The Complainant is ORIX USA Corporation of Dallas, Texas, United States of America (“United States” or “U.S.”), represented by Jones Day, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Skylark Infotech, Skylarkinfotech Pvt. Ltd. of New Delhi, Delhi, India.
The disputed domain name <orix-cash.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2017. On December 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2017, 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 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 5, 2018, the Complainant requested the suspension of the proceeding. The Center notified the Parties of the suspension of the proceeding on January 8, 2018. The Complainant requested the reinstitution of the proceeding on February 5, 2018. The Center informed the Parties of the reinstitution of the proceeding on February 7, 2018. The Complainant filed an amended Complaint on February 7, 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 February 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2018. The Respondent sent email communications to the Center on January 3, 5 and 8, 2018. A part from several brief emails received from the Respondent, no formal Response was filed with the Center.
The Center appointed Torsten Bettinger as the sole panelist in this matter on March 9, 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.
The Complainant is a wholly-owned U.S. subsidiary of ORIX Kabushiki Kaisha (“ORIX Corporation”), a publicly owned Tokyo-based international financial services company (together referred to herein as the “ORIX Entities”).
ORIX Corporation was founded in 1964 under the name Orient Leasing Co., Ltd., and changed its name to ORIX Corporation in 1989. ORIX Corporation has used ORIX as a trade name and service mark continuously since that time. ORIX Corporation operates in 36 countries and regions worldwide.
The Complainant has provided financial services, including investment capital and asset management services, in the United States since its founding in the 1980s. In addition, the Complainant is the owner of multiple trademark registrations for ORIX including, among others, Colombian trademark ORIX with registration number 504764, registered on October 31, 2014.
The Respondent registered the disputed domain name with the Registrar on November 10, 2017. According to the evidence submitted by the Complainant, the disputed domain name resolved to a website offering cryptocurrency services.
The Complainant has submitted evidence that it is the owner of multiple trademark registrations for the mark ORIX throughout the world including in the United States.
Among others, ORIX Corporation is the owner of the United States trademark registration for ORIX, with registration number 1559228, registered on October 3, 1989.
The Complainant has also submitted evidence that it is the owner of the domain name <orix.com> and various other domain names consisting of the term ORIX, through which it disseminates content and promotes its services under the ORIX Marks. The domain name <orix.com> has been registered since November 21, 1996.
The Complainant contends that:
- the ORIX Marks are unique and belong exclusively to the ORIX Entities;
- as a result of the considerable time, effort, money, and promotion the ORIX Marks have come to serve as a unique identifier of the services emanating from the ORIX Entities;
- the ORIX Marks are extremely well-known within the financial services industry in the United States, Japan, and throughout the world.
The Complainant provided evidence that, before notice of the dispute, the disputed domain name was resolving to a website for an alleged cryptocurrency company named “Orix-Cash Coin”.
The Complainant contends that the website to which the disputed domain name resolve appeared to operate as a phishing scheme to collect and exploit consumers’ personal information and login credentials.
With regard to the requirement of “identity or confusing similarity between the trademark and the domain name” pursuant to Paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights as the disputed domain name incorporates the Complainant’s ORIX trademark in its entirety and only differs from the Complainant’s trademarks by the addition of the descriptive term “cash”.
The Complainant argues that the addition of the term “cash” does not serve to distinguish the disputed domain name in any material way but actually reinforces the confusing similarity with the Complainant’s trademark as the term “cash” is descriptive of the Complainant’s financial services.
The Complainant further argues that it is generally accepted that the addition of a generic Top-Level Domain (“gTLD”) such as “.com” is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- the Complainant has not licensed or otherwise permitted the Respondent to use its ORIX Mark, or to apply for or use any domain name incorporating the mark;
- the Respondent cannot assert that, prior to having notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with Paragraph 4 (c)(i) of the Policy, as the disputed domain name <orix-cash.com> was used to trade off of the renown of ORIX Marks in the financial services industry and to misleadingly divert consumers to its related cryptocurrency services for commercial gain;
- the website to which the disputed domain name resolves appears to be part of a phishing scheme and that the operation of a phishing website is an illegitimate, commercial, unfair use of the disputed domain name;
- the Respondent cannot claim that he is commonly known by the Complainant’s trademarks, in accordance with Paragraph 4 (c)(ii) of the Policy.
