VeriFone Inc. v. Whois Protection Service LLC
Claim Number: FA0809001225808
Complainant is VeriFone Inc. (“Complainant”), represented by Michael R. Scott, of Nixon Peabody LLP, Massachusetts, USA. Respondent is Whois Protection Service LLC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <veriphone.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 23, 2008.
On September 25, 2008, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <veriphone.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October
2, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 22, 2008
by which Respondent could file a
response to the Complaint, was transmitted to Respondent via e-mail, post and
fax, to all entities and persons listed on Respondent's registration as
technical, administrative and billing contacts, and to postmaster@veriphone.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <veriphone.com> domain name is confusingly similar to Complainant’s VERIFONE mark.
2. Respondent does not have any rights or legitimate interests in the <veriphone.com> domain name.
3. Respondent registered and used the <veriphone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VeriFone, Inc. holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VERIFONE mark (e.g. Reg. No. 1,729,013 issued November 3, 1992) and since 1991 has had the registered domain name <verifone.com>. Both trademark registrations and the domain name are used in connection with goods and services provided by VeriFone, including computer programs for transactional processes, financial applications, and credit card and transaction processing terminals.
Respondent registered the <veriphone.com> domain name on July 28, 1996. Respondent is using the disputed domain name as a landing page offering pay-per-click links to Complainants’ competitors. Many of these links carry the same names as products from VeriFone (e.g. “Nurit”).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the VERIFONE mark
under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Miller Brewing Co. v. Miller Family,
FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the
complainant had established rights to the MILLER TIME mark through its federal
trademark registrations); see also Metro.
Life Ins. Co. v. Bonds, FA 873143
(Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration
adequately demonstrates a complainant’s rights in a mark under Policy ¶
4(a)(i)).
Respondent’s <veriphone.com> domain name is confusingly similar to Complainant’s VERIFONE mark because the Respondent’s domain name incorporates the dominant features of Complainant’s mark, replaces the “f” with the phonetically identical “ph,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds these minor alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Elder Mfg. Co., Inc. v. Recker, FA 98414 (Nat. Arb. Forum Sept. 10, 2001) (“In the matter at bar it is beyond refute that Respondent’s domain names are virtually identical, and thus confusingly similar to Elder’s trademarks. Any superficial differences between the domain names and the Elder trademarks are de minimis and of no legal consequence”); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <veriphone.com> domain name. Once Complainant makes a prima facie case in support of its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Respondent is using the <veriphone.com> domain name to lure Internet users to its commercial website that features links to products that compete with Complainant’s products. Respondent’s use of a domain name that is confusingly similar to Complainant’s VERIFONE mark to redirect Internet users interested in Complainant’s products to a website that offers links to similar products in competition with Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Respondent could establish rights or legitimate interests under Policy ¶ 4(c)(ii), if it has been commonly known by that domain name, even without a registered trademark. See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names). However, Respondent in this case is not commonly known by the domain name <veriphone.com>. The WHOIS information includes the owner of the domain name (“Whois Protection”) as well as the organization (“Whois Protection Service LLC), neither of which contains the disputed domain name. Due to the WHOIS registry and Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The disputed domain name is a typosquatted version of Complainant’s VERIFONE mark, which changes the “f” to the phonetically identical “ph” in the Complainant’s mark. The Panel finds that Respondent’s exploitation of Internet user’s mistakenly entered data does not constitute a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Nat'l Ass'n of Prof'l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site."); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (WIPO Sept. 19, 2003) (finding that Respondent lacked rights and legitimate interests in the disputed domain names because it "engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter 'x' instead of the letter 'c.'"); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com> and <ltdcommodaties.com> disputed domain names were typosquatted versions of Complainant's LTD COMMODITIES mark and "Respondent's 'typosquatting' is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent, by registering a domain name that is
phonetically identical to VeriFone, Inc.’s mark, save for replacing the “f”
with “ph,” has engaged in a practice known as typosquatting. This practice in and of itself is evidence of
bad faith under Policy ¶ 4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO
Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with
[the] intent to intercept and siphon off traffic from its intended destination,
by preying on Internauts who make common typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also K.R.
USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration
and use of the <philadelphiaenquirer.com> and
<tallahassedemocrat.com> domain names capitalized on the typographical
error of Internet users seeking the complainant's THE PHILADELPHIA
INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith
pursuant to Policy ¶ 4(a)(iii))..
Respondent has attempted to disrupt Complainant’s business relying on Internet user errors, knowing that users will then be directed to its website containing links to competitors. Under Policy ¶ 4(b)(iii), Respondent’s registration and use of the disputed domain name constitutes bad faith. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’s use of the disputed domain name is likely to cause confusion as to Complainant’s sponsorship of or affiliation with the disputed domain name. Respondent’s attempt to capitalize on this confusion through operation of a pay-per-click site is evidence of bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine… Respondent … has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark … as proscribed in Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <veriphone.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 10, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum