WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Qatalyst Partners LP v. Domains By Proxy, LLC, DomainsByProxy.com / Peter Fazio

Case No. D2021-1035

1. The Parties

Complainant is Qatalyst Partners LP, United States of America (“United States”), represented by Shearman & Sterling LLP, United States.

Respondent is Domains By Proxy, LLC, DomainsByProxy.com, United States / Peter Fazio, United States.

2. The Domain Name and Registrar

The disputed domain name <qatlyst.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 9, 2021.

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 Respondent of the Complaint, and the proceedings commenced on April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 14, 2021.

The Center appointed Scott R. Austin as the sole panelist in this matter on May 21, 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 following facts appear from the Complaint (as amended) and its Annexes, which have not been contested by Respondent.

Complainant is a well-known independent investment bank that since its founding in 2007 has provided a broad array of strategic advice and financial consulting services under the trademark QATALYST (the “QATALYST Mark”) a coined term derived from the English word “catalyst”, Complainant has provided such advice and consulting services in connection with mergers and acquisitions, primarily to leaders in the global technology industry, including large and well-publicized transactions involving Amazon, Microsoft, Google, eBay, LinkedIn, Adobe, SAP, Intuit, airbnb, and PayPal.

Complainant or its United Kingdom-based affiliate, Qatalyst Partners Limited, have secured ownership of a number of trademark registrations for the QATALYST Mark across various jurisdictions including but not limited to the following:

United States Trademark Registration No 5489396, QATALYST PARTNERS, registered on June 12, 2018, for a range of financial services in class 36, including investment banking for the purposes of creating capital for other companies, governments and other entities, underwriting new debt and equity securities for all types of corporations, issuing securities and helping facilitate mergers and acquisitions, and claiming a first use date of March 17, 2008.

Swiss Trademark Registration No 58363/2010, QATALYST, registered on September 13, 2010, for a range of financial services in class 36.

Complainant is also the owner of the domain name <qatalyst.com> from which Complainant operates its official QATALYST website at “www.qatalyst.com” (“Official Website”) offering Complainant’s strategic advising and financial consulting services.

The disputed domain name was registered on March 26, 2021, and as of the filing of the Complaint resolved to an inactive web page which displayed “This page isn’t working”; the page currently displays “This page can’t be reached” and suggests that users “Check if there is a typo in qatlyst.com”. The disputed domain name was brought to Complainant’s attention by another financial institution due to that institution’s confusion whether the disputed domain name was associated with Complainant. The record submitted provides probative evidence of attempted use of the disputed domain name for phishing sensitive financial information and payments from Complainant’s clients.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a Response. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

Where no Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will address each of these requirements in turn.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for its QATALYST Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

With Complainant’s rights in the QATALYST Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) “.com” in which the domain name is registered) is identical or confusingly similar to Complainant’s QATALYST Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.

Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The disputed domain name incorporates Complainant’s QATALYST Mark in its entirety with one minor distinction, the omission of the second occurrence of the letter “a” in the Mark. This omitted letter does not significantly affect the appearance or pronunciation of the domain name. The disputed domain name, therefor, is essentially identical to Complainant’s official domain name <qatalyst.com> and encompasses its registered QATALYST Mark leaving out only the second letter “a”. This minor difference in spelling could be easily overlooked or considered a “typo” by consumers.

Prior UDRP panels have also found a difference of only one letter between a disputed domain name and a complainant’s mark to be insufficient to prevent a finding of confusing similarity. See, e.g., Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (<expresscripts.com> omission of “s” constitutes typosquatting which is by definition evidence of a confusingly similar domain name); Electronic Arts Inc. v. John Zuccarini, WIPO Case No. D2003-0141 (<simscity.com> “the domain name differs from [SIMCITY] trademark in only one letter; this small difference establishes the confusingly similarity with [the complainant’s trademark]”). The addition of the TLD “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11.

Complainant’s QATALYST Mark is recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the QATALYST Mark in which Complainant has rights.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally, deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).

Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent is not a licensee of or affiliated with Complainant, nor has Complainant consented to or granted any authorization for Respondent to make use of Complainant’s QATALYST Mark in a domain name or otherwise. Complainant has also shown that Respondent is not commonly known by the disputed domain name because Respondent is listed in the WhoIs record submitted with the initial Complaint as Domains By Proxy, LLC, DomainsByProxy.com, and thereafter revealed by the involved registrar to be Peter Fazio, identified as the additional respondent in the amended Complaint. Neither Respondent bears any resemblance to the disputed domain name whatsoever.

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.

Complainant also contends that since the disputed domain name resolves to an inactive or “blank” web page, which reports an error (“This page isn’t Working”) or suggests a typing error (“Check if there is a typo in qatlyst.com.”), that Respondent has no genuine actual or legitimate business which uses the name or mark “QATALYST”, or any similar name and has not used the QATALYST name or mark (or any similar name) in connection with the bona fide offering of goods or services so that it benefits from any goodwill as such term is reflected in the disputed domain name.

Prior UDRP panels have held that use of a disputed domain name to resolve to a blank or inactive web page does not represent a bona fide use of the disputed domain name. See Fetzer Vineyards v. --, WIPO Case No. D2019-2285. See also WIPO Overview 3.0, section 2.9.

Complainant has also provided detailed explicit evidence showing Respondent’s use of the disputed domain name in connection with fraudulent email activity to impersonate Complainant as part of a phishing scheme to extract payment and financial information from Complainant’s clients. Prior UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See, WIPO Overview 3.0, section 2.13. See also, Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature, WIPO Case No. D2020-0955.

Furthermore, prior UDRP panels have held that domain names that are identical to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. In this case, the Panel has found in Section 6A above that the disputed domain name is essentially identical to Complainant’s QATALYST Mark.

In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s QATALYST Mark, as well as its <qatalyst.com> domain name, as found in section 6.A. above, it is implausible to believe that Respondent did not have actual knowledge of Complainant’s mark when it registered its confusingly similar domain name. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.

The Panel also notes here additional factors under section 3.1.4 and its cases from which the Panel may infer bad faith registration:

(i) Respondent’s deletion of the second occurrence of the letter “a” in the disputed domain name as a “typo” from both Complainant’s QATALYST Mark and official <qatalyst.com> domain name to confuse consumers searching for Complainant, as well as email recipients;
(ii) Complainant’s official website for Complainant’s strategic advising and financial consulting services is accessed at “www.qatalyst.com”, a strikingly similar string, which suggests Respondent targeted Complainant’s mark when it picked the disputed domain name removing only a single repeated letter to create the disputed domain name <qatlyst.com>; and
(iii) the lack of Respondent’s rights to or legitimate interests in the disputed domain name registered to engage in per se illegitimate activity for commercial gain.

Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1.

Bad faith use is also clear from Respondent’s illegal conduct as discussed in detail in section 6.B. above, sending fraudulent emails under the name of Complainant’s authorized financial managers suggesting an affiliation with Complainant to solicit sensitive, financial information to redirect payments to third party accounts from unsuspecting clients for Respondent’s commercial gain. See, WIPO Overview 3.0, section 3.1.4; see also, Accenture Global Services Limited v. Yankee, Yankees, WIPO Case No. D2018-0217 and BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.

For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under 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 <qatlyst.com> be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: June 4, 2021