- the Respondent cannot assert that he has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, pursuant to Paragraph 4(c)(iii) of the Policy;
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that,
- the Respondent clearly knew or should have known of the well-known, fanciful ORIX Marks at the time it registered and used the disputed domain name;
- the Respondent has demonstrated bad faith by intentionally attempting to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the ORIX Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services on the website associated with the disputed domain name;
- the prominent use of the ORIX Marks in combination with the offering of cryptocurrency services, which are related to the ORIX Entities’ investment capital and asset management services, is an attempt to freeride on the goodwill associated with the ORIX trademark;
- the Respondent appears to be engaged in an unauthorized phishing scheme that is designed to gain access to the login credentials and/or personal information of consumers through the website associated with the disputed domain name;
- the Respondent failed to respond to communications from the Complainant.
The Respondent did not reply to the Complainant’s contentions in its email communications.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (<guiness.com>); Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 (<ansellcondoms.com>); Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 (<dixons-online.net> and <dixons-online.org>); AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 (<attinternet.com> and <attuniversal.com>); BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480 (<kool.com>); see also section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain name only differs from the Complainant’s trademarks by the addition of the descriptive term “cash”. The addition of merely descriptive wording to a trademark in a domain name is insufficient to distinguish a domain name from a complainant’s trademark and in itself to avoid a finding of confusing similarity under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA, WIPO Case No. D2015-0547 (<bestfacebookstatus.com> et al.) (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, “account”, “password”, “hacker”, “analytics”, “survey” et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire, WIPO Case No. D2016-1194 (<dropbox-support.com> et al.) (“The domain name <dropbox-support-number.com> consists of the Complainant’s registered mark DROPBOX plus the generic words “support” and “number” separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant’s DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.8 of WIPO Overview 3.0).
Finally, it has been long established in decisions under the Policy that gTLD designations such as “.com” are typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons the Panel concludes that the disputed domain name <orix-cash.com> is confusingly similar to the Complainant’s trademark ORIX in which the Complainant has exclusive rights.
Pursuant to Paragraph 4(c) of the Policy the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or 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 (Paragraph 4(c)(i) of the Policy); or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights (Paragraph 4(c)(ii) of the Policy); or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” (Paragraph 4(c)(iii) of the Policy).
The Complainant has asserted that it never licensed or permitted the Respondent to use its ORIX trademark, that the Respondent has no trademark rights that correspond to the disputed domain name and that the Respondent has not been commonly known by the disputed domain name.
Furthermore, the Complainant has provided screen captures of the Respondent’s website that show that before notice of the dispute the disputed domain name was used for the offering of cryptocurrency services, which may be deemed by Internet users to be related to the ORIX Entities’ investment capital and asset management services and the Respondent’s website seem to be engaged in an unauthorized phishing scheme that is designed to gain access to the login credentials and/or personal information of consumers through the website associated with the disputed domain name. The Respondent has not disputed the Complainant’s allegations.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See (WIPO Overview 3.0, section 2.1).
The Respondent has elected not to respond to the Complainant’s allegations and has not provided any evidence that, before notice of this dispute, it has made use or prepared to use the domain name in connection with a bona fide offering of goods or services, or raised any other basis on which it might have rights or legitimate interests in the disputed domain name.
The Panel therefore concludes that the Complainant has also satisfied the second element of the Policy set forth by paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Based on the record in this proceeding, the Panel is satisfied that the Complainant’s ORIX mark is distinctive and well-known.
Given the Complainant’s renown and goodwill, it is inconceivable that the Respondent, did not have knowledge of the Complainant’s ORIX trademark at the time of registration of the disputed domain name.
As the disputed domain name reproduces the mark in its entirety with the mere addition of the term “cash” which is clearly related to the Complainant’s financial services, the Respondent, on the balance of probabilities, has registered the disputed domain name with the purpose of deliberately causing confusion amongst Internet users in order to take unfair advantage of the Complainant’s goodwill and reputation.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
Further, paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith use.
The Respondent provided evidence that the disputed domain name was used for a website which appears to offer cryptocurrency services which can be limited with financial services for which the Complainant’s famous trademark ORIX is protected. The use of the disputed domain name by the Respondent therefore invariably creates a false association with the Complainant that results in misleading diversion and taking unfair advantage of the Complainant’s rights. This is a strong indication that the Respondent registered and used the disputed domain name with the intent of appearing associated or affiliated with the Complainant and to trade off the value of the Complainant’s trademark.
Based on the evidence presented to the Panel, it appears also likely that the Respondent used the website to which the disputed domain name resolves to operate a phishing scheme to collect and exploit consumers’ personal information and login credentials. The Respondent has not disputed the Complainant’s allegations.
The Panel therefore concludes that the Complainant has also satisfied its burden on 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 disputed domain name, <orix-cash.com> be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: March, 23, 2018