WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intellectual Ventures Management, LLC, Penky LLC v. Terry Gedeon
Case No. D2021-0269
1. The Parties
The Complainants are Intellectual Ventures Management, LLC, United States of America (the “United States”), and Penky LLC, United States, represented by Perkins Coie, LLP, United States.
The Respondent is Terry Gedeon, United States.
2. The Domain Name and Registrar
The disputed domain name <lntellectualventures.com> is registered with DNC Holdings, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2021. On January 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2021, 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 February 8, 2021, 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 amendment to the Complaint on February 8, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on February 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2021.
The Center appointed William R. Towns as the sole panelist in this matter on March 31, 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.
4. Factual Background
The Complainants in this proceeding are Intellectual Ventures Management, LLC (“Intellectual Ventures”), a limited liability company headquartered in the Bellevue, Washington, and Penky LLC (“Penky”), a limited liability company formed in Wilmington, Delaware. Intellectual Ventures is a multinational private equity company that concentrates on the development and licensing of intellectual property, with an emphasis on the acquisition, aggregation and monetization of patents, including licensing of patents to third parties. This scenario is sometimes referred to as a “non-practicing entity” in patent terms. Penky serves as a trademark holding company for Intellectual Ventures pursuant to a trademark license agreement entered into between the parties on April 16, 2008. Intellectual Ventures and Penky hereinafter are referred to collectively as the “Complainants.” Intellectual Ventures was founded in the year 2000.
The Complainants are the owners (Penky) and licensees (Intellectual Ventures) of the INTELLECTUAL VENTURES trademark, registered in a multiple jurisdictions, and including among the following:
-International Trademark Registration No. 962700, date of registration March 9, 2007 (designating multiple contracting parties);1
-United States Registration Nos. 3482565, 3494187, and 3538997, registered August 5, 2008, August 26, 2008, and November 25, 2008, respectively;
-Canadian Trademark Registration. No. TMA813317, applied for March 12, 2007, and registered December 5, 2011;
-United Kingdom (UK) Registration. No. UK008WO96270, applied for March 9, 2007, and registered October 16, 2008;
-Hong Kong Registration. No. 301256706, applied for December 12, 2008, and registered June 4, 2009;
-Brazil Registration. No. 900235357, applied for March 13, 2007, and registered April 26, 2011;
-India Registration No. 1539323, applied for March 12, 2007, and registered February 25, 2012;
-Israel Registration No. 198367, applied for March 11, 2007, and registered February 7, 2010;
-Malaysia Registration No. 7004323, applied for March 13, 2007, and registered November 6, 2008;
-Mexico Registration No. 1000837, applied for March 13, 2007, and registered September 11, 2007;
-Taiwan, China Registration No.1296718, applied for March 12, 2007, and registered January 1, 2008.
Intellectual Ventures is the registrant of the domain name <intellectualventures.com>, which is used with the Complainants’ website at “www.intellectualventures.com”.
The Respondent registered the disputed domain name <lntellectualventures.com> on May 12, 2020. The first letter of the disputed domain name is a lower case “L”, which in the context of the disputed domain name resembles the capital letter “I” (for “i”). The Respondent used the disputed domain name to create multiple email accounts appropriating the names of Intellectual Ventures officers and directors. The Respondent then used the email accounts to impersonate Intellectual Ventures officers and directors. The Respondent sent emails impersonating Intellectual Ventures officers and directors to individuals holding registered domain names, offering to purchase their domain names. In some instances the Respondent’s purported offers were upwards of USD 1,000,000.
5. Parties’ Contentions
A. Complainant
The Complainants submit that the disputed domain name is confusingly similar to the Complainants’ INTELLECTUAL VENTURES mark. According to the Complainants, the disputed domain name is a deliberate misspelling of the INTELLECTUAL VENTURES mark, substituting a lower case L (“l”) for the upper case I (“i”), and a classic case of typo-squatting. The Complainants draw attention to previous UDRP decisions describing the substitution of similar-appearing characters as examples, and in particular cites Instagram, LLC v. Temp name Temp Last Name, Temp Organization, WIPO Case No. D2019-0109 (INSTAGRAM mark is visually similar when lowercase letter “L” is substituted for uppercase letter “i”).
