San Francisco, California, United States of America, represented by Maynard, Cooper & Gale, P.C., United States of America.
The Respondent is Domain Admin, Privacy Protect, LLC of Burlington Massachusetts, United States of America, Robert Best of Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <dragoneergroup.com> is registered with Launchpad.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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 17, 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 18, 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 January 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2019.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 31, 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 is a Delaware limited liability company established in 2012. The Complainant offers investment and financial services.
The Complainant owns a United States trademark registration No. 4,467,383 for the DRAGONEER mark granted on January 14, 2014 for financial services.
The Complainant hosts a website at “www.dragoneer.com”.
The disputed domain name was created on November 21, 2018.
The Respondent uses the disputed domain name to display a website where the Respondent attempts to present itself as the Complainant. In particular, the website; (i) identifies the Respondent as “Dragoneer Investment Group, LLC,” which is the Complainant’s name; (ii) reads that “Dragoneer Investment Group is a private investment firm that invests institutional & retail capital in businesses with the potential to create substantial short & mid term returns for our client;,” (iii) displays the DRAGONEER, DRAGONEER INVESTMENT GROUP and DRAGONEER INVESTMENT GROUPmarks, and (iv) lists the Respondent’s address as 1 Letterman Drive, San Francisco, California, 94129, which, in fact, is the Complainant’s address.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the DRAGONEER mark and the distinctive portion of Complainant’s DRAGONEER INVESTMENT GROUP mark. The Complainant claims that it owns the DRAGONEER mark and due its promotional efforts also common law marks such as: (i) DRAGONEER; (ii) DRAGONEER INVESTMENT GROUP; and (iii) DRAGONEER INVESTMENT GROUP.
Secondly, the Complainant submits that the Respondent lacks any rights or legitimate interests in the disputed domain name. In particular, the Respondent is not commonly known by the disputed domain name and has not obtained the Complainant’s consent to register it. The Complainant also claims that the Respondent does not use the disputed domain name in connection with bona fide offering of goods or services as the Respondent attempts to pass itself off as the Complainant. According to the Complainant, the sole purpose of the website that the disputed domain resolves to is to defraud Internet users attempting to locate the Complainant’s website and cause such users to deposit funds with the Respondent mistakenly believing that the funds are being deposited with the Complainant.
Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. This is demonstrated – as pointed out by the Complainant – by the Respondent identifying itself as the Complainant and displaying on the website that the disputed domain name resolves the Complainant’s marks in connection with services that are identical or substantially similar to the services offered by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 <dragoneergroup.com> contains the DRAGONEER mark in its entirety, with an addition of a word “group”. These letters do not serve to render the disputed domain name dissimilar to the Complainant’s mark which is of a distinctive character.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the DRAGONEER mark and as a consequence, the Complainant has met 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 generally 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 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 the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (c) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. In particular, a use of a domain name, including a registered mark, for the purpose of creating a website that uses this mark and copyrighted materials of the mark’s owner to impersonate that mark owner cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
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, the DRAGONEER mark was registered before the disputed domain name. The website linked to the disputed domain name contained information that is strictly connected to the Complainant. In light of these circumstances, the Panel concludes that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name.
Secondly, the Respondent has also used the disputed domain name in bad faith, which is evidenced by the screenshots of the Respondent’s website described above. This is clearly an attempt to mislead Internet users by impersonating the Complainant, presumably for illicit financial gain. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website.
In the light of above, 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, <dragoneergroup.com> be transferred to the Complainant.
Date: February 15, 2019