VeriFone Inc. v. Evangelos Sopikiotis
Claim Number: FA0910001287343
Complainant is VeriFone Inc. (“Complainant”), represented by Michael
R. Scott, of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <veriphone.net>, registered with M.G. Infocom Pvt. Ltd. d/b/a Mindgenies.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 2, 2009, M.G. Infocom Pvt. Ltd. Dba Mindgenies confirmed by e-mail to the National Arbitration Forum that the <veriphone.net> domain name is registered with M.G. Infocom Pvt. Ltd. d/b/a Mindgenies and that Respondent is the current registrant of the name. M.G. Infocom Pvt. Ltd. d/b/a Mindgenies has verified that Respondent is bound by the M.G. Infocom Pvt. Ltd. d/b/a Mindgenies 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 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 2009 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.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.net> domain name is confusingly similar to Complainant’s VERIFONE mark.
2. Respondent does not have any rights or legitimate interests in the <veriphone.net> domain name.
3. Respondent registered and used the <veriphone.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VeriFone Inc., provides secure electronic
payment technologies. Complainant offers
these technologies worldwide under its VERIFONE mark. Complainant holds multiple trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
its VERIFONE mark (e.g., Reg. No.1,229,416 issued
Respondent, Evangelos Sopikiotis, registered the <veriphone.net> domain name on
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.
Previous panels have found a trademark registration with the
USPTO is sufficient to establish rights in a complainant’s mark. Complainant has registered the VERIFONE mark
with the USPTO (e.g., Reg. No.1,229,416 issued
Complainant alleges Respondent’s <veriphone.net> domain name is confusingly similar to
Complainant’s VERIFONE mark. The
disputed domain name is a phonetically identical misspelling of Complainant’s
mark. The disputed domain name misspells
Complainant’s mark by substituting the letters “ph” for the letter “f,” and
adds the generic top-level domain (“gTLD”) “.net.” The Panel finds a phonetically identical
misspelling of Complainant’s mark fails to adequately distinguish the disputed
domain name from the mark. See Hewlett-Packard Co. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <veriphone.net> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Complainant asserts that Respondent has never been authorized to use the VERIFONE mark. Respondent has failed to provide evidence that it is commonly known by the <veriphone.net> domain name. The WHOIS information lists Respondent as “Evangelos Sopikiotis.” Furthermore, the Panel fails to find evidence in the record suggesting that Respondent is commonly known by the <veriphone.net> domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests in the <veriphone.net> domain name pursuant to Policy ¶ 4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <veriphone.net> domain name resolves to a website featuring hyperlinks to third-party businesses and services, including Complainant’s competitors in the electronic payment technologies business. Respondent likely receives click-through fees from these hyperlinks. The Panel finds Respondent’s use of a disputed domain name that is confusingly similar to Complainant’s VERIFONE mark to redirect Internet users for this purpose is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses of the domain name under Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In addition, Respondent’s use of the <veriphone.net> domain name
constitutes typosquatting. The Panel
finds that Respondent’s use of the disputed domain name, a phonetically
identical misspelling of the VERIFONE mark, to redirect Internet users seeking
Complainant’s website fails to establish rights or interests pursuant to Policy
¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Previous panels have found a respondent’s use of a
confusingly similar domain name, featuring hyperlinks to Complainant’s
competitors, constitutes a disruption of a complainant’s business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes
that by redirecting Internet users seeking information on Complainant’s
educational institution to competing websites, Respondent has engaged in bad
faith registration and use pursuant to Policy ¶
4(b)(iii).”). Respondent’s <veriphone.net> domain name features third-party hyperlinks including
Complainant’s competitors in the electronic payment technologies industry.
The Panel finds Respondent’s use of the disputed domain name disrupts
Complainant’s outdoors product business and constitutes bad faith registration
and use under Policy ¶ 4(b)(iii).
The Panel infers Respondent receives click-through fees from
the third-party hyperlinks featured on the resolving website. Internet users, interested in Complainant and
Complainant’s electronic payment technologies products, may become confused as
to Complainant’s affiliation and sponsorship of the disputed domain name,
resolving website, and featured hyperlinks.
The Panel finds Respondent’s use constitutes bad faith registration and
use under Policy ¶ 4(b)(iv). See
Furthermore, Respondent has engaged in typosquatting through its use of the <veriphone.net> domain name, which is a common misspelling of Complainant’s VERIFONE mark. Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); 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.”).
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.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 13, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum