WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabbage, Inc. v. Kingsley Harmer, HEK LLC

Case No. D2020-2067

1. The Parties

Complainant is Kabbage, Inc., United States of America (“United States” or “U.S.”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

Respondent is Kingsley Harmer, HEK LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <kabbageloan.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2020. On August 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 6, 2020.

The Center verified that the Complaint, together with the amendment to 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 August 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 28, 2020. On August 28, 2020, Respondent sent an email communication to the Center.

The Center appointed John C. McElwaine as the sole panelist in this matter on September 9, 2020. 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.

As an initial matter, the Panel believes it is important to address Respondent’s August 28, 2020, email stating, “I was never notified of any mail being delivered. To the local office. I do not agree with this. What is it you are looking for? I bought the domain and own the domain. What exactly is the complaint? What right am I betraying by owning this domain?” The email address that this email was sent from is the same email address to which the Notification of the Complaint was sent. As such, proper notice of this proceeding is not at question. This Panel finds that this email is a so-called “informal response” and does not provide a substantive response to the Complaint. As discussed below, the Panel notes that the burden of proof in this proceeding remains on Complainant and that Respondent’s informal response does not by itself mean that Complainant will be deemed to have prevailed or that the lack of a substantive response by Respondent is an admission that Complainant’s claims are true.

4. Factual Background

Complainant is a United States based data and technology company providing small business cash-flow solutions.

Complainant is the owner of several trademark registrations in the United States and the European Union (the “KABBAGE Trademark”), including the following:

- U.S. Reg. No. 3,905,311 for KABBAGE (first used in commerce on June 30, 2010; registered on January 11, 2011) for use in connection with “Financing services in the field of online merchants”;

- U.S. Reg. No. 4,682,136 for KABBAGE (first used in commerce on June 30, 2010; registered on February 3, 2015) for use in connection with “Financial services, namely, money lending provided over a computer network such as the Internet”; and,

- European Union Reg. No. 1,131,587 for KABBAGE (registered August 8, 2012) for use in connection with “Financing services in the field of online merchants”.

The Domain Name was created on January 16, 2016. The Domain Name currently resolves to a webpage displaying pay-per-click links.

5. Parties’ Contentions

A. Complainant

Complainant describes itself as a business that leverages data generated through business activity such as accounting data, online sales, shipping, and dozens of other sources to understand business performance and deliver fast, flexible funding in real time. Complainant is funded and backed by leading investors, including the SoftBank Vision Fund, BlueRun Ventures, Mohr Davidow Ventures, and others. Complainant claims to serve small businesses in all 50 U.S. states and territories.

Complainant asserts that it has approved more than 209,000 small businesses for USD 5.8 billion under the Paycheck Protection Program (“PPP”) making it the third-largest PPP lender in the United States by application volume. Complainant asserts that it is frequently written about in the mainstream, financial, and technology press, including articles that have appeared on Fox Business, VentureBeat, Forbes, Bloomberg, TechCrunch, Fast Company, Bloomberg Businessweek, and more. Complainant also alleges that it has received numerous awards and accolades, including the following: Forbes “Fintech 50” (February 12, 2020), Benzinga “Global Fintech Awards” (most innovative lender) (November 10, 2019), Inc. “Best Places to Work in 2019” (May 16, 2019), and CNBC “Disruptor 50” (May 15, 2019).

Complainant is the registrant of the domain name <kabbage.com>, which was registered on September 7, 2006, and which it uses in connection with its website at “www.kabbage.com”.

With respect to the first element of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant’s registered KABBAGE Trademark. Complainant argues that the only difference between the relevant portion of the Domain Name and the KABBAGE Trademark is the inclusion of the additional word “loan” in the Disputed Domain Name; however, this additional word does nothing to eliminate confusing similarity between the Domain Name and the KABBAGE Trademark.

With respect to the second element of the Policy, Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name because Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the KABBAGE Trademark in any manner. Complainant also asserts that Respondent is not commonly known by the Domain Name. Complainant further asserts that Respondent cannot demonstrate rights or legitimate interests under Paragraph 4(c)(i) and (iii) of the Policy because by including commercial links for third-party websites on the websites associated with the Domain Name – including links for services competitive with Complainant – Respondent has failed to create a bona fide offering of goods or services under the Policy.

