WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kleiner Perkins Caufield & Byers, LLC v. amelia elizabeth / grantsagent ltd
Case No. DCO2019-0012
1. The Parties
The Complainant is Kleiner Perkins Caufield & Byers, LLC of Menlo Park, California, United States of America (“United States”), represented by Gibson Dunn & Crutcher, LLP, United States.
The Respondent is amelia elizabeth of Detroit, Michigan, United States / grantsagent ltd of Michigan, United States.
2. The Domain Name and Registrar
The disputed domain name <kleinerperkins.co> (the “Disputed 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 March 29, 2019. On April 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 2, 2019, 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 April 4, 2019 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 April 9, 2019.
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 April 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 9, 2019. 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, a Delaware corporation, is a venture capital firm that specializes in investments in emerging companies in the technology and life sciences sectors, which it has done for the past five decades.
The Complainant has owned the trademark KLEINER PERKINS CAUFIELD BYERS, United States Registration No. 3,264,438, since July 17, 2007, for business and investment services, including venture capital funding services, to entrepreneurs, emerging and start-up companies, and investors, in International Classes 35 and 36. The Complainant is also widely known by its abbreviated name, “Kleiner Perkins”, which it uses to provide business and investment services. The Complainant applied for the trademark for KLEINER PERKINS, United States Serial No. 87,927,140, on May 18, 2018, for business consulting, business management and business administration services in International Class 35, which was granted on March 19, 2019 (hereinafter collectively referred to as the “KLEINER PERKINS Mark”).
The Complainant owns the domain name, <kleinerperkins.com>, which redirects visitors to its official website, “www.kleinerperkins.com”, and serves to market and promote its business services.
The Respondent registered the Disputed Domain Name on October 23, 2018, many years after the Complainant first began to provide its services, and a decade after the Complainant continuously and exclusively registered its federal trademark. The Respondent registered the Disputed Domain Name with the Registrar’s privacy service.
Soon after the Respondent registered the Disputed Domain Name, on or about October 26, 2018, the Respondent used it to perpetrate a phishing scheme directed against the Complainant and several of its clients.1 In addition, the Respondent used the Disputed Domain Name to operate a phishing site that mimicked the Complainant’s official website. Prior to the Complainant obtaining a takedown of the website to which the Disputed Domain Name redirected, the Respondent copied the Complainant’s official website, used the Complainant’s logo, imitated the Complainant’s web design, and displayed content similar to that on the Complainant’s official website regarding venture capital financing.2 As of the writing of this decision, the Disputed Domain Name redirects to a page that states: “Sorry...kleinerperkins.co could not be found. It may be unavailable or may not exist. Try using the suggestions or related links below, or search again using our web search.”
5. Parties’ Contentions
The following are the Complainant’s contentions:
-The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks.
-The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
-The Disputed Domain Name was registered and is being used in bad faith as part of a phishing scheme perpetrated by the Respondent.
-The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed 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 in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel concludes that the Disputed Domain Name is confusingly similar to the KLEINER PERKINS Mark.
First, it is uncontroverted that the Complainant has established trademark rights in the KLEINER PERKINS Mark based on its long and continuous use to market its business services. The Disputed Domain Name <kleinerperkins.co> consists of the KLEINER PERKINS Mark followed by the generic Top-Level Domain (“gTLD”) “.co”.
Second, prior UDRP panels have found that a domain name comprised of a trademark owner’s shortened name were deemed confusingly similar to the owner’s trademark. See, e.g., Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (finding that <deloitt.com> was confusingly similar to DELOITTE & TOUCHE). Based on the above, the Panel concludes that the Disputed Domain Name <kleinerperkins.co> is confusingly similar to the KLEINER PERKINS Mark.
Finally, the addition of a gTLD such as “.co” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its KLEINER PERKINS Mark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.
The Respondent is using the Disputed Domain Name for the purpose of perpetrating a phishing scheme on the Complainant and several of its clients and for copying the design and substance of the Complainant’s website to misdirect visitors to a website that impersonates the Complainant’s official website. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, 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 2.13.1.
The Respondent is using the Disputed Domain Name for impersonation and phishing, and thus, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, as demonstrated above, the Respondent is using the Disputed Domain Name <kleinerperkins.co> to operate a phishing scheme aimed at defrauding the Complainant and its clients. “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution … Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” See WIPO Overview 3.0, section 3.4.
In this case, the Panel concludes that the Respondent is using the Disputed Domain Name for an illegitimate purpose that establishes the Complainant’s bad faith intent to register and use the Disputed Domain Name. The use of a privacy service to register the Disputed Domain Name further supports a finding that the Respondent registered the Disputed Domain Name in bad faith.
Second, bad faith may be found where the Respondent knew or should have known of the registration and use of the KLEINER PERKINS Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name decades after the Complainant first used its trademark and ten years after the Complainant received a federal registration for the KLEINER PERKINS Mark.
The longstanding and public use of the KLEINER PERKINS Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Finally, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s KLEINER PERKINS Mark for commercial gain.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <kleinerperkins.co> be transferred to the Complainant.
Lynda M. Braun
Date: May 10, 2019
1 The Complainant used “www.checkphish.com”, a website dedicated to detecting and documenting phishing scams. As a result, the Complainant identified the website to which the Disputed Domain Name was redirected as a phishing scheme. Screenshots of the website were attached as an Annex to the Complaint.
2 Screenshots of the above-referenced website were provided by the Complainant in an Annex to the Complaint.