WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harpeth Financial Services LLC, d/b/a Advance Financial 24/7 v. Domains by Proxy, LLC / Nirut Naehitumrong / Phensri Thadkaew

Case No. D2018-1982

1. The Parties

The Complainant is Harpeth Financial Services LLC, d/b/a Advance Financial 24/7 of Nashville, Tennessee, United States of America (“United States”), represented by Aaron & Sanders, PLLC, United States.

The Respondents are Domains by Proxy, LLC of Scottsdale, Arizona, United States / Nirut Naehitumrong of Bangkok, Thailand / Phensri Thadkaew of Bangkok, Thailand.

2. The Domain Names and Registrar

The disputed domain names <advancefinance247.com>, <af247loan.com>, and <af247offer.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 4, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 5, 2018, 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 September 12, 2018.

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 September 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2018.

The Center appointed Luca Barbero as the sole panelist in this matter on October 16, 2018. 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 provides financial services, including loans and lines of credit, through the trademarks ADVANCE FINANCIAL 24/7 and AF247.COM since at least March 2013 and April 2017, respectively. The Complainant’s services under these trademarks have been supported by direct-mail advertisement, television and radio advertising, outdoor billboards and advertisements published on the outside of public buses. The Complainant also displays the ADVANCE FINANCIAL 24/7 mark at its nearly 100 retail locations in the United States.

The Complainant is the owner of the United States trademark registration No. 5,501,507 for AF247.COM (word mark), filed on October 25, 2017, claiming first use in commerce on April 30, 2017, and registered on June 26, 2018, in International class 36 (for “financial services in the nature of check cashing, money order services, electronic funds transfer, bill payment services, providing lines of credit, providing short-term consumer loans and issuing prepaid debit and credit cards”).

The Complainant also owns the United States trademark registration No. 5,093,962 for ADVANCE FINANCIAL 24/7 (word and device), filed on October 30, 2015, claiming first use in commerce on March 30, 2014, and registered on December 6, 2016, for services in International class 36 (for “financial services in the nature of check cashing, money order services, electronic funds transfer, bill payment services, providing lines of credit, providing short-term consumer loans and issuing prepaid debit and credit cards”).

The Complainant provides online loan services on the website at the domain name <af247.com>, registered on February 1, 2008. The Complainant also owns the domain name <advancefinancial247.com>, which was registered on June 21, 2012, and is currently redirected to an internal page of the Complainant’s website at <af247.com>.

The disputed domain names <af247loan.com>, <advancefinance247.com>, and <af247offer.com> were registered on January 22, 2018, June 6, 2018 and July 25, 2018, respectively. They are pointed to websites which promote loans, providing a form that users are asked to fill in with their personal data in order to apply for the services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names <af247loan.com> and <af247offer.com> are confusingly similar to its registered trademark AF247.COM, since they reproduce the trademark in its entirety with the mere addition of the generic terms “loan” and “offer”, which are descriptive of the services offered by the Complainant.

The Complainant also states that the disputed domain name <advancefinance247.com> is nearly identical to the Complainant’s trademark ADVANCE FINANCIAL 24/7 mark, since the only difference is the use of “finance” in place of “financial”, a difference that consumers are almost certain to miss.

The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names because:

i) the Respondents have received no license from the Complainant to use the Complainant’s trademarks and are not affiliated with the Complainant in any way;

ii) the Respondents have no right to use the terms encompassed in the disputed domain names and any other term confusingly similar to the Complainant’s trademarks in connection with consumer-loan services;

iii) the Respondents were not and are not commonly known by the disputed domain names;

iv) the Respondents have never used the disputed domain names in connection with a bona fide offering of goods or services, as the Respondents have never used the disputed domain names except in a way which is likely to cause confusion with the Complainant’s trademarks and to unfairly compete with the Complainant.

The Complainant submits that the Respondents registered and are using the disputed domain names in bad faith for the following reasons:

i) it cannot be a coincidence that the Respondents, as competitors of the Complainant, decided to register and use domain names nearly identical to the Complainant’s famous trademarks for a service which is also provided by the Complainant; most likely, the Respondents registered the disputed domain names with the intent to trade on the goodwill the Complainant had built up in the trademarks AF247.COM and ADVANCE FINANCIAL 24/7 by diverting consumer traffic;

ii) there is no other reason for the Respondents to use AF247 and ADVANCE FINANCIAL 24/7 as part of the disputed domain names except to invoke the Complainant’s trademarks and to trade on the Complainant’s goodwill;

iii) the disputed domain name <advancefinance247.com> constitutes typosquatting on the Complainant’s domain name <advancefinancial247.com>;

iv) the Respondents have deliberately taken steps to hide their identity by using a proxy service and providing an incomplete mailing address in the WhoIs information. Moreover, they have provided incorrect mailing addresses and invalid phone numbers on the websites’ “Contact Us” pages;

v) The Respondents’ websites purport to connect users with lenders and present users with an application form which asks for information that would render users vulnerable to identify theft, such as users’ social security numbers, drivers’ license number, birth dates, home addresses, bank accounts information. The Complainant concludes that it cannot risk being associated with fraudulent and criminal enterprises, or even enterprises that merely appear fraudulent or criminal;

vi) the Respondents registered and used the disputed domain names in bad faith in a deliberate attempt to attract, for commercial gain, Internet users to the Respondents’ websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondents’ websites and services.

