WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Promontory Mark, LLC v. Dave
Case No. D2019-1422
1. The Parties
The Complainant is Promontory Mark, LLC, United States of America (“United States”), represented by Covington & Burling, United States.
The Respondent is Dave, United States.
2. The Domain Name and Registrar
The disputed domain name <us-promontory.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2019. On June 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification of the disputed domain name. On June 21, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2019.
The Center appointed Steven Auvil as the sole panelist in this matter on July 19, 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 alleges that it is incorporated in Delaware, United States, and it is a premier, worldwide business management and financial consulting firm, specializing in, among other things, crisis management, risk management, regulatory compliance, strategic planning, and due diligence. The Complainant further alleges that it has promoted its business under the PROMONTORY Marks in the United States and elsewhere and through its website at “www.promontory.com”, since at least 2000. The Complainant also alleges ownership of several trademarks with the term PROMONTORY, including United States Registration No. 3,175,352 (registered on November 21, 2006); United States Registration No. 3,690,731 (registered on September 29, 2009); United States Registration No. 4,222,468 (registered on October 9, 2012); United States Registration No. 4,222,477 (registered on October 9, 2012) and United States Registration No. 5,261,970 (registered on August 8, 2017).
The disputed domain <us-promontory.com> was registered on April 1, 2019.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is identical or confusingly similar to its PROMONTORY Marks because it reproduces these marks with the addition of a generic term “us” along with a generic Top-Level Domain (“gTLD”). The Complainant alleges ownership of a family of PROMONTORY Marks federally registered in the United States. The Complainant also alleges that the Respondent used the disputed domain names in an attempt to defraud the Complainant. The Complainant submitted evidence (Annex E) evidencing that the disputed domain name has been used in connection with a fraudulent email scheme.
The Complainant alleges that it has established rights to the PROMONTORY Marks and it has not licensed or authorized the Respondent to use such marks, including as part of the disputed domain name. The Complainant further alleges that the Respondent has no rights or legitimate interest in the term “promontory”. The Complainant alleges that it found no evidence of the Respondent’s use of the disputed domain name in connection with any product or service, rather the disputed domain name was used by the Respondent to attempt to defraud the Complainant personnel.
Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith by the Respondent with an intent to profit off the Complainant’s rights in the PROMONTORY Marks. The Complainant argues that the Respondent must have known of the Complainants’ rights in the PROMONTORY Marks when it registered the disputed domain name, and used such disputed domain name for the purpose of engaging in fraudulent activities. The Complainant further argues that its April 9, 2019, and April 18, 2019, correspondence to the Respondent put the Respondent on notice of the Complainant’s rights in its PROMONTORY Marks with no response having been received.
The Respondent did not respond to the Complaint.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “[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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the 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.
In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed allegations pursuant to paragraphs 5(e), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate “to accept as true all of the allegations of the Complaint.”).
Based on the foregoing guidance, the Panel makes the following findings and conclusions on the basis of the statements and documents submitted and reasonable inferences drawn from them.
A. Identical or Confusingly Similar
The Complainant is a premier worldwide business management and financial consulting firm that has used the PROMONTORY Marks to promote its businesses in the United States and elsewhere since at least 2000. The Complainant is also the owner of various United States federally registered trademarks, with the term “promontory”, with the earliest mark registered in 2006. In addition to its registered trademarks, the Complainant promotes its products and services through its website at “www.promontory.com”.
The disputed domain name incorporates the entirety of the PROMONTORY Marks with the term “us”, a hyphen, and a gTLD. The word “us” does not prevent the confusingly similarity caused by the inclusion of “promontory” in the disputed domain name. To the extent that “us” is a reference to United States, it is simply a geographical identifier designating one of the countries in which the Complainant provides its services under its registered trademarks. Thus, the dominant part of the disputed domain name comprises the term “promontory”, which is identical to the Complainant’s registered trademarks. See The Royal Edinburgh Military Tattoo Limited v. Identity Protection Service, Identity Protect Limited, WIPO Case No. D2016-2290 (recognizing that other panels have held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.”)
