WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compass, Inc. v. Domains By Proxy, LLC / Paulina Elizalde
Case No. D2021-3771
1. The Parties
Complainant is Compass, Inc., United States of America (“U.S.”), represented by Riley Safer Holmes & Cancila LLP, U.S..
Respondent is Domains By Proxy, LLC, U.S. / Paulina Elizalde, Mexico.
2. The Domain Name and Registrar
The disputed domain name <compassinvestmanagement.com> 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 November 8, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 November 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2021.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 15, 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
Complainant, Compass, Inc., is a residential real estate brokerage founded in 2012 under the name “Urban Compass”. Initially, the company focused in offering rental services and operated with full-time employed brokers. Nowadays, Complainant is made up of independent real estate agents, who advise their clients in finding and selling high-margin, luxury homes in upscale market.
Since its foundation, Complainant has expanded its activities to 20 cities across the U.S. and aims to become the first one stop shop of brokerage services. In 2021, Complainant went public and was listed on the New York Stock Exchange under the ticker COMP, changing its formal legal name from Urban Compass, Inc., to Compass, Inc.
During the past years, Complainant has achieved international success and reputation. In order to protect its investments and rights, Complainant owns several trademark registrations for the sign Compass in a variety of jurisdictions.
Below are some examples of Complainant’s trademark registrations:
Number, filing date, registration date and specification of services:
U.S. Reg. No. 5,906,154, filed on Jan. 16, 2018, and registered on Nov. 12, 2019, for the following goods and services: “Downloadable software for locating, monitoring, tracking, and researching available real estate; downloadable software for reviewing and analyzing aggregate market data in the field of real estate” in International Class 9; “Real estate marketing services” in International Class 35; “Real estate sales management; real estate brokerage; real estate consultation; real estate listing; real estate valuation services; providing real estate listings and real estate information via the internet” in International Class 36; “Providing online, non-downloadable software for locating, monitoring, tracking, and researching available real estate” in International Class 42.
U.S. Reg. No. 6,041,375, filed on Aug. 30, 2019, and registered on April 28, 2020, for inter alia, the following services: “Providing online, non-downloadable software for locating, monitoring, tracking, and researching available real estate; software as a service (SAAS) services featuring software for searching, retrieving, viewing, organizing, reviewing, valuing, selling, and buying in the field of real estate” in International Class 42.
Complainant has continuously advertised and delivered real estate services in extensive conjunction with the trademark COMPASS since 2015 and owns its official domain name <compass.com>.
The disputed domain name <compassinvestmanagement.com> was registered on April 22, 2021, and resolves to a fraudulent website and has been used for a fraudulent email scheme impersonating Complainant.
5. Parties’ Contentions
Complainant pleads that the disputed domain name is confusingly similar to its registered trademarks COMPASS, since it incorporates the sign COMPASS in its entirety. Therefore, despite the addition of the generic words “invest” and “management” after COMPASS in the disputed domain name, it will likely be associated with Complainant’s trademark.
In this regard, Complainant affirms that any Internet user when visiting a website or receiving an email connected to the disputed domain name will reasonably expect to find a website linked to Complainant.
Complainant also notes that Respondent is trying to take advantage of the renown and notoriety achieved by the company through the COMPASS trademark, especially due to the extensive media attention received by Complainant in the past few years.
Thus, according to Complainant, the disputed domain name intends to imitate its business and take advantage of its well-known reputation, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii) and 3(b)(ix)(1) of the Rules.
Furthermore, Complainant affirms that, as far as it is aware, Respondent does not have any rights or legitimate interests in respect of the trademarks COMPASS, nor is widely known by the disputed domain name, authorized, or licensed to use such trademark as a domain name.
Complainant mentions that Respondent has not used the disputed domain name for noncommercial or fair use. On the contrary, Respondent is using both the website and the email address connected to the disputed domain name to defraud consumers through a phishing scheme, falsely claiming to be the international branch of Complainant.
This way, Complainant states that no bona fide or legitimate use of the disputed domain name could be reasonably claimed by Respondent, so paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be fulfilled.
