WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Affirm, Inc. v. Affirm Loan Services LLC / Brooks M Wilson, SoftImpress Inc.

Case No. D2018-1607

1. The Parties

Complainant is Affirm, Inc. of San Francisco, California, United States of America, represented by Staniford Tomita LLP, United States of America.

Respondent is Affirm Loan Services LLC of San Francisco, California, United States of America / Brooks M Wilson, SoftImpress Inc. of Austin, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <affirmloanservicesllc.com> is registered with 1API GmbH (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 16, 2018. On July 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2018, 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 Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same date.

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 Respondent of the Complaint, and the proceedings commenced on July 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 14, 2018.

The Center appointed Frederick Abbott as the sole panelist in this matter on August 20, 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

Complainant is the owner of registration of the word trademark and service mark (hereinafter "trademark") AFFIRM on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4,676,273, registration dated January 20, 2015, in international classes 9 and 36, covering computer software for transaction and credit authorization, and computerized financial transaction authorization, as further specified.

Complainant, inter alia, operates and promotes a payment and lending service that allows users to purchase products from merchants and secure loans through online transactions. Complainant operates a commercial website at "www.affirm.com".¹

According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration was created by Respondent on January 23, 2018.

Respondent has used the disputed domain name to direct Internet users to a website that offers to provide loans to applicants, with the principal banner "Affirm Loans", and with "Services LLC" in smaller font. The homepage of Respondent's website states, for example:

"Affirm Loan Services LLC is an award winning financier and our team can take care of your finance requirements. We have been operating for over 15 years and have helped 10000s of customers just like you.

We are experienced in dealing with both personal and business customers and we make solving your finance needs easy, whether the asset you are purchasing is for business or please."²

Respondent's website used (and continues to use) Complainant's physical address in San Francisco, California for its contact information. According to Complainant, Respondent has failed to respond to any communications addressed to its listed email or telephone number. The hard copy Written Notice of the Complaint transmitted by the Center to the physical address in Austin, Texas included in the registration information of Respondent Wilson was returned as undeliverable.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties' Contentions

A. Complainant

Complainant alleges that it owns rights in the trademark AFFIRM, and that the disputed domain name incorporates that trademark. Complainant contends that Respondent is offering services similar to those listed in its trademark registration.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not appear to be operating a legitimate business at its website; (2) there is no evidence of Respondent's use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (3) Respondent has not been commonly known by the disputed domain name, and; (4) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) 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 Complainant's trademark as to the source of Respondent's website, business location and services, and (2) Respondent is infringing Complainant's trademark in violation of its responsibilities pursuant to its registration agreement.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. It appears that express courier physical delivery could not be completed because of false and/or incomplete address information provided by Respondent. There is no indication in the record of this proceeding of difficulties in transmitting email to the addresses provided by Respondent, although there is no express record of receipt. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of rights in the trademark AFFIRM, including by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant's assertion of rights. The Panel determines that Complainant has established rights in the trademark AFFIRM.

The disputed domain name directly incorporates Complainant's trademark and adds the term "loanservicesllc". Complainant is specifically in the business of providing loan services, and Internet users are likely to assume that the disputed domain name combining Complainant's AFFIRM trademark with terms expressly referring to the services provided by Complainant is associated with Complainant. The Panel determines that the disputed domain name is confusingly similar to Complainant's trademark.

The Panel determines that Complainant has established rights in the trademark AFFIRM, and that the disputed domain name is confusingly similar to that trademark.

B. Rights or Legitimate Interests

Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent has not replied to the Complaint, and has not attempted to rebut Complainant's prima facie showing of lack of rights or legitimate interests.

Respondent's use of the disputed domain name in connection with a website offering services similar or identical to those offered by Complainant along with Complainant's physical address suggests a deliberate attempt to mislead Internet users. Such use by Respondent does not constitute a bona fide offering of goods or services within the meaning of the Policy, and it does not establish rights or legitimate interests.

Respondent's use of the disputed domain name does not otherwise manifest rights or legitimate interests.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name "has been registered and is being used in bad faith" (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that "for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith". These include that, "(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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".

Respondent is using the disputed domain name which is confusingly similar to Complainant's trademark to direct Internet users to a website appearing to offer services similar or identical to those provided by Complainant under its trademark. Respondent's use of Complainant's physical address in connection with that website creates an inference of an attempt to take unfair advantage of Internet users for commercial gain. The Panel determines that Respondent registered and is using the disputed domain name in bad faith by intentionally attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.

The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel will direct the Registrar to cancel the disputed domain name.

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 name, <affirmloanservicesllc.com>, be cancelled.

Frederick M. Abbott
Sole Panelist
Date: September 3, 2018

¹ Panel visit of September 3, 2018.

² Panel visit of September 3, 2018.