A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns the LENDING CLUB trademark.
The differences between the disputed domain name and the Complainant’s LENDING CLUB trademark are the addition of a descriptive term “bank” and the gTLD “.com”, which in the Panel’s view does not avoid confusing similarity with the Complainant’s trademark.
It is established that where a trademark is recognizable within the disputed domain name, the addition of a descriptive term would not prevent a finding of confusing similarity under the first element. (See WIPO Overview 3.0, section 1.8). It is further established that gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. (See WIPO Overview 3.0, section 1.11). The addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc. WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v Tina Smith, WIPO Case No. 2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the LENDING CLUB mark and the element under paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or interests in respect of the domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, section 2.1).
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant submitted evidence that it did not authorize or license the Respondent to use the LENDING CLUB mark (see OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). The Complainant also submitted evidence that its registrations and use of the trademarks predate the registration of the disputed domain name by at least 13 years and that the disputed domain name was registered just 9 days after LendingClub’s press release that it would be doing business as the Complainant.
In addition, the evidence submitted by the Complainant shows that the Respondent is not commonly known by the disputed domain name.
The Panel also notes that in the present case, the addition of the term “bank” is within the Complainant’s field of commerce or indicating services related to the brand, as the Complainant is a financial institution offering financial services, which may trigger an inference of affiliation with the Complainant even though the Respondent is in no way affiliated with the Complainant (see WIPO Overview 3.0, section 2.5.1). Further, in the circumstances of the present case, the Respondent’s use of the disputed domain name to offer the domain name for sale appears to be for the Respondent’s own commercial gain which does not constitute fair use of the disputed domain name (see WIPO Overview 3.0, section 2.5.2).
The Respondent did not submit a response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is sufficient to rebut the Complainant’s prima facie case.
The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain name and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
In this case, the evidence shows that the Complainant’s mark has attained such goodwill and reputation such that the Respondent is unlikely to have registered the disputed domain name without sight and knowledge of the Complainant’s mark and it is implausible that there is any good faith use to which the disputed domain name may be put to. It is also the Complainant’s evidence that the Respondent could not have registered the disputed domain name without prior knowledge of the Complainant’s mark as the Respondent’s name has no connection with the Complainant’s LENDING CLUB mark which was registered long ago. This is another indicator of bad faith on the part of the Respondent (see Boursorama SA v. Estrade Nicolas, WIPO Case No. D2017-1463).
The Panel has also taken into consideration that the Respondent did not submit a Response in this proceeding and the Respondent’s antecedent track record of being a serial cybersquatter who was involved in and found against numerous UDRP decisions in recent years. Notably, at least five of these decisions related to banking institutions which indicates a pattern of cybersquatting on financial services firms.
In addition, the Complainant has submitted evidence that the disputed domain name resolved to a website offering the domain name for sale. In the circumstances of the present case, given the Respondent’s likely knowledge of the Complainant’s marks, the Complainant’s reputation and goodwill in its marks, the pattern of abusive registrations by the Respondent, the failure of the Respondent to present a credible evidence-backed rationale for registering the disputed domain name, and that the disputed domain name is confusingly similar to the Complainant’s mark, the Panel is of the view that the Respondent registered the disputed domain name primarily to sell the domain name to the Complainant (or its competitor) for valuable consideration in excess of the Respondent’s costs related to the disputed domain name (see WIPO Overview 3.0, section 3.1.1).
Based on the evidence presented to the Panel, including the confusing similarities between the disputed domain name and the Complainant’s mark and the fact that the disputed domain name is being offered for sale, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
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