WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pershing Investments, LLC v. Jonathon Santos, Diamond Asset Holdings, Ltd + LLC
Case No. D2021-1099
1. The Parties
The Complainant is Pershing Investments, LLC, United States of America (“United States”), represented by Reed Smith LLP, United States.
The Respondent is Jonathon Santos, Diamond Asset Holdings, Ltd + LLC, Belize.1
2. The Domain Name and Registrar
The disputed domain name <netxinvester.com> is registered with EPAG Domainservices GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2021, 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 April 12, 2021 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 April 20, 2021.
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 April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2021.
On May 21, 2021, the Center sent a request by email to the Registrar for clarification regarding the Respondent’s physical address. On May 27, 2021, the Center sent a reminder request to the Registrar. On May 27, 2021, the Registrar confirmed, by email to the Center, the Respondent’s physical address. On June 1, 2021, the Center re-notified the Respondent of the Complaint, and the due date for Response was June 21, 2021. The Respondent did not submit any response.
The Center appointed Antony Gold as the sole panelist in this matter on June 30, 2021. 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’s parent company was founded in 1939 and the Complainant and its affiliates presently provide a range of products to financial services companies, such as clearing and custody services, technological solutions for the management of investment account information and trading services.
Since, at least, early 2000, a number of the Complainant’s services have been provided under the brand NETX and the Complainant owns over 30 trade mark registrations in 24 different countries, and more than 50 domain names, which comprise or include the word NETX. The Complainant’s trade marks include, by way of example only, United States Service Mark, registration number 4,627,959 for NETXINVESTOR in class 36, registered on October 28, 2014. The Complainant’s domain names include <netxinvestor.com>. The Complainant has established various subdomains for <netxinvestor.com> and these each resolve to personalized customer login pages for users of its NETXINVESTOR-branded services.
The disputed domain name was registered on May 19, 2008. As at April 6, 2021, it resolved to a directory page containing a series of pay-per-click (“PPC”) links to a variety of good and services, including, in a section of the webpage headed “Finance”, links for “Debt”, “Credit Card”, “Mortgage Loans”, and “Insurance”.
The Respondent has also created a large number of subdomains for the disputed domain name which, save for the difference in the spelling of the parties’ respective domain names, replicate those created by the Complainant in respect of <netxinvestor.com>.
5. Parties’ Contentions
A. Complainant
The Complainant says that the disputed domain name is confusingly similar to its family of NETX trade marks including, in particular, its service mark for NETXINVESTOR, full details of this mark having been set out above. The only difference between the disputed domain name and the Complainant’s NETXINVESTOR service mark is the substitution of a single letter in the word “investor”. It is also visually and phonetically similar to the Complainant’s various NETX domain names, particularly <netxinvestor.com>. The deliberate introduction of a typographical error does not render the disputed domain name less confusingly similar to the Complainant’s service mark. A consumer encountering the disputed domain name is likely to be confused into believing that there is an affiliation or association between the Respondent and the Complainant when, in fact, no such relationship exists.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. He is not referred to or commonly known by the disputed domain name and has no legal relationship with the Complainant or its affiliates. Nor does the Respondent have any identifiable history of using the disputed domain name in connection with a bona fide offering of goods or services. Rather, it seems to have registered the disputed domain name for the purpose of profiting from the goodwill and reputation of the Complainant in its NETX family of marks, by redirecting Internet traffic to a parked page containing PPC links. This activity is insufficient to establish rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its NETX marks or to apply for any domain names which incorporate or are similar to them. As the disputed domain name is a misspelling of the Complainant’s trade mark, use of it by the Respondent cannot be considered use in connection with a bona fide offering of goods or services, nor a non-commercial or fair use of it. See, by way of example; Associated Banc-Corp v. Paulo, WIPO Case No. D2010-1285.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. Given the fame and widespread use of the Complainant’s NETX marks, any use by the Respondent of the disputed domain name would constitute an infringement of the Complainant’s trade mark rights. The Respondent should be considered to have had actual or constructive notice of the Complainant’s marks and registration of the disputed domain name in these circumstances is necessarily in bad faith. A presumption of bad faith is also warranted due to the Respondent’s typosquatting; see TPI Holdings, Inc. v. LaPorte Holdings, WIPO Case No. D2006-0235. Moreover, bad faith should also be presumed because there are over 330 domain names which are associated with the Respondent’s email address. Many of these, such as <qooglemaps.com> and <yamahaindonesia.com>, incorporate or are typosquatted variations of well-known third party marks.
