WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kevin Michael Gray d/b/a Approve Me v. Progressive Finance LLC / Hostmaster Hostmaster, Prog Finance, LLC
Case No. DME2015-0015
1. The Parties
The Complainant is Kevin Michael Gray d/b/a Approve Me of San Francisco, California, United States of America ("United States") represented by Abrams Garfinkel Margolis Bergson, LLP, United States.
The Respondent is Progressive Finance LLC of Draper, United States / Hostmaster Hostmaster, Prog Finance, LLC of Draper, Utah, United States represented by Ballard Spahr Andrews & Ingersoll, LLP, United States.
2. The Domain Name and Registrar
The disputed domain name <approve.me> 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 December 21, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2016, 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 January 4, 2016 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 January 9, 2016.
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 January 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2016. On January 29, 2016, the Respondent requested a four day extension of the Response due date. The Center extended the Response due date in accordance with the Rules, paragraph 5(b) until February 6, 2016. The Response was filed with the Center on February 6, 2016.
The Center appointed Angela Fox as the sole panelist in this matter on February 16, 2016. 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 is an individual based in California, doing business as Approve Me. The Complainant offers an approval management software application that allows users to sign, store and distribute invoices, contracts, job applications, credit card applications and accounting documents using proprietary approval and processing technology, offered under the APPROVE ME name and trademark. The Complainant owns the domain name <approveme.me> and uses a website linked to that domain name to offer its APPROVE ME app.
The Complainant is the proprietor of United States federal trademark registration no. 4465148 for APPROVE ME, filed on November 4, 2013 and registered on January 14, 2014 for "computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information," details of which were exhibited to the Complaint.
The disputed domain name was registered on August 18, 2008 and was acquired by the Respondent in April or June 12, 2014. On May 7, 2014 the Respondent incorporated a company in Utah under the name "Approve.me LLC". The Respondent did not put the disputed domain name to use immediately, but issued a press release on or around 22 September 2015, a copy of which was annexed to the Complaint, indicating its plans to launch a financing and credit approval platform under the name and trademark APPROVE.ME. Materials annexed to the Response show use of APPROVE.ME in that capacity.
In or around September 2014, the Complainant learned of the Respondent's acquisition of the disputed domain name and on October 3, 2014 it sent a demand letter to the Respondent. On November 13, 2014 the Respondent replied denying that the disputed domain name infringed the Complainant's trademark rights.
This administrative proceeding was filed on January 8, 2016.
5. Parties' Contentions
The Complainant submits that the disputed domain name is confusingly similar to its registered trademark APPROVE ME. The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name, which the Complainant submits is for use in the loan and financing field in which it is already active. The Complainant further contends that the disputed domain name was acquired and has been used by the Respondent in bad faith, noting that its APPROVE ME software is "widely recognized in the United States".
The Respondent denies that the disputed domain name is confusingly similar to the Complainant's registered trademark, noting that APPROVE ME has a descriptive meaning in relation to credit approval matters that it argues would not necessarily be associated with the Complainant. The Respondent further submits that it has rights and legitimate interests in the disputed domain name, which it claims to be using in connection with a bona fide online financial services platform. The Respondent states that it had not heard of the Complainant before it registered the disputed domain name and its corresponding company name, and that it only learned of the Complainant when it received the Complainant's cease and desist letter in October 2014. The Respondent denies that it has acquired or used the disputed domain name in bad faith.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has shown that it has registered trademark rights in APPROVE ME in the United States.
The disputed domain name is essentially identical, or at the very least closely similar, to the Complainant's registered trademark. The natural reading of the disputed domain name is "APPROVE ME". The mere fact that "ME" also functions as a country Top-Level Domain ("ccTLD") does not strip it of its significance in how the domain name, overall, is likely to be perceived and understood.
The Complainant therefore succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has not, however, established that the Respondent has no rights or legitimate interests in the disputed domain name under the Policy.
Under paragraph 4(c)(i) of the Policy, a Panel shall find that a Respondent has demonstrated rights or legitimate interests where the Panel finds that, based on an evaluation of all the evidence presented, before any notice to the Respondent of the dispute, the Respondent was using, or making 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.
In this case, the Complaint states that the Complainant learned of the registration of the disputed domain name in or around September 2014. The Complainant states that it also learned that the Respondent was engaged in a similar business to that of the Complainant, namely an online financial services business to help facilitate contracts between merchants and their customers by providing a user-friendly application and signatory process. While it appears from the Complaint and the Response that the disputed domain name was not in commercial use at that time, nonetheless the Response shows that the Respondent had been making demonstrable preparations to launch a business under a name corresponding to the disputed domain name, in particular through the registration of a company, Approve.Me LLC, in Utah on July 5, 2014, prior to receiving the Complainant's cease and desist letter of October 3, 2014.
That those preparations were directed toward the use of the disputed domain name in respect of an offering of financial services is supported by the reference in the Complaint to the Respondent's press release of September 22, 2015 announcing the launch of "Approve.Me, a Groundbreaking Solution for Retailers to Offer a Single Application Across the Full Spectrum of Finance and Lease Products". Attached to the Response, moreover, were print-outs from the website linked to the disputed domain name showing its use in connection with financial services.
The Respondent states that it was not aware of the Complainant and its business at the time it acquired the disputed domain name. Despite the Complainant's assertions, the Complaint contains no objective evidence that would allow the Panel to infer that the APPROVE ME trademark was in fact well-known or had a substantial profile in the financial services industry, such that the Respondent could be reasonably presumed to have known about it. Without such evidence, and taking into account that APPROVE ME is capable of being used and understood in a descriptive manner in respect of financial services (i.e., in statements such as, "approve me for credit"), there is no basis on the present record on which the Panel can find that there was knowledge on the part of the Respondent that would call into question the bona fides of its adoption of the disputed domain name.
In the circumstances, therefore, the Panel finds that the Complainant has not met its burden under the second element of the Policy.
C. Registered and Used in Bad Faith
In light of the Panel's finding in relation to rights and legitimate interests, it is not strictly speaking necessary to consider the question of registration and use in bad faith.
However, for the same reasons as given in section B above, the Panel would find that the Complainant has not proved that, and on the balance of probabilities, the Respondent acquired and has used the domain name in bad faith. There is no evidence that would allow the Panel to infer that the Respondent was aware of the Complainant prior to acquisition of the disputed domain name and intended to capitalize on the Complainant's reputation and goodwill. That does not of course mean that the Respondent's activities may not infringe the Complainant's trademark rights. That is, however, an issue that the Complainant would need to pursue separately in a different forum.
The Panel finds that the Complainant has not made out its case under the third element of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: March 18, 2016