B. Respondents

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Preliminary procedural issue: consolidation of multiple Respondents

Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

As stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)”.

The Complaint in this case was originally filed against a single respondent, namely Domains by Proxy, LLC, which was indicated as registrant in the public WhoIs records of the disputed domain names.

After the Center’s Registrar’s verification, it turned out that two of the disputed domain names, <af247loan.com> and <af247offer.com>, were registered in the name of the same individual, Nirut Naehitumrong, while the disputed domain name <advancefinance247.com> was registered in the name of a prima facie different named person, Phensri Thadkaew.

Although two different persons were identified as registrants of the disputed domain names, the Complainant asserted that the disputed domain names are under common control based on the following circumstances:

i) the Respondents indicated the same telephone number and email address in the WhoIs records of the disputed domain names;

ii) the Respondents are located in the same district (Khet) of the same city in Thailand;

iii) the Respondents used the same registrar as well the same proxy service to hide their identities;

iv) the websites to which the disputed domain names resolve are nearly identical and the related purpose is to divert users from the Complainant’s website to the Respondents’ competing websites and obtain user’s personal and financial information through identical loan application forms.

The Panel finds that the elements highlighted by the Complainant and referenced above demonstrate a common control of the disputed domain names by the Respondents. Indeed, all the disputed domain names incorporate the core of the Complainant’s trademarks and have been used in connection with similar websites providing loan services which compete with the ones provided by the Complainant. Moreover, the commonalities amongst the underlying registrants’ information clearly demonstrate that the disputed domain names are actually held by the same entity or at least by a group of individuals or entities acting in concert.

In view of the above, this Panel concludes that the consolidation of the multiple domain names is appropriate in this case and is consistent with the Policy and Rules as well as with prior relevant UDRP decisions in this area (see, amongst others, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).

Therefore, the Panel will now proceed to a decision on the merits of the case.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademarks AF247.COM and ADVANCE FINANCIAL 24/7 based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain names (section 1.7 of the WIPO Overview 3.0). Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of a descriptive term does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0).

The Panel notes that the disputed domain names <af247loan.com> and <af247offer.com> reproduce the trademark AF247.COM in its entirety with the addition of the descriptive terms “loan” and “offer”, which do not prevent a finding of confusing similarity.

The Panel further notes that the disputed domain name <advancefinance247.com> incorporates the core of the Complainant’s trademark ADVANCE FINANCIAL 24/7, and that the slight differences between the signs subject of comparison (namely the inclusion of the term “finance” instead of “financial” in the disputed domain name and the deletion of the special character “/” and of the device elements encompassed in the Complainant’s figurative mark), are insufficient to exclude confusing similarity. In addition, the Top-Level Domain “.com” can be disregarded under the first element confusing similarity test, being a standard registration requirement (section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case and that the Respondents, by not submitting a Response, have failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the records, there is no relationship between the Complainant and the Respondents and the Complainant has not authorized the Respondents to register or use its trademark or the disputed domain names. Moreover, there is no evidence that the Respondents might be commonly known by the disputed domain names.

The Panel finds that the Respondents’ use of the disputed domain names to redirect users to websites promoting purported loan services which compete with the ones of the Complainant does not amount to bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondents in bad faith.

As to bad faith at the time of registration, the Panel finds that, in view of the Complainant’s prior registration and use of the trademarks AF247 and ADVANCE FINANCIAL 24/7 in connection with the Complainant’s loan services, the Respondents were or should have been aware of the Complainant’s trademarks at the time of registration of the disputed domain names, with which they are confusingly similar.

Furthermore, the circumstance that the disputed domain names have been pointed to websites promoting identical services to the ones offered by the Complainant under the trademarks AF247 and ADVANCE FINANCIAL 24/7 and the clear reference to such trademarks on the websites to which two of the disputed domain names (<advancefinance247.com> and <af247offer.com>) resolve, demonstrate that the Respondents were indeed well aware of the Complainant and its trademarks.

The Panel also notes that, in view of the use of the disputed domain names to divert users to the websites described above, promoting loan services like the ones offered by the Complainant, the Respondents intentionally attempted to attract Internet users to their websites, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of their websites and the services provided therein, according to paragraph 4(b)(iv) of the Policy.

Moreover, the Panel finds that the Respondents’ use of a proxy service and their failure to provide their full contact details both in the Registrar’s WhoIs records of the disputed domain names and on the websites to which the disputed domain names resolve amount to further circumstances evidencing the Respondents’ bad faith.

Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <advancefinance247.com>, <af247loan.com>, and <af247offer.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: October 30, 2018