DataCard Corporation v. V A / Ch
Claim Number: FA1205001444993
Complainant is DataCard Corporation (“Complainant”), represented by Sarah G. Voeller of Hamre, Schumann, Mueller & Larson, P.C., Minnesota, USA. Respondent is V A / Ch (“Respondent”), Bulgaria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <datacardservices.com>, registered with Godaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 21, 2012; the National Arbitration Forum received payment on May 21, 2012.
On May 22, 2012, Godaddy.com, LLC. confirmed by e-mail to the National Arbitration Forum that the <datacardservices.com> domain name is registered with Godaddy.com, LLC. and that Respondent is the current registrant of the name. Godaddy.com, LLC. has verified that Respondent is bound by the Godaddy.com, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@datacardservices.com. Also on May 22, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2012, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant markets credit and debit cards, identification cards and gift cards and related services.
Complainant provides these products and services throughout the world under the DATACARD trademark.
Complainant holds trademark registrations, on file with the United States Patent and Trademark Office (“USPTO”), for its DATACARD mark (including Reg. No. 1,734,370, registered November 24, 1992).
Respondent registered the <datacardservices.com> domain name on November 28, 2011.
Respondent’s <datacardservices.com> domain name is confusingly similar to Complainant’s DATACARD mark.
Respondent has not been commonly known by the <datacardservices.com> domain name.
Respondent does not own any trademark or other intellectual property rights in the disputed domain name.
Respondent is not permitted or licensed to use Complainant’s DATACARD mark.
Respondent is not making a bona fide offering of goods or services or a legiti-mate noncommercial or fair use of the contested domain name.
Respondent’s website resolving from the disputed domain name uses Complain-ant’s DATACARD mark and a color scheme that it identical to Complainant’s color scheme.
Respondent claims to sell Complainant’s products, and services related to those products, but Respondent is not authorized to sell those products.
Respondent attempts to employ the disputed domain name to attract Internet users to the resolving website, for its commercial gain, by creating a likelihood of confusion with Complainant’s DATACARD mark as to the source, sponsorship, affiliation, or endorsement of the resolving website.
Respondent knew of Complainant’s rights in the DATACARD mark when it reg-istered the contested domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 allega-tions of the Complaint.”
Complainant has rights in the DATACARD trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005):
Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that in which Respondent resides or does business. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Turning then to the question of confusing similarity, we conclude that Respond-ent’s <datacardservices.com> domain name is confusingly similar to Complain-ant’s DATACARD mark under Policy ¶ 4(a)(i). The disputed domain name in-cludes Complainant’s DATACARD mark in its entirety, with the addition of the generic term “services,” which describes an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, are not sufficient to distinguish the domain name from the mark under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respond-ent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has not been commonly known by the <datacardservices.com> domain name, that Respondent is not permitted or otherwise licensed to use Complainant’s DATACARD mark, and that Respondent does not own any trade-mark or other intellectual property rights in the disputed domain name. More-over, the pertinent WHOIS information identifies the registrant of the contested domain name only as “V A / Ch,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <datacardservices.com> domain name so as to have demonstrated that it has rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a re-spondent was not commonly known by the <lilpunk.com> domain name, and so had failed to demonstrate that it had rights to or legitimate interests in that do-main name under Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by the domain name, including the WHOIS information, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <datacardservices.com> domain name, in that Respondent uses it to host a website that contains Complainant’s DATACARD mark and a color scheme that it identical to Complainant’s color scheme, and, further, that Respondent attempts to employ the domain name to sell Complainant’s products and related services without its consent. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legit-imate noncommercial or fair use of the <datacardservices.com> domain name under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used a complainant’s mark in a domain name without authorization to attract Internet users to its website, which offered that complainant’s products for sale).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are persuaded from the record that Respondent attempts by its employment of the disputed domain name to attract, for its commercial gain, Internet users to the resolving website by creating a likelihood of confusion among users as to the possibility of Complainant’s association with or sponsorship of the domain name and resolving website. This is evidence of bad faith registration and use of the domain name within the meaning of Policy ¶ 4(b)(iv). See, for example, Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used a disputed domain name, which was confusingly similar to the mark of a complainant, to sell that complainant’s products without its permission by misleading Internet users with the implication that that respond-ent was affiliated with that complainant).
We are also satisfied from the record that Respondent was aware of Complain-ant and its rights in the DATACARD trademark when Respondent registered the <datacardservices.com> domain name. This apparent knowledge is evidence of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between a complainant's mark and the content found on a respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <datacardservices.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 28, 2012
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