WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Givelify LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, Gareth Davies, Wis INC, Domain Privacy, Above.com Domain Privacy

Case No. D2020-3561

1. The Parties

Complainant is Givelify LLC, United States of America (“United States”), represented by Kolawole Law Firm LLC, United States.

Respondents are Registration Private, Domains By Proxy, LLC, United States, / Carolina Rodrigues, Fundacion Comercio Electronico, Panama, Gareth Davies, United Kingdom, Wis INC, Cayman Islands, United Kingdom, and Domain Privacy, Above.com Domain Privacy, Australia.

2. The Domain Names and Registrar

The disputed domain names <gifelify.com>, <giveify.com>, <giveilfy.com>, <givelfiy.com>, <givelifty.com>, <givelity.com>, <givellify.com>, <givelyfy.com> and <ivelify.com> (“Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was initially filed for 17 Domain Names with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2020. On January 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all Domain Names are under common control; or file a separate complaint. Complainant filed an amended Complaint on January 9, 2021. In response to further request for clarifications from the Center, Complainant filed amendments to the Complaint on January 19 and 27, 2021.

The Center verified that the Complaint together with the amendments 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 Respondents of the Complaint, and the proceedings commenced on January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. The Response was filed by Respondent Gareth Davies on February 16, 2021.

The Center appointed Marina Perraki as the sole panelist in this matter on March 1, 2021. 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.

Consolidation of Respondents

The Panel has considered the possible consolidation of the Complaint for the Domain Names at issue. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

The Complaint concerns nine Domain Names, five of which, namely <givelity.com>, <givelifty.com>, <givelfiy.com>, <givellify.com>, <giveilfy.com> are registered in the name of Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

With regard to the other four Domain Names, namely <givelyfy.com>, <ivelify.com>, <gifelify.com>, and <giveify.com>, these are registered as follows:

- <givelyfy.com> and <ivelify.com> in the name of Domain Privacy, Above.com Domain Privacy, Australia
- <gifelify.com> in the name of Wis INC, Cayman Islands, United Kingdom, and
- <giveify.com> in the name of Gareth Davies, United Kingdom.

The Panel notes the following features of the Domain Names and arguments submitted by Complainant in favor of the consolidation of all the above Domain Names:

- the Domain Names uses the “name servers and proxy servers” by which Complainant apparently means “the same” name servers and proxy servers;
- the Domain Names contains similar misspellings of Complainant’s GIVELIFY mark notably including the substitution, deletion, or addition of one alphabet letter to create a domain name that is confusingly similar to Complainant’s mark;
- the fact that the Domain Names have been registered through the same Registrar, GoDaddy LLC.

Complainant refers also to the fact that “the registrant’s email addresses disclosed by the Registrar contains a name that differs from the identified registrant’s name, and each of these email addresses is associated with clearly cybersquatted domain names relating to other third-party brand”, citing several cases involving the registrant named Carolina Rodrigues. However, Complainant does not state how this supports a finding that the Domain Names <givelyfy.com>, <gifelify.com>, <giveify.com>, and <ivelify.com> are all under the same control or registered by the same person and that this is also the same registrant or under his/her control for the Domain Names <givelity.com>, <givelifty.com>, <givelfiy.com>, <givellify.com>, <giveilfy.com>.

The Panel notes, even though not raised by Complainant, that similarities in the content of the pages where the Domain Names <givelyfy.com>, <ivelify.com> and <gifelify.com> resolve, as well as the pages in which, the Domain Names <givelity.com>, <givelifty.com>, <givelfiy.com>, <givellify.com> resolve, combined with the relevant proximity in time of the registration of all the above are further indications of a common control. This along with the fact that the named Respondents of these Domain Names did not submit any arguments to rebut this inference is taken into account by the Panel.

Considering all the above, the Panel notes that as regards the Domain Names <givelyfy.com>, <ivelify.com>, <gifelify.com>, <givelity.com>, <givelifty.com>, <givelfiy.com>, <givellify.com>, <giveilfy.com> there appears prima facie to be one single Respondent, providing possibly fake ID details. Furthermore, named Respondents did not submit any arguments to rebut this inference.

The Panel finds that consolidation of the above Domain Names is fair to the Parties, and Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint (if indeed there are more than one Respondent for these Domain Names) but have chosen not to rebut the consolidation (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302). Based on the file, the Panel finds that it is more likely than not that, the Domain Names are in common control of one entity, and hence the Panel grants the consolidation for the above Domain Names (and will refer to these Respondents as “Respondent”).

As regards the Domain Name <giveify.com>, this was filed much earlier than the above mentioned Domain Names (almost 5 years earlier), it leads to a page that is different to any of the other mentioned above Domain Names and the named Respondent Gareth Davies submitted a Response in which he rebutted the Complaint as regards only one single domain name, which he admits was registered by him in December 2015, namely <giveify.com>.

Therefore, the Panel is not satisfied that for the Domain Name <giveilfy.com> Complainant has sufficiently demonstrated one single Respondent with the other Domain Names or common control. Complainant has ultimately failed to satisfy its burden of proof as to this issue. Accordingly, this Decision will only determine rights concerning the Domain Names <givelyfy.com>, <ivelify.com>, <gifelify.com>, <givelity.com>, <givelifty.com>, <givelfiy.com>, <givellify.com>, <giveilfy.com>.

The claim against named Respondent Gareth Davies will be therefore dismissed without prejudice. Complainant is free to re-file separate Complaint under the Policy as to that named Respondent and its associated Domain Name.

