Greenlight Financial Technology, Inc. v Stanley Boigon, Medalllist

WIPO Case No. D2024-4892

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Greenlight Financial Technology, Inc. v. Stanley Boigon, Medalllist
Contruction Inc.

Case No. D2024-4892

1. The Parties

The Complainant is Greenlight Financial Technology, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough LLP, United States.

The Respondent is Stanley Boigon, Medalllist Contruction Inc., Canada.

2. The Domain Name and Registrar

The disputed domain name <greenlightchime.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2024. On November 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Domains By Proxy, LLC) and contact information in the Complaint.

The Center sent an email communication to the Complainant on November 29, 2024, 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 December 2, 2024.

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 December 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2024. The Response was filed with the Center on December 26, 2024.

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The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 8, 2025. 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

According to the Complaint, the Complainant is a Delaware, United States, corporation which was founded in 2014. It is a financial technology company which has built its business around a smart debit card and mobile application branded as “Greenlight” that is marketed to families for the purpose of allowing parents to

manage their children’s spending and saving. According to an article in a publication named “Bankingdive” smartwatches. The Complainant was reported to have 6.5 million parent and child users, and about 400 employees. The Complainant’s official website uses the domain name <greenlightcard.com>, since at least February 11, 2017, to advertise and market the Complainant’s products and services (historic screenshot evidence provided).

dated August 28, 2024, the Complainant had at that date about 75 business partners including JPMorgan
The Complainant is the owner of United States Registered Trademark Number 5106237 for the word mark
GREENLIGHT, registered on December 20, 2016 in Class 36. It is also the owner of United States
Registered Trademark Number 5106660 for the word mark GREENLIGHT, registered on December 20,
2016 in Class 9. In the location where the Respondent is based, the Complainant owns Canadian
Registered Trademark Number TMA1084040 for the word mark GREENLIGHT, registered on October 8,
2020 in Classes 9, 36, and 42.

The Complainant provides evidence indicating that Chime Financial Inc., known as “Chime”, is a financial technology company, based in San Francisco, United States, that provides fee-free mobile banking services, which would be considered to be one of the Complainant’s competitors.

The disputed domain name was registered on August 27, 2024. The website associated with the disputed domain name is a page stating, “Launching soon,” and inviting email subscriptions for updates. The page also states that it is powered by the Registrar and contains a copyright notice “Copyright © 2024 Green Light

Chime – All Rights Reserved.” The Complainant notes that it attempted to contact the Respondent via the
Registrar’s portal but did not receive a response.

The Respondent is a person or entity with an address in Toronto, Canada. The Respondent states (but does not evidence) that the disputed domain name is a marketing tool for its product, allegedly “a device or software (not an application)” currently in development, that will trigger a chime sound in a vehicle when it senses a typical North American traffic light at an intersection changing from red to green.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name contains the Complainant’s addition of the latter being insufficient in itself to avoid a finding of confusing similarity under the Policy.

The Complainant asserts that the Respondent is not commonly known by the disputed domain name including by way of pertinent WhoIs information, adding that the Complainant has not authorized the

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Respondent to use its mark, nor is the Respondent a licensee thereof, nor (the Complainant suspects) has the owner of the CHIME mark authorized its use in the disputed domain name. The Complainant contends that the incorporation of the GREENLIGHT mark in the disputed domain name inherently carries a high risk of implied affiliation, noting also that the Respondent has neither made a bona fide use of the disputed

domain name, nor has it engaged in demonstrable preparations to use it in connection with a bona fide and does not, have any rights or legitimate interests in the disputed domain name.

offering of goods or services, adding that passive holding of a domain name incorporating a third party’s well-
known mark does not normally amount to a bona fide use. The Complainant asserts that the combination of
its mark in the disputed domain name with that of a third party competitor is implicit proof of the

The Complainant asserts that its GREENLIGHT mark is highly distinctive and wholly incorporated in the plausible justification for its registration, this being evidence of registration in bad faith. The Complainant asserts that the Respondent knew or should have known of the Complainant’s prior rights, that are widely known in its sector, yet still proceeded to register the disputed domain name, adding that a simple Google search for the term “greenlight” would have informed the Respondent of the Complainant’s trademark (evidence provided of such search with the Complainant in the top position).
disputed domain name together with a competitor’s mark, meaning that the Panel may infer the

The Complainant notes that the disputed domain name is passively held and asserts that the Complainant has been using the GREENLIGHT mark for eight years, since adopting it in 2016, that the Respondent has constructive notice thereof, if not actual notice, and that a simple Google search would have provided the

Respondent with such notice, adding that the Respondent failed to take the opportunity to respond to the

Complainant’s attempts to communicate.