Lastly, with respect to the third element of the Policy, Complainant contends that its KABBAGE Trademark is widely known, given the following: (a) Complainant owns 10 trademark registrations and 45 applications for the KABBAGE Trademark; (b) the oldest of the KABBAGE Trademark registration, U.S. Reg. No. 3,905,311, was first used in commerce 10 years ago and registered more than nine years ago; (c) Complainant uses the KABBAGE Trademark in connection with its financing services, which has provided more than 200,000 customers in the United States, Spain, the United Kingdom, Italy, and France with access to more than USD 8 billion; and (d) Complainant uses the KABBAGE Trademark in connection with the domain name <kabbage.com>, which was registered more than 13 years ago. Given the fame of the KABBAGE Trademark and Complainant’s significant presence, Complainant asserts that it is implausible that Respondent was unaware of Complainant when Respondent registered the Domain Name. In addition, Complainant points out that because the Domain Name is obviously connected with Complainant, Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. Lastly, Complainant asserts that Respondent is responsible for the content displayed by its Domain Name and that Respondent’s use of the Domain Name to resolve to a website linking Internet users to competitive third-party services in attempt to generate click-through fees constitutes bad faith pursuant to Policy, paragraph 4(b)(iv).

B. Respondent

Respondent did not substantively reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must prove its assertions with evidence demonstrating:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

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

Noting the Respondent’s lack of a substantive Response beyond its email of August 28, 2020, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Complainant has provided evidence that it is the owner of at least ten trademark registrations in the United States for the KABBAGE Trademark.

It is well-established, and the Panel agrees, that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int’l Inc. v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans, WIPO Case No. D2010-0097. The Domain Name contains Complainant’s KABBAGE Trademark in its entirety, as the dominant element. The addition of the word “loans” does not serve to distinguish the Domain Name from the KABBAGE Trademark.

Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s KABBAGE Trademark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a 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.”

With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as “Kingsley Harmer, HEK LLC” and the Panel therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name.’”)

Complainant contends that it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the KABBAGE Trademark in any manner. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit a substantive response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainants, it can be a further inference in appropriate circumstances that respondents have no rights nor legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.

Furthermore, the Panel finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name links to what appears to be a “parked” page. This Panel agrees with the viewpoint that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name is not by itself to be considered a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name. Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093. However, the Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in section 2.9 of WIPO Overview 3.0. None of those factors are present here. There is no evidence that the Domain Name consists of dictionary or common words or phrases that support the pay-per-click links genuinely related to the generic meaning of the domain name at issue. Instead, the Domain Name appears to have been registered with the intent that confused Internet users searching for Complainant will be directed to Respondent’s parked webpage for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita, WIPO Case No. D2014-1726.

Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondent is seeking commercial gain from its use of the Domain Name by establishing a parked page with pay-per-click advertisements that compete with Complainant’s lending and financial services. Therefore, the Domain Name is used for commercial purposes and paragraph 4(c)(iii) is not applicable. See Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001 (respondent’s use of the disputed domain name to establish a parking page was “plainly not noncommercial”).

Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s lack of a substantive response as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

In this matter, Complainant contends that the registration by Respondent of a domain name, which contains Complainant’s widely known KABBAGE Trademark establishes that Respondent was aware of the existence of Complainant’s trademark. Bad faith may be found where a domain name is so obviously connected with a well-known trademark that said use of the domain name by someone with no connection to the trademark suggests opportunistic bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains, LLC, WIPO Case No. D2006-0303. Here, Respondent has placed the Domain Name with a website service that creates links to competing lending services indicating an intent to trade off the goodwill of Complainant. Furthermore, and as also detailed above, Respondent is not commonly known by the Domain Name and does not have any rights or legitimate interests in the Domain Name. Accordingly, on the record there is no explanation or legitimate interests to justify Respondent’s choice to register the Domain Name. With no substantive response from the Respondent, this claim is undisputed and the Panel infers bad faith registration.

Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. See Identigene, Inc. v. Genetest Labs., WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under Paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, WIPO Case No. 2011-1981 (finding bad faith as a result of respondent’s general offer to sell the domain name); Virgin Enterprises Limited v. Balticsea LLC / Contact Privacy Inc. Customer 0134432592, WIPO Case No. D2016-2148 (finding that a general offering to sell the domain name is evidence of registration of the domain name in bad faith). Any argument that Respondent may assert that he is not accountable for the infringing content on his website is without merit. Numerous panels have rejected such an argument, holding respondents are still responsible for the content of a parked webpage. Stuart Weitzman IP, LLC v. DVLPMNT Marketing, Inc., WIPO Case No. D2014-1858; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474 (“Respondent appears to claim that he is not responsible for the content of the parking page, but this is no defense.”); and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name is more likely than not that Respondent acquired the Domain Name primarily to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location. Moreover, Respondent is responsible for the infringing content displayed at the website to which the Domain Name resolves.

For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(ii) of the Policy.

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 Domain Name, <kabbageloan.com>, be transferred to the Complainant.

John C McElwaine
Sole Panelist
Date: September 23, 2020