In any event, the Respondent has acted in bad faith pursuant to paragraph 4(b)(iv) of the Policy by opportunistically registering and using the disputed domain name which incorporates the Complainant’s NETX marks to intentionally attract for commercial gain, Internet users to its website by creating a likelihood of confusion. The Respondent has intentionally copied the mapping and naming structure of the subdomains used by the Complainant in conjunction with its <netxinvestor.com> domain name and is trading on the goodwill that the Complainant has established in its NETX marks over the past 20 years. The Respondent is solely using the disputed domain name to divert consumers from the Complainant to a parked page that contains advertisements for, or links to, competing products and services. This clearly constitutes bad faith use; see Philip Morris USA Inc. v. ICS Inc., WIPO Case No. D2013-1306.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its many trade and service mark registrations which comprise or include the word NETX, including in particular its service mark for NETXINVESTOR. Full details of this mark have been set out above and the Complainant has thereby established its rights in this mark.
For the purpose of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s NETXINVESTOR mark, the generic Top Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name substantially replicates the Complainant’s mark with no additional content, the only difference being that, in respect of the penultimate letter of the Complainant’s mark, the disputed domain name substitutes the letter “e” for the letter “o”.
This small variation does not prevent the disputed domain name from being found confusingly similar to the Complainant’s service mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Notwithstanding the substitution of a single letter, the disputed domain name remains visually, aurally and conceptually similar to the Complainant’s NETXINVESTOR mark and it is clearly recognizable within it. The Panel therefore finds that the disputed domain name is confusingly similar to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods or services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
As explained at section 2.9 of the WIPO Overview 3.0, panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with, or capitalize upon, the reputation and goodwill of a complainant’s trade mark. Having regard to the Complainant’s activities and repute in the provision of technological solutions to companies operating in the financial services sector, some of the PPC links which have featured on the Respondent’s webpage have, at least, an indirect connection with the Complainant. But, irrespective of whether Internet users might associate those PPC links with the Complainant, the Respondent’s webpage cannot be considered to comprise a bona fide offering of goods or services because the Respondent is using, without the Complainant’s consent, the repute of its mark to attract Internet users to its webpage, and thereby derive a commercial benefit from it. See, by way of example, Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302.
The fact that the Respondent has replicated the subdomains used by the Complainant in its <netxinvestor.com> domain name is a persuasive indicator that the Respondent has, at least, considered using the disputed domain name for fraudulent activities. This provides additional confirmation that the Respondent is not using the disputed domain name for a bona fide offering of goods or services.
There is no evidence that the Respondent has been commonly known by the disputed domain name and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; the Respondent is making a commercial use of the disputed domain name and its composition is such that it carries a significant risk of implied affiliation with the Complainant, which prevents its use from being considered fair. (section 2.5.1, WIPO Overview 3.0)
Once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. (section 2.1, WIPO Overview 3.0) In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The precise extent of the Complainant’s use of its NETX brand as at the date of registration of the disputed domain name in May, 2008 is not entirely clear but it is said to have begun activities around the year 2000. Moreover, the registered trade mark from the Complainant’s family of NETX marks which pre-dates the registration of the disputed domain name is a service mark for NETXPRO, which was registered in February 2002. However, prior to the registration of the disputed domain name, the Complainant had also registered a number of NETX-related domain names, including, by way of example, <netxadvisor.com> (which the disputed domain name clearly targets), <netxclientdemo.com>, and <netxdisclosure.com>. Furthermore, the Complainant has provided archived screenshots showing its <netclient.com>, <netxclientdemo.com>, <netxinvestor.com> and other NETX-related domain names in active use prior to the date of registration of the disputed domain name. Collectively, these indicate that, for the purposes of the Policy, the Complainant had acquired trade mark rights in NETX by May 2008.
Having regard to the fact that NETX is distinctive and the fact that the Respondent has not sought to challenge the Complainant’s assertions, the Panel accepts the Complainant’s contention that the Respondent was aware of the Complainant and its family of NETX-related services as at May 2008 and that the disputed domain was registered by it in order to take unfair advantage of the Complainant’s trade mark rights. See Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500 and also Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765 in which the panel commented that; “the registration of a domain name with the knowledge of the Complainant’s trade mark registration amounts to bad faith”. The Panel accordingly finds that the disputed domain name was registered in bad faith.
Whilst the use of a domain name to point to parking pages hosting PPC sponsored links is not inherently objectionable, previous decisions under the Policy have found that such conduct can, in appropriate circumstances, constitute bad faith use. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.
The facts point to the Respondent having registered the disputed domain names in circumstances similar to those outlined in Yahoo! Inc. v. Hildegard Gruener (supra). Even though the connection between the finance-related PPC links on the Respondent’s website page and the services provided by the Complainant is not especially strong, the Respondent is nonetheless attracting Internet users to its website and deriving income from its PPC links because of the confusing similarity between the disputed domain name and the Complainant’s NETXINVESTOR mark. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. See also Philip Morris USA Inc. v. ICS Inc. (supra).
For these reasons, the Panel therefore finds that the disputed domain name was both registered and is being used in bad faith.
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 <netxinvester.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: July 13, 2021
1 The Complaint was initially filed against “Redacted for Privacy”. In response to the Registrar’s verification request, the Registrar disclosed the name and address of the entity in whose name the disputed domain name is currently registered. The amended Complaint names the underlying registrant as the Respondent.