B. Respondent

The Respondent contends that the Complainant has not satisfied the elements required under the Policy for a transfer of the disputed domain name.

The Respondent asserts that it did not register the disputed domain name to sell it to the Complainant or to a
competitor, such as Chime Financial, Inc. The Respondent undertakes not to sell or transfer the disputed
domain name to the latter, nor to allow the latter to use it. The Respondent submits that the disputed domain
name was registered as a marketing tool for its product that is still in development, adding that said product
is expected to come to the market in 2025 to 2026, and is a device or software that will trigger a chime sound

in a vehicle when a traffic light changes from red to green.

The Respondent argues that the Complainant’s downloadable mobile application could not be confused by
the public with the device on which the Respondent is working. The Respondent asserts that it is the
Complainant’s obligation to prove its case regarding the lack of bona fide use of the disputed domain name,
adding that the disputed domain name was registered on August 25, 2024, and that research has since
commenced into the production and launch of the device or software with plans to offer the product within a
reasonable period. The Respondent undertakes to create a more clearly defined informational website

within 60 days of the Decision, if the Panel orders the disputed domain name to remain with the Respondent.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

Although the addition of other terms, here, “chime,” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

WIPO Overview 3.0, section 1.12.

To the extent that the additional term may represent a third party trademark, as contended by the under the first element.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name on the basis of its submissions and evidence that the Respondent is not commonly known by the disputed domain name, has received no authority or license from the Complainant to use its mark, has not made a bona fide use of the disputed domain name, nor engaged in demonstrable preparations therefor, and that passive holding of a domain name, such as the disputed domain name, does not normally amount to bona fide use.

The Panel therefore turns to the Respondent’s case in rebuttal. The Response consists exclusively of unevidenced assertions regarding the alleged development of a product or software designed to chime in a vehicle when a traffic light turns green. It is possible, albeit somewhat implausible, that the Respondent might have plans to develop such a product or software and that the disputed domain name is intended to feature a descriptive term referring to the nature and function of the system. In that sense, the Panel can see that a “green light chime” would be a chime, or cabin alert tone for a vehicle, similar to the alert tones or chimes on an aircraft, that would signal a light turning to green. If such a product were offered for sale by way of the disputed domain name, this might conceivably constitute a bona fide offering of goods under a relevant descriptive name.

However, for the Respondent to establish rights and legitimate interests on the basis of such an assertion in terms of the Policy, it must bring its case within the ambit of paragraph 4(c)(i) of the Policy, namely that the Panel’s evaluation of all evidence presented must lead to a finding that before any notice to the Respondent of the dispute, the Respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods or services. The

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problem for the Respondent’s case is that it has evidently not used the disputed domain name for such alleged purpose (there having been no active website) and crucially, the Respondent has produced no evidence of demonstrable preparations to use it for this purpose. The Panel considers that the word

“demonstrable” in this context means something that is capable of being demonstrated or proved, and is

clearly evident or obvious from the evidence provided.

WIPO Overview 3.0, section 2.2, provides non-exhaustive examples in items (i) to (v) inclusive of the kinds of
demonstrable preparations that might serve this purpose, such as proof of a genuine, not pretextual,
business plan. The section goes on to note that, in general, clear contemporaneous evidence of bona fide
pre-complaint preparations is required. Here, the Panel has been provided with nothing to go on, whether
according to the listed examples or otherwise. The section further adds that, acknowledging that business
plans and operations can take time to develop, panels have not necessarily required evidence of such use or
intended use to be available immediately after registration of a domain name, but the passage of time may
be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual.

