WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stockpile, Inc. v. Privacy Service Provided by Withheld for Privacy ehf / Richard Smith, Quantum Tech
Case No. D2021-4193
1. The Parties
The Complainant is Stockpile, Inc., United States of America (“United States” or “US”), represented by Latham & Watkins LLP, United States.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Richard Smith, Quantum Tech, Canada.
2. The Domain Name and Registrar
The disputed domain name <stockpileinvestment.trade> (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 December 13, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 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 amended Complaint on December 20, 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 Respondent of the Complaint, and the proceedings commenced on December 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. The Respondent sent informal email communication on December 21, 2021. However, the Respondent did not submit a formal Response.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 26, 2022. 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 Complainant was founded in 2010 and is a corporation that provides financial investment services in the United States.
The Complainant owns numerous trademark registrations that incorporate STOCKPILE, such as US trademark registration No. 4593157, registered on August 26, 2014, India trademark registration No. 2124328, registered on September 12, 2016, and Mexico trademark registration No. 1244661, registered on October 17, 2011, all registered prior to when the Respondent registered the Domain Name.
The Complainant also owns the domain name <stockpile.com>.
The Domain Name was registered on July 18, 2020. As evidenced in the Complaint, and at the time of drafting the Decision, the Domain Name resolved to a webpage purporting to offer financial investment services.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is confusingly similar to its trademark. The Domain Name incorporates the Complainant’s registered trademark in its entirety. The addition of the generic term “investment” does not prevent a finding of confusing similarity with the Complainant’s trademark. On the contrary, the addition is likely to reinforce it because it is associated to the Complainant’s business.
The Complainant asserts that it has no association with the Respondent and has never authorized, licensed, or permitted the Respondent to use its trademark. The Respondent is not commonly known by the Domain Name. The Complainant submits that the Respondent’s use of the Domain Name was only to mislead consumers and trade off the Complainant’s trademark, for commercial gain. The Complainant argues that the Respondent offers investments that appears to be dishonest, fake, and potentially fraudulent. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods. The Complainant points out that the Respondent has used an identical copy of the Complainant’s previous logo, its prior address, and has linked to the Complainant’s FINRA Broker Check.
Finally, the Complainant submits that the Respondent must have been aware of the Complainant and its trademark when the Respondent registered the Domain Name. The Complainant’s trademarks are registered in many countries, and the Respondent has used the Complainant’s previous logo on their website. The addition of the term “investment” further indicates that the Respondent knew of the Complainant’s business. The Complainant argues that the Respondent has registered and is using the Domain Name in bad faith by attempting to attract, for commercial gain, Internet users to its website, through creating a likelihood of confusion with the Complainant.
The Respondent did not reply to the Complainant’s contentions. However, on December 21, 2021, the Respondent submitted an informal communication merely asking “Okay, what do we need to do”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark STOCKPILE. The test for confusing similarity involves a comparison between the trademark and the Domain Name. The Domain Name incorporates the Complainant’s trademark with the additional element “investment” at the end of the mark. This does not prevent a finding of confusing similarity between the Domain Name and the trademark.
For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”), see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name or otherwise make use of its trademark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights, and the Panel finds no indication that the Respondent has been commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name, as it has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods. Based on the Complainant’s contentions and the evidence provided, the Panel agrees with the Complainant that the investments the Respondent offers are most likely fraudulent. As such, the Respondent’s use of the Domain Name indicates bad faith, rather than a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
The Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainant that the Respondent was aware of the Complainant’s trademark and its business when the Respondent registered the Domain Name. The Complainant’s trademark predates the registration of the Domain Name, and the Respondent’s use of the Domain Name clearly indicates that the Respondent knew of the Complainant, including the Respondent’s use the Complainant’s logo and address.
The Respondent has tried to create a false association between the Domain Name and the Complainant’s trademark. The Respondent has tried to attract Internets users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark, perhaps even for fraudulent use, see WIPO Overview 3.0, sections 3.1.4 and 3.4.
Finally, the Respondent has not replied to the Complainant’s cease and desist letter, nor the Complaint, except for one informal email on December 21, 2021. The Respondent has not provided any evidence of good-faith use. The Respondent’s use of a privacy service to conceal his identity may under the circumstances of this case further indicate bad faith.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 <stockpileinvestment.trade> be transferred to the Complainant.
Date: February 8, 2022