The Complainants assert that the Respondent has no rights or legitimate interests in respect of the disputed domain name, holds no registrations for the INTELLECTUAL VENTURES mark, and has not been licensed, authorized or otherwise given permission to use or register the INTELLETUAL VENTURES mark or any derivations thereof, including domain names. Further, the Complainants submit that the Respondent has not been commonly known by the disputed domain name, and has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Complainants submit that the Respondent has engaged in a deliberate phishing scheme, sending multiple emails impersonating the Complainants’ executives and other key personnel, and falsely claiming that Intellectual Ventures wants to purchase recipients’ domain names for large sums of money. The Complainants contend that the Respondent, following the filing of this Complaint, continues to redirect Internet users to the Complainant’s website at “www.intellectualventures.com” without the Complainants authorization.
The Complainants maintain that the Respondent registered and is using the disputed domain name in bad faith. The Complainants reiterate that the Respondent registered and is using the disputed domain name in bad faith in furtherance of an illicit phishing scheme, with the goal of deceiving unsuspecting victims into thinking that the Respondent’s emails are emanating from the Complainants or one of the Complainants’ executives. According to the Complainants, the Respondent begin sending emails to recipients impersonating the Complainant’s executives within days of the Respondent’s registration of the disputed domain name, continuing thereafter to impersonate other members of the Complainants’ key leadership team.
The Complainants submit that the Respondent knew of and had the Complainants’ INTELLECTUAL VENTURES mark firmly in mind when registering the disputed domain name. The Complainants further contend that the Respondent’s employment of a privacy service constitutes bad faith registration and use of the disputed domain name. The Complainants assert it is not possible to conceive of any plausible actual or contemplated active of the disputed domain name that would not be illegitimate, citing Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Additionally, the Complainants maintain that the Respondent knew of and targeted the Complainants’ INTELLECTUAL VENTURES mark, and accordingly should be found to have registered and used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ INTELLECTUAL VENTURES mark, in which the Complainants have established rights through registration and use.2 In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainants’ trademark and the disputed domain name.
The Complainants’ INTELLECTUAL VENTURES mark is recognizable in the disputed domain name.4 The first letter of the disputed domain name is a lower case “L”, which in the context of the disputed domain name is virtually identical the capital letter “i”. The presence of the lower case “L” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainants’ mark. See, e.g., LLC v. Temp name Temp Last Name, Temp Organization, WIPO Case No. D2019-0109. When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.5 Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainants’ mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.6
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainants’ INTELLECTUAL VENTURES mark. The record reflects the Respondent’s registration and use of the disputed domain name to impersonate the Complainants in an attempt to profit illicitly from a fraudulent phishing scheme.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident that the Respondent was aware of the Complainants and the Complainants’ INTELLECTUAL VENTURES mark when registering the disputed domain name. The record indicates that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainants’ mark, through the impersonation of the Complainants and the use of the disputed domain name in furtherance of a fraudulent scheme.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent Complainants’ INTELLECTUAL VENTURES mark firmly in mind when registering the disputed domain name. The Respondent’s registration of the disputed domain name in the attendant circumstances smacks of opportunistic bad faith. It is clear from the record that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainants’ trademark rights by creating a likelihood of confusion with the Complainants’ mark, with the ultimate aim to profit illicitly therefrom.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name <lntellectualventures.com> be transferred to the Complainant Intellectual Ventures Management, LLC.
William R. Towns
Sole Panelist
Date: April 15, 2021
1 Grants of protection: Australia (AU); Switzerland (CH), China (CN); European Union (EM); Japan (JP); Norway (NO); Singapore (SG).
2 A trademark owners affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee is considered to have rights in a trademark under the Policy for purposes of standing to file a complaint. See WIPO Overview 3.0, section 1.4.1 and cases cited therein
31 See WIPO Overview 3.0 , section 1.7.
4 Id.
5 See WIPO Overview 3.0, section 1.8 and cases cited therein.
6 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.