4. Factual Background

Complainant is a United States mobile software development company whose principal product is the Givelify App, an application that connects fintech with philanthropy. Per Complaint, it is the highest rated and fastest growing mobile giving app. The app makes it easy for individuals to support their places of worship and/or charities with a few taps on their smartphone. Through its platform, Complainant empowers places of worship and charities to benefit from a new way of accepting donations. Per Complaint, the Givelify app is the premier donation app used by over 45,000 places of worship and nonprofits in United States and it has been downloaded by over 500,000 people from both the Apple App Store and Google Play Store.

Complainant owns trademark registrations for GIVELIFY including United States trademark registration no. 4491096, GIVELIFY (fig.), filed on July 26, 2013 and registered on March 4, 2014, for goods in international class 9.

The Domain Names were registered on October 1, 2020, March 27, 2020, September 24, 2020, August 7, 2020, March 23, 2020, April 13, 2020, and July 9, 2020, and per Complaint were used at the time of filing of the Complaint to re-direct Complainant’s clients or prospective clients to Complainant’s competitors. Evidence of use made was only submitted by Complainant as regards the Domain Names <givelity.com> and <givelyffy.com>. Currently the Domain Names dynamically redirect to different websites at different times, including inactive websites and/or websites of third parties and / or websites displaying a pay-per-click (“PPC”) advertising page containing third party, commercial advertising links related to the area of Complainant’s activities and, as the case may be, offers for sale of the given Domain Name (showing commonalities as reflected above).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.

B. Respondent

Respondent under the registrant details Gareth Davies submitted a Response in which he asserted that Complainant has not established any of the three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name <giveilfy.com>. Given that the consolidation request for the Domain Name under this named Respondent has been dismissed, there shall be no further discussion of the Response.

No further communication from the Respondent was received.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:

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

(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.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the GIVELIFY mark.

The Panel finds that the Domain Names are confusingly similar with the GIVELIFY trademark of Complainant.

The Domain Names incorporate the said trademark of Complainant in its entirety (with different typographical errors). This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The omission or addition or change of the order of single letters in the Domain Names does not prevent a finding of confusing similarity as the GIVELIFY mark remains clearly distinguishable (WIPO Overview 3.0, section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

The Panel finds that the Domain Names are confusingly similar to the GIVELIFY trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.

On the contrary, the Domain Names are used to direct to third party sites, or host PPC parking pages, with links to various third-party websites, some of which directly compete with Complainants’ business and/or where the respective Domain Name is being offered for sale. The Panel finds that is not unlikely that Respondent receives PPC fees from the linked websites that are listed at the Domain Names’ websites and uses the Domain Names for his own commercial gain . The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with Complainants’ trademark (Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; WIPO Overview 3.0 , section 2.9).

Furthermore, there is no evidence on record giving rise to any rights or legitimate interests in the Domain Names on the part of Respondent within the meaning of paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or

(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Names, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Names, 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Complainant’s mark GIVELIFY is known in the field of charity funding applications, as per Complaint. Because the GIVELIFY mark had been used and registered at the time of the Domain Names registrations by Respondent, the Panel finds that Respondent had Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

As regards bad faith use, the Domain Names redirect at times to websites displaying links to third party sites, which suggests that, presumably, Respondent receives PPC fees from the linked websites that are listed thereon. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5).

Furthermore, some of the Domain Names are at times being offered for sale. This, in view of the finding that Respondent has no right to or legitimate interest in the Domain Names, and in the circumstances of the case, affirms the bad faith (Aygaz Anonim Sirketi v. Arthur Cain, WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1).

One of the Domain Names leads at times to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;WIPO Overview 3.0, section 3.3).

The Panel also notes that the Domain Names were registered with a privacy shield service to hide the registrant’s identity.

Finally, the Panel notes the pattern of abusive registrations in which the Respondent has been involved (see e.g. over 200 cases involving named Respondent Carolina Rodrigues including Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3045; LEGO Juris A/S v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2834; Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1991; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409; Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1109; Société Air France v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, WIPO Case No. D2019-0578; Ford Motor Company v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2787; over 750 cases involving named Rrespondent Above.Com Domain Privacy including Robert Bosch GmbH v. Above.com Domain Privacy, Above.com Domain Privacy / David Woo, WIPO Case No. D2018-1549; The American Automobile Association, Inc. v. Above.com DomainPrivacy a/k/a Oliver Goldsmith/ Host Master, Transure Enterprise Ltd. / David Woo, DNWDNS/ Shu Lin, WIPO Case No. D2011-1884; Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / David Woo, WIPO Case No. D2010-1566; Intesa Sanpaolo S.p.A. v. Above.Com Pty Ltd./ David Woo, WIPO Case No. D2010-1611; Revlon Consumer Products Corporation v. David Woo / Above.com Domain Privacy, WIPO Case No. D2010-1483; Universidad Autónoma de Nuevo León v. Above.Com Domain Privacy / David Woo, WIPO Case No. D2010-1160; and over 3 cases involving named Respondent Wis Inc, including Mothers Polishes Waxes Cleaners Incorporated v. WIS Inc., WIPO Case No. D2020-2903; Sodexo v. Wis Inc., WIPO Case No. D2019-2185; SODEXO v. Wis INC, Wis INC, WIPO Case No. D2020-0887. All of the above cases resulted in decisions against Respondent.

This pattern, established by the decisions cited above, further supports a finding of bad faith pursuant to paragraph 4(b)(ii) of the Policy, which provides that a “pattern of such conduct” is evidence of bad faith.

Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Names in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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 Names; <gifelify.com>, <giveilfy.com>, <givelfiy.com>, <givelifty.com>, <givelity.com>, <givellify.com>, <givelyfy.com>, <ivelify.com> be transferred to Complainant.

As regards the Domain Name <giveify.com> for the foregoing reasons, the Complaint is denied.

Marina Perraki
Sole Panelist
Date: March 15, 2021