At last, Complainant states that the disputed domain name was registered and is being used in bad faith.
In this regard, Complainant alleges that it is impossible that Respondent was not aware of Complainant’s rights and well-known reputation when registering the disputed domain name.
According to Complainant, Respondent has firstly created a fictitious entity called “Compass International Financial” to falsely claim to be the international branch of Complainant - including by using the trademark COMPASS, forging the signature of Complainant’s CEO on documents, and listing the address of Complainant’s regional headquarters on the website.
However, after Complainant alerted the Federal Bureau of Investigation (FBI) to the fraudulent activity conducted in conjunction with the domain name <compassinternationalfinancial.com> (the “disputed domain name” in WIPO Case No. D2021-3647), the fraudsters have redirected their efforts to the current disputed domain name <compassinvestmanagement.com>. Now, using the name “Compass Investment Management” and operating the disputed domain name as a new website and email address, with content that is identical to the one hosted by the domain name <compassinternationalfinancial.com>, Respondent has continued to perpetrate the fraud in the same scheme, namely, Respondent allegedly pursued timeshare owners pretending to be Complainant in order to obtain illegal financial gain.
ln conclusion, Complainant sustains that, by the registration and use of the disputed domain name, Respondent intentionally attempted to attract, for commercial and illegal gain, Internet users to its website, creating a likelihood of confusion with Complainant and its trademark COMPASS as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.
A. Identical or Confusingly Similar
Complainant has proven that it owns prior trademark rights over the sign COMPASS and that the disputed domain name incorporates such trademark in its entirety, with the addition of the terms “investment” and “management”, which do not avoid a finding of confusing similarity with Complainant’s trademark COMPASS.
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark, and so the requirement of the first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name. Moreover, considering the use of the disputed domain name for purposes of a fraudulent email scheme in which Respondent impersonates Complainant, the Panel concurs with the well-established principal that that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.
The Panel finds that is duly demonstrated that Respondent was aware of Complainant’s rights to the trademark COMPASS at the time of registration of the disputed domain name, since it is reasonable to assume that Respondent has registered it with the sole intention of continue to impersonate Complainant in a fraudulent scheme, previously implemented trough the domain name <compassinternationalfinancial.com> and investigated by the U.S. Federal Bureau of Investigation (FBI). Notwithstanding the prior proceeding, the construction of the disputed domain name itself suggests an awareness of Complainant and its services, noting that combination of Complainant’s mark with the descriptive terms “invest” and “management”.
Thus, in the Panel’s opinion, the fact that the website to which the disputed domain name resolves has an identical content as the website hosted by the domain name <compassinternationalfinancial.com>, that is, with information copied from Complainant’s official website and reproducing Complainant’s trademark COMPASS, shows that Respondent is somehow related to the owner of the domain name <compassinternationalfinancial.com> and uses the disputed domain name in bad faith for the same fraud purposes.
In this regard, the Panel understands that Respondent registered the disputed domain name solely for fraudulent purposes, which is the clearest evidence of registration and use of a domain name in bad faith. In this regard, the Panel refers to the UDRP decision in L’Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021, as quoted below:
“From the above it is apparent to the Panel that the Respondent was not only familiar with the Complainant’s trademarks, but also its company, when registering the disputed domain name. It can be inferred that the Respondent solely registered the disputed domain name for fraudulent purposes. It is established case law that the use of a disputed domain name for the purpose of defrauding Internet users by the operation of a “phishing scheme” is perhaps the clearest evidence of registration and use of a domain name in bad faith (see OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037 and The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093)”.
Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy and paragraph 3(b)(iv) of the Rules are also satisfied, since Respondent clearly intends to attract, for financial and illegal gain, Complainant’s consumers by creating a likelihood of confusion with Compass, Inc and its trademark COMPASS, which constitutes registration and use of the disputed domain name <compassinvestmanagement.com> in bad faith.
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 <compassinvestmanagement.com> be transferred to the Complainant.
Gabriel F. Leonardos
Date: December 29, 2021