GRANTIFY LTD v David Imoru, sticky animations

WIPO Case No. D2023-1427

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GRANTIFY LTD v. David Imoru, sticky animations

Case No. D2023-1427

1. The Parties

The Complainant is GRANTIFY LTD, United Kingdom, represented by Shakespeare Martineau LLP., United

Kingdom.

The Respondent is David Imoru, sticky animations, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <grantifyfunding.com> is registered with The Registry at Info Avenue, LLC d/b/a

Spirit Telecom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2023. On April 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. After several reminders, on April 25, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2023.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 6, 2023. 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.

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4. Factual Background

The Complainant is a private limited company registered in England and Wales, and headquartered in London. It has carried on business under the GRANTIFY name since October 2019, assisting startup companies to acquire government grant funding in the United Kingdom and recently in the United States of

America (“US”).

The Complainant owns the following trademark registrations:

United Kingdom Trademark GRANTIFY LTD No. UK00003564144, registered June 25, 2021; and are for services in class 36.

The Complainant also owns a GRANTIFY-formative domain name, namely <grantify.io>.

The Complainant has an online presence on high-traffic platforms such as Google, LinkedIn, Facebook, and
Instagram.

The disputed domain name was registered on December 29, 2022. Prior to the filing of the Complaint, the disputed domain name resolved to an active website purportedly offering free grant monies, purportedly provided by the US Government. Currently, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is the owner of established rights in the trademark GRANTIFY based on use
and registration in the United Kingdom where it carries on business. The disputed domain name is
confusingly similar to the Complainant’s registered trademark, as it is virtually identical except for the
addition of the descriptive word “funding” which does not diminish the likelihood of confusion.

With respect to the absence of rights or legitimate interests, the Complainant submits that the Respondent has engaged in a scheme to deceive users who access its website, which has been designed to prominently feature the Complainant’s trademark in the same field of business occupied by the Complainant. The Complainant asserts that the Respondent has never been authorized to engage in this conduct or to adopt a confusingly similar domain name. It further submits that the Respondent is not making a bona fide offering of funding services but rather is using the disputed domain name to divert unknowing users who are deceived by fraudulent content on its associated website. The Complainant submits that it has put forward viable evidence of the absence of rights or legitimate interests.

With respect to bad faith, the Complainant relies on evidence of the Respondent’s scheme and its website, to establish targeted and abusive registration and use of the disputed domain name. Based on this misconduct, and on the absence of any explanation or response from the Respondent, the Complainant submits that there is sufficient evidence to support a finding of bad faith.

B. Respondent

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

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6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

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

(ii)       The Respondent has no rights or legitimate interest in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant clearly holds relevant ownership rights in the trademark GRANTIFY, as demonstrated by
the registered trademarks enumerated in Section 4, which were registered as early as 2021, before

Respondent took any steps to acquire and use the disputed domain name.

The test for confusing similarity is described as a “reasoned but relatively straightforward comparison
between the complainant’s trademark and the disputed domain name” in WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered
trademarks. The disputed domain name includes the entirety of the GRANTIFY mark with the addition of the
term “funding”. This variation does not prevent a finding of confusing similarity under the first element. The
Complainant’s GRANTIFY trademark is clearly recognizable within the disputed domain name (WIPO

Overview 3.0, section 1.8).

The Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Although the Policy places on the Complainant the burden of proof to establish the absence of rights or legitimate interests, the practice now recognizes that it is often sufficient for a Complainant to make out a prima facie case, which then shifts the burden to the Respondent to bring forward evidence to demonstrate the relevant rights or interests. Where the Respondent fails to produce such evidence, the Complainant will be deemed to have satisfied the second element (WIPO Overview 3.0, section 2.1).

In this proceeding, the Complainant has provided uncontradicted evidence of the Respondent’s misconduct in misappropriating the Complainant’s trademark and creating an online service portal (associated with the disputed domain name) which copies graphic elements from the Complainant’s logo, including the word

mark GRANTIFY itself and the associated slogan “funding simplified”, all of which is in furtherance of what appears to be a fraudulent scheme to deceive users. The Respondent’s use of the GRANTIFY mark has been made without authorization or license, and the evidence shows there is no relationship or affiliation between the parties. The totality of the evidence establishes a prima facie case of the absence of rights or
legitimate interests on the part of the Respondent. Illegal conduct of this nature is highly probative in
connection with this issue. “Panels have categorically held that the use of a domain name for illegal activity
(e.g., […] impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on
a respondent.” (WIPO Overview 3.0, section 2.13.1.)

In the absence of any response from the Respondent, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

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C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name constitutes an abusive registration which was registered and source of funding services under the GRANTIFY brand, replicating some graphic and textual elements of the Complainant’s logo in multiple places. In particular, the Panel notes that the Respondent not only copied the distinctive coined wordmark GRANTIFY, but also copied the Complainant’s slogan “funding simplified”, and placed it under the principal mark GRANTIFY as a subtext in exactly the same way it is presented in the Complainant’s logo. This sort of deliberate copying is compelling evidence that the Respondent was fully aware of the Complaint’s rights at all material times and further that the Respondent has adopted and used the disputed domain name to target the Complainant’s business.
is being used in bad faith in order to take advantage of the significance of the Complainant’s GRANTIFY
trademark. The Respondent clearly set out to target the Complainant and to deceive users into believing

that its website, associated with the confusingly similar disputed domain name, was affiliated with the

The Complainant has also proffered tangible evidence of the fraudulent nature of the funding services guise of offering support for funding.

offered by the Respondent on its website, in particular the misleading offer of free grant money purportedly
provided by the US Government. The Respondent has copied significant sections of funding materials from
US Government websites, and has inserted this content into its website as if it is its own. It appears the
Nigerian-based Respondent has no legitimate connection to the US Government or its funding system.

WIPO Overview 3.0, section 3.2.1 lists a number of circumstances, which panels may consider in conducting a bad faith analysis, including the nature of the domain name, the content of any website associated with the disputed domain name, and the clear absence of rights or legitimate interests on the part of the Respondent. All these circumstances weigh against the Respondent in this matter, as seen in the evidence described

above. The Panel finds that the Respondent has intentionally attempted to attract for commercial gain to the source, sponsorship, affiliation or endorsement of the website and funding services and products offered on it, under paragraph 4(b)(iv) of the Policy. The fact that currently the disputed domain name does not resolve to an active website does not prevent a finding of bad faith.

The Complainant has satisfied 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 name, <grantifyfunding.com> be transferred to the Complainant.

/Christopher J. Pibus/
Christopher J. Pibus
Sole Panelist
Date: June 20, 2023