WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Patreon, Inc. v. James Hoe

Case No. DNL2020-0027

1. The Parties

The Complainant is Patreon, Inc., United States of America, represented by The GigaLaw Firm, United States of America.

The Respondent is James Hoe, China.

2. The Domain Name and Registrar

The disputed domain name <patreon.nl> (the “Domain Name”) is registered with SIDN through 1API GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2020. On June 17, 2020, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 18, 2020, SIDN 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 June 18, 2020, providing the registrant and contact information disclosed by SIDN, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 22, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2020. In accordance with the Regulations, article 7.1, the due date for Response was July 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020.

The Center appointed Wolter Wefers Bettink as the panelist in this matter on July 22, 2020. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant is a creator-founded membership platform for artists and their fans, helping more than 150,000 creators support their work through direct fan membership. In turn, fans get a chance to obtain access to community, exclusive content, and the chance to become active participants in the work they love, in exchange for a monthly amount paid to the creator of their choice. The platform is supported by more than 3 million monthly active patrons. The Complainant has its headquarters in San Francisco, California (USA) and offices in New York, New York (USA); Omaha, Nebraska (USA); Berlin, Germany; Dublin, Ireland; and Porto, Portugal and employs more than 200 people.

The Complainant registered the domain name <patreon.com> on February 27, 2013, which it uses for its website “www.patreon.com”. The Complainant is the owner of 23 registrations of the PATREON trademark, including the following (hereafter the “Trade Marks”):

- United States of America word mark PATREON registered under No. 4,803,360 on September 1, 2015;

- United States of America word mark PATREON registered under No. 4,803,361 on September 1, 2015;

- United States of America word mark PATREON registered under No. 4,862,222 on December 1, 2015;

- European Union word mark PATREON registered under No. 14,198,337 on October 5, 2015;

- European Union word mark PATREON registered under No. 14,730,361 on February 26, 2016.

The PATREON mark was first used in commerce in the United States of America on August 1, 2013.

The Respondent registered the Domain Name on April 13, 2014. The Respondent is advertising the Domain Name for sale and redirecting the Domain Name to various websites, including websites that claim to be from “Microsoft” and attempt to convince users that they have encountered “Potential Threats” on their computers, which have been flagged by McAfee WebAdvisor as “Very risky” because they are “Malicious Sites” that “deploy code designed specifically to hijack your computer’s settings or activity”. The Respondent is the registrant of numerous domain names (in addition to the Domain Name) that are identical or confusingly similar to trademarks owned by third parties (as well as at least one additional domain name that is identical to the Trade Marks), including <patreon.at>, <draftkings.at>, <giphy.at>, and <lyft.com.mx>.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the Domain Name contains the PATREON mark in its entirety, while the Top Level Domain ‘.nl’ can be disregarded in assessing the similarity between the Trade Marks and the Domain Name. The Complainant submits that where, as here, a domain name wholly incorporates a complainant’s trademark, that is sufficient to establish confusing similarity for purposes of the Regulations. Accordingly, the Complainant concludes that the Domain Name is identical or confusingly similar to the Trade Marks.

The Complainant states that the Respondent has no rights or legitimate interests in the Domain Name because the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Trade Marks in any manner. In addition, the Complainant contends, the Respondent has not made 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. The Complainant points out that the Respondent is redirecting the Domain Name, in a manner described under point 4 above. Furthermore, the Complainant submits that the Respondent as an individual, business or other organization is not commonly known by the Domain Name or anything similar to “Patreon”. Finally, the Complainant states that the Respondent’s use of the Domain Name is not a legitimate noncommercial use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.

According to the Complainant, the Domain Name has been registered or is being used in bad faith by the Respondent because, inter alia, “the domain name has been or is being used for commercial gain, by attracting internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant’s website or another online location” (Regulations, Article 3.2(d)).

In particular, the Complainant states that, given the global reach and popularity of its services under the Trade Marks, as well as the Domain Name’s similarity to the Complainant’s domain name <patreon.com>, it is inconceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities, the Trade Marks and the name under which the Complainant is doing business.

The Complainant also contends that the Trade Marks are famous or widely known, given that the PATREON mark is protected by at least 23 registrations worldwide, and its commercial achievements as outlined in point 4 above.

The Complainant further points out that the Respondent’s redirection to websites making the above mentioned false claims constitutes bad faith because, the Complainant contends, they disrupt the business of a competitor and intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Finally, the Complainant submits, since the Respondent is the registrant of numerous other domain names that are identical or confusingly similar to well-known trade marks owned by third parties, the Respondent has engaged in a pattern of conduct that is further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the PATREON mark in its entirety (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).¹ The country code Top-Level Domain “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.2).

The Panel therefore finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Under article 3.1 of the Regulations, the Complainant has to make out a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Name, upon which the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights to or legitimate interests in the Domain Name (see WIPO Overview 3.0, section 2.1).

Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name and that it is not an authorized retailer or distributor of the Complainant’s products or otherwise authorized to use the Trade Marks. The Respondent has not provided evidence nor is there any indication in the record of this case that the Respondent is commonly known by the Domain Name (article 3.1(b) of the Regulations). Furthermore, in view of the fact that the Domain Name resolves to a website which purports to be from “Microsoft” while cyber security firm McAfee warns against accessing the website since it is ‘very risky’ in view of ‘malicious content’, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.

The Panel concludes that the Complainant has met the second requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

In accordance with article 3.2 of the Regulations, the Complainant has to show that the Domain Name was registered or is being used in bad faith.

Based on the information and the evidence provided by the Complainant, the Panel notes that (i) the element PATREON of which the Trade Marks consist, is incorporated in its entirety in the Domain Name, and does not appear to be a name of which the Respondent was likely to spontaneously or accidentally think; (ii) the Domain Name was registered more than one year after the Complainant registered the domain name <patreon.com> and started using the PATREON mark, while a simple Internet search, prior to registration of the Domain Name, would have informed the Respondent of such use and any rights that the Complainant may derive therefrom; (iii) the Respondent around the time of filing of the Complaint was using the Domain Name for a website which, as set out above, is categorized by cyber security firm McAfee as ‘very risky’ and containing malicious content; (iv) the Respondent has registered a number of domain names containing (well-known) third-party trade marks, signalling a pattern of bad faith conduct; and (v) the Respondent did not file a Response.

On the basis of these circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name <patreon.nl> be transferred to the Complainant.

Wolter Wefers Bettink
Panelist
Date: July 29, 2020

¹ In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under the UDRP, and therefore the WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).