Further, the Panel finds that these minor changes reflected in the disputed domain name do not prevent the Complainant’s PROMONTORY Marks from being recognizable within the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, the applicable gTLD in a domain name is considered a standard technical registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11, WIPO Overview 3.0.
In view of the grounds above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the PROMONTORY Marks in which the Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the Complainant’s allegations and evidence, the PROMONTORY Marks are distinctive and well-known trademarks that are registered in the United States by the Complainant, and the Complainant did not license or otherwise authorize use by the Respondent of the PROMONTORY Marks. Moreover, there is no evidence in the record to suggest that the Respondent has rights or legitimate interests in the disputed domain name on grounds that (i) the Respondent is commonly known by the disputed domain name or (ii) there is a connection or affiliation between the Respondent and the term “promontory”.
In the Panel’s view, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In these circumstances, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. Section 2.1 of WIPO Overview 3.0. Here, the Respondent has failed to respond to the Complainant’s contentions and offer any rebuttal that would demonstrate rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides examples of rights or legitimate interests in a domain name. For example, (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. None of these examples apply. First, no evidence in the record supports a finding that the Respondent, at any time prior to being notified of this Complaint, had made any demonstrable use of the disputed domain name in connection with a bona fide offering of goods or services. Second, there is no evidence in record that the Respondent is personally or otherwise known by the disputed domain name. Third, the record does not support a finding that Respondent is making a legitimate noncommercial or fair use of the disputed domain name without seeking commercial gain. Instead, the evidence establishes that the Respondent is using the disputed domain name in an effort to defraud people, including actual employees of the Complainant. As stated in section 2.13 of WIPO Overview 3.0, “use of a domain name for illegal activity ([e.g.], the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
Further, from the Complainant’s allegations, the Respondent is not using the disputed domain name in connection with any products or services, but rather to generate traffic and income for the disputed domain name.
As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that “bad faith” registration can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”.
Here, the Complainant alleges, and the evidence shows that the Respondent used the disputed domain name as part of a scheme designed to perpetrate a fraud, including obtaining free travel-related services. Other UDRP panels have recognized that bad faith registration and use of a domain name arises when a respondent falsely simulates an association or affiliation with a complainant in order to otherwise benefit from its use. See, e.g., The Prudential Assurance Co. Ltd. v. Prudential Securities Ltd., WIPO Case No. D2009-1561 (finding bad faith registration where the respondent used the domain name to attempt to obtain bank account and other personal information from third parties); MasterCard International Inc. v. Jose Carlos Bisognin Panzenhagen, WIPO Case No. D2009-0864 (finding bad faith registration where the respondent appeared to attempt to induce people into believing he was connected with a legitimate MasterCard website for “phishing” and/or “identity-theft purposes”).
Further, from the evidence of record, it can be reasonably inferred that theRespondent is attempting to trade on the Complainant’s rights in the PROMONTORY Marks by engendering confusion for the purpose of commercial gain. Alstom v. Yulei, WIPO Case No. D2007-0424 (concluding that, given widespread reputation of complainant’s trademarks, respondent intended to free ride on their goodwill and attempted to exploit, for commercial gain, Internet traffic destined for complainant); Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from complainant’s website is evidence of bad faith).
Moreover, in the Panel’s view, based also on the Complainant’s extensive use of the PROMONTORY Marks in connection with goods and services in the United States, the Respondent must have been aware of the PROMONTORY Marks when the Respondent registered the disputed domain name. Just like the panel in LEGO Juris A/S v. Danaka Tarou, WIPO Case No. D2015-0315, the Panel in this case finds that the only credible explanation for the use of the disputed domain name is to capitalize on the similarity between it and the Complainant’s distinctive and well-known PROMONTORY Marks.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, such that the third and last element of paragraph 4(a) of the Policy are met.
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 <us-promontory.com> be transferred to the Complainant.
Date: August 2, 2019