In the present case, the disputed domain name was registered in August 2024 while the Response was filed in December 2024. Given the passage of some four months, therefore, it is notable that the Respondent provided absolutely no evidence whatsoever of its preparations to use the disputed domain name in connection with the stated purpose. For example, the Respondent references “research” but does not specify or attempt to demonstrate what research it has undertaken in the four months since the disputed domain name was registered, and the extent or outcome of this. There is no information as to the nature or specifications of the proposed product, noting that the Respondent has apparently not reached any conclusion as to whether it is a device, or software, or both, there is nothing mentioned regarding Respondent’s background in making or marketing such inventions, nor is there anything else that would support the alleged bona fide and non-pretextual use of the disputed domain name.

In all of these circumstances, the Panel has reached the view that the Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or

otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that the Respondent has alleged, but not evidenced, that the disputed domain name was intended for the promotion of a “green light chime”, being a device or software to alert a vehicle user of a change in traffic lights. The problem for the Respondent’s case is that that it has produced

absolutely no evidence in support of the alleged meaning of the disputed domain name, while on the other
side of the balance, the Complainant has established on the present record that it has made very substantial
use of the GREENLIGHT mark, which is also registered where the Respondent is based, and also that there
is considerable significance arising from the presence of the additional word “chime” which represents the
name of one of its competitors. The Panel considers therefore that it is reasonable on the evidence before it
to infer that the Respondent is likely to have been aware of the Complainant’s rights in its mark, and that the
presence of the competitor’s name lends further support to the notion that the Respondent may have
intended to target such mark. In other words, the composition of the disputed domain name seems to be
more than a coincidence.

The alternative explanation put forward by the Respondent, while potentially plausible, is exclusively the subject of assertion, and entirely devoid of any supporting evidence. This absence of any additional background information or other concrete credible evidence of the alleged intended use speaks volumes to

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the Panel, and strongly suggests that the proposed use for a “green [traffic] light chime” has something of the
flavor of being pretextual and reverse-engineered to fit the composition of the disputed domain name after
the Respondent was challenged about it.

Even considering such asserted intended use on its own, in the absence of anything more substantial, the Panel asks itself why the Respondent would not know, some four months following the registration of the disputed domain name, whether its proposed product was a device, or software, or both? Why would the Respondent not put forward anything as to the nature and extent of its alleged research? Why would the Respondent not set out its engineering or product development qualifications, if any, and any background it might have in construction and use of vehicles, or in inventing products for vehicular use? Turning to the composition of the disputed domain name, on its own, why would the Respondent’s alleged product, device or software, focus on a “green light”. Why not “traffic light” in general, or even “green traffic light”, assuming that the alleged device will not warn of red lights, perhaps a more obvious application for the alleged software/device in question? The Panel does not know the answer to any of these questions, and considers that the Response raises many more questions than it answers. Given that the Respondent was firmly placed on notice by the Complainant’s case that it would need to come up with plausible evidence to explain its registration of the disputed domain name, the Panel would have expected at least some or all of these questions to have been addressed in the Response.

The absence of suitable evidence supporting the Respondent’s alleged intended use of the disputed domain name leads the Panel to a conclusion that the composition of the disputed domain name is too much of a coincidence for it not to have been registered and used with the Complainant’s rights in mind, and with intent to target these for some form of unfair commercial advantage. The Panel understands the Respondent’s perspective as outlined in the Response, but, as discussed above, it is critical in light of the facts and circumstances put forward by the Complainant that the Respondent bring forward convincing evidence of a credible good faith intent rather than an apparently reverse-engineered and seemingly pretextual explanation, and in the present case, it cannot do this on the basis of assertion alone.

The Panel finds that the Complainant has established the third element 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 <greenlightchime.com> be transferred to the Complainant.

The transfer of the disputed domain name is ordered without prejudice to any rights of the third party Chime

Financial Inc. in the disputed domain name. WIPO Overview 3.0, section 4.13.

/Andrew D. S. Lothian/
Andrew D. S. Lothian
Sole Panelist
Date: January 20, 2025