WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alight Solutions, LLC v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Stella Abina
Case No. D2021-2892
1. The Parties
The Complainant is Alight Solutions, LLC, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Stella Abina, Ghana.
2. The Domain Name and Registrar
The disputed domain name <alightfinance.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2021, regarding two domain names, <alightfinance.com> and <alightfinancialsoulutins.com> (collectively the “Domain Names”). On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, 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 the Complainant on September 13, 2021, providing the registrant and contact information disclosed by the Registrar regarding <alightfinance.com>, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 14 and 15, 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 the only the Registrant of <alightfinance.com> of the Complaint, and the proceedings commenced on September 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 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.
On November 16, 2021, the Panel issued Administrative Procedure Panel Order No. 1 providing the Complainant with the registrant information applicable to the disputed domain name <alightfinancialsoulutins.com>. The Panel noted that pursuant to Rules paragraph 3(c) “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Accordingly, the Complainant was requested to: (i) 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; and/or (ii) file a separate complaint for any domain name for which it is not possible to demonstrate that all named respondents are in fact the same entity and/or that all domain names are under common control. The Center subsequently received submissions from Complainant on November 19 and 24, 2021, removing the disputed domain name <alightfinancialsoulutins.com> from this proceeding.
On November 26, 2021, the Panel issued Administrative Procedure Panel Order No. 2 in which it invited the Respondent to raise justifiable grounds for objection, regarding the termination of this administrative proceeding regarding the disputed domain name <alightfinancialsoulutins.com>. Further to the Procedural Order No. 2, in the absence of an objection from the Respondent the Center informed the Registrar that the current proceeding would continue only regarding the disputed domain name <alightfinance.com>, and that a new complaint had been filed regarding the disputed domain name <alightfinancialsoulutins.com> that will be subject to a separate proceeding.
4. Factual Background
The Complainant is a United States company that for 25 years has offered human capital and business solutions to over 4,000 corporate clients, including investment services to employees and retirees of its clients. The Complainant employs 15,000 people in 100 countries around the world. Since 2017 the Complainant has provided its services under a trade mark consisting of the word “alight” (the “ALIGHT Mark”) and is the registrant of domain names containing the ALIGHT Mark including the domain names <alight.com> and <alightfinancialsolutions.com> (the “Complainant’s Domain Names”).
The Complainant holds a number of registered trade marks for the ALIGHT Mark including United States trademark registration number 5,062,182, registered since October 18, 2016, for goods and services in classes 9 and 42.
The Domain Name <alightfinance.com> was registered on October 6, 2020. It is presently inactive but prior to the commencement of proceedings redirected to a website (“the Respondent’s Competing Website”) that, under the Complainant’s ALIGHT Mark purported to offer investment services in direct competition with the Complainant’s investment services.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) the Domain Name is identical or confusingly similar to the Complainant’s ALIGHT Mark;
(ii) the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ALIGHT Mark having registered the ALIGHT Mark in the United States and various other jurisdictions. The Domain Name wholly incorporates the ALIGHT Mark along with the descriptive word “finance” and the “.com” generic Top-Level Domain (“gTLD”).
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the ALIGHT Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name resolves to a page that offers services in direct competition with the Complainant. This does not provide the Respondent with rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing investment services, the Respondent is using the Domain Name to disrupt the Complainant’s business and divert Internet users searching for the Complainant to a competing website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ALIGHT Mark, having registrations for the ALIGHT Mark as a trade mark in, amongst other places, United States, the Benelux, and Australia. The Domain Name wholly incorporates the ALIGHT Mark along with the descriptive word “finance” (and the “.com” gTLD, which can be discounted as an essential element of any domain name).
UDRP panels have repeatedly held that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also The Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007‑0884; and Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., WIPO Case No. D2011‑1227.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s ALIGHT Mark.
Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights to or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ALIGHT Mark or a mark similar to the ALIGHT Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services. The Respondent’s use of the Domain Name to redirect to a webpage offering investment services in direct competition with the services offered by the Complainant does not, on the face of it, amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark 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) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted 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 the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the ALIGHT Mark at the time the Respondent registered the Domain Name. The Respondent has provided no explanation, and neither it is immediately obvious, why an entity would register a domain name incorporating the ALIGHT Mark (with the addition of the term “finance” which is related to one of the Complainant’s business areas and is similar to the Complainant’s Domain Name <alightfinancialsolutions.com>) and redirect it to a website offering competing services unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its ALIGHT Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent’s Competing Website purports to offer investment services in direct competition with the Complainant. Given that the Respondent has offered no plausible explanation for the registration of the Domain Name, the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the ALIGHT Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Competing Website. Although the Domain Name does not currently resolve to an active website, this does not prevent a finding of bad faith in the circumstances of this case. As such, the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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, <alightfinance.com> be transferred to the Complainant.
Date: December 2, 2021