WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prosper Funding, LLC v. Contact Privacy Inc., Customer 0153078519 / Dessalines Prosper, Prosper Credit Consultants
Case No. D2019-0118
1. The Parties
The Complainant is Prosper Funding, LLC of San Francisco, California, United States of America (“United States”), represented by Hargadon Law PLLC, United States.
The Respondent is Contact Privacy Inc., Customer 0153078519 of Toronto, Ontario, Canada / Dessalines Prosper, Prosper Credit Consultants, [Pro Credit Services???] of Allentown, [Pennsylvania, Pakistan ????].
2. The Domain Name and Registrar
The disputed domain name <prospercredit.net> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2019. On January 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2019, 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 January 22, 2019, 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 January 26, 2019.
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 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.
The Center appointed Jon Lang as the sole panelist in this matter on February 25, 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 wholly-owned subsidiary of Prosper Marketplace, Inc. The Complaint draws no distinction between parent and subsidiary and both will hereafter be referred to as the Complainant.
The Complainant has been providing services in the credit and loan industry since at least as early as 2006. Such services are provided mainly through the website “www.prosper.com”, a domain name that has been used exclusively and continuously since at least 2006. The Complainant is America’s first peer-to-peer lending marketplace, is well-known in the US and has facilitated USD several billion in funded loans. The Complainant is the owner of various U.S. Trademark Registrations for PROSPER, for instance, Registration No: 3374113 (registered January 22, 2008) and Registration No: 4887696 (registered January 19, 2016).
The domain name in dispute, prospercredit.net (hereafter the Domain Name) was registered October 29, 2018, and the Respondent is using the Domain Name to provide, or offer, credit and loan services.
5. Parties’ Contentions
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant has long-established rights in both common law and by virtue of its registered trademarks for the word "PROSPER" and variations thereof, for financial services namely, investment, credit, and lending services. The Domain Name was registered on October 29, 2018, long after the Complainant acquired such rights.
The Domain Name resolves to a website offering financial services i.e. credit and loan services. The Respondent is unlawfully using the Complainant’s registered trademarks in connection with the Domain Name and website, without authorization or approval. Consumer confusion as to source or origin is likely because of the similarity between the Complainant’s and Respondent’s domain names.
The Domain Name is confusingly similar to trademarks in which the Complainant has rights.
The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant has not granted permission to the Respondent to use the PROSPER trademarks and the Complainant is not related in any way to the Respondent.
The Respondent has no rights or legitimate interests in the Domain Name because the Respondent registered it in bad faith and therefore cannot be found to have made a bona fide offering of services.
The Respondent is not making legitimate fair use of the Domain Name, but rather capitalizing on the fame and goodwill of the Complainant.
The Respondent is not commonly known by the Domain Name.
The Respondent is not making fair use of the Domain Name because the Respondent’s intention is to divert consumers from the Complainant’s legitimate business.
The Respondent has no rights or legitimate interests in the Domain.
The domain name was registered and is being used in bad faith
The Respondent registered and is using the Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks and domain name as to source, sponsorship, affiliation, or endorsement.
The Respondent’s registration and use of the Domain Name indicates that such registration was for the specific purpose of trading on the name and reputation of the Complainant’s trademarks.
The Respondent’s action of registering the Domain Name and using it to direct Internet traffic to its website, evidences a clear intention to disrupt the Complainant’s business, deceive consumers, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant for the Respondent’s commercial gain.
The Respondent registered (and used) the Domain Name in bad faith because it did so after the Complainant had established rights and publicity in the PROSPER trademarks.
On December 3, 2018, Squarespace, the Respondent’s host-services provider, in response to a communication sent on behalf of the Complainant, stated that they had forwarded the communication to the Respondent. The Complainant submits that notice of the dispute having been provided to the Respondent on or before December 3, 2018, the Respondent not having contacted the Complainant but instead adding more content to its website since December 3, 2018 (and using a registrant information privacy service), is further evidence of bad faith.
The Respondent registered and is using the Domain Name in bad faith for its commercial gain, by intentionally creating a likelihood of confusion with the Complainant’s Domain Name and trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s services, for the purpose of attracting Internet users to its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the PROSPER trademark. Ignoring the generic Top-Level Domain “.net” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s PROSPER trademark, followed by the word “credit”. As the PROSPER trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The well-known PROSPER trademark is clearly recognizable within the Domain Name. The only real issue therefore is whether the word “credit” which follows it, renders the Domain Name something other than confusingly similar (to the PROSPER trademark). In the Panel’s view, it does not.
Indeed, inclusion of the word “credit” in the Domain Name may well enhance the risk of confusing similarity given the nature of the Complainant’s business.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the PROSPER trademark for the purposes of the Policy and thus paragraph 4(a)(i) thereof has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant (as is the case here), it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
The Respondent has not adduced any evidence that it has been commonly known by the Domain Name (or indeed made any use of the name, Prosper Credit at any time prior to registration of the Domain Name in October 2018). As to legitimate noncommercial or fair use, given the nature of the web site to which the Domain Name resolves, which appears to be very much commercial in nature and, indeed, competitive with the Complainant, it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain) – one of the requirements if a Respondent seeks to fall within the circumstances described above as evidencing rights or legitimate interests - the Respondent’s choice of Domain Name may well suggest the opposite i.e. that there is in fact an intent to mislead Internet users into believing that there is some form of association between the Respondent and the Complainant when there is not. In these circumstances, “use”, such as it is, could not be regarded as “fair”.
A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept, given the nature of the website to which the confusingly similar Domain Name resolves, that there could be a bona fide offering of goods or services without clear justification for such offering. No such justification has been advanced.
There is no evidence before this Panel that suggests that the Respondent has rights or legitimate interests in the Domain Name or that there would be anything inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
The Respondent was likely aware at the time of registration of its Domain Name of the Complainant and its rights given the (unauthorized) use to which the Domain Name has been put. The purpose behind the registration appears to have been to attract Internet users to the Respondent’s web site using a domain name confusingly similar to the Complainant’s PROSPER trademark. In other words, the very circumstances envisaged above. The use of a privacy service, failure to respond to the Complaint or communicate in anyway with the Complainant (even after being notified, one assumes, of the communication sent on the Complainant’s behalf to the Respondent’s service provider), whilst perhaps not individually determining factors, certainly support an adverse finding.
Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <prospercredit.net> be transferred to the Complainant.
Date: 7 March 2019