national arbitration forum

 

DECISION

 

Fair Isaac Corporation v. Staci Michele

Claim Number: FA1302001486147

PARTIES

Complainant is Fair Isaac Corporation (“Complainant”), represented by Daniel L. Lowin of Fair Isaac Corporation, Minnesota, USA.  Respondent is Staci Michele (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theficoscore.com>, registered with FABULOUS.COM PTY LTD.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2013; the National Arbitration Forum received payment on February 25, 2013.

 

On February 20, 2013; Feb 21, 2013, FABULOUS.COM PTY LTD., confirmed by e-mail to the National Arbitration Forum that the <theficoscore.com> domain name is registered with FABULOUS.COM PTY LTD., and that Respondent is the current registrant of the name.  FABULOUS.COM PTY LTD., has verified that Respondent is bound by the FABULOUS.COM PTY LTD., 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 February 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2013 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@theficoscore.com.  Also on February 28, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration 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 March 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <theficoscore.com> domain name, the domain name at issue, is confusingly similar to Complainant’s FICO mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

Complainant, FICO, is a leading provider of decision management solutions powered by advanced analytics.  The FICO mark has been used in commerce in connection with providing credit-related products and services since at least as early as 1995.  Complainant owns several U.S. federal trademark registrations for the FICO mark, including U.S. Registration No. 2,273,432, registered August 31, 1999.  The <theficascore.com> domain name at issue was initially registered on June 25, 2009.

 

Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  Respondent has never requested or received any authorization, permission or license from Complainant to use the FICO mark in any way. It appears that Respondent is using the Domain Name for the sole purpose of driving Internet traffic to Respondent’s website and trading on the goodwill associated with Complainant and the FICO mark.  These facts, coupled with the Whois information for the domain name that show the Respondent’s name is Staci Michele of Harlingen, Texas, make it apparent that Respondent is not commonly known by the domain name <theficoscore.com> and has no claim to the use of the FICO mark in a domain name. The domain name incorporates the distinctive FICO mark in its entirety and creates sufficient similarity between the mark and the domain name to render it confusingly similar.

The website associated with the domain name at issue is a directory website providing listings of hyperlinks which lead to popular categories for credit scores and related financial products and services, including those of FICO’s competitors. When a searcher reaches the website, and clicks on many of the links, he or she is connected immediately to the website of one of Complainant’s competitors or is immediately provided with another list of links which lead to Complainant’s competitors. Presumably, Respondent receives compensation each time a searcher clicks on one of these search links, and this constitutes use of the domain for commercial gain.  By virtue of Complainant’s USPTO registration of the FICO mark and the apparent US residency of Respondent, constructive notice of the mark is presumed.  The fact that Respondent conspicuously uses Complainant’s mark on the website associated with the domain name at issue is evidence of actual knowledge, as well.

DISCUSSION

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:

 

(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.

 

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.”).

 

 

 

Identical and/or Confusingly Similar

As noted above, Complainant, FICO, is a leading provider of decision management solutions powered by advanced analytics.  The FICO mark has been used in commerce in connection with providing credit-related products and services since at least as early as 1995.  Complainant owns several U.S. federal trademark registrations for the FICO mark, including U.S. Registration No. 2,273,432, registered August 31, 1999. 

 Complainant has established its rights in the FICO mark for the purposes of Policy ¶ 4(a)(i) by having registered the mark with the USPTO.  Even though it appears that Respondent resides in the USA, the Policy does not require Complainant to register its mark in the same country where Respondent resides and operates. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Previous panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar.  See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).  Furthermore, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of the domain name at issue and the  FICO mark.  See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (Nat. Arb. Forum Jan. 21, 2003).  Moreover, the addition of a common or generic term to a trademark does nothing to reduce the domain name’s confusing similarity.  See Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000) (“The addition of a common or generic term following a trademark does not create a new or different mark in which respondent has rights.”); Parfums Christian Dior v. 1 Netpower, Inc., No. D2000-0022 (WIPO March 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark).

 

In this case, the domain name at issue contains the FICO mark in its entirety, adding only the descriptive term “score” and the top-level domain, .com. These minor differences are insufficient to distinguish the <theficoscore.com> from the FICO mark.

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).

 

There is no evidence in the Whois information to suggest that Respondent is known by the Domain Name.  The Whois information for the domain name shows the Respondent’s name is Staci Michele of Harlingen, Texas.  Respondent could not have developed any rights in the FICO ark, unless Complainant licensed the FICO mark to Respondent or otherwise allowed Respondent to use it.  However, Respondent has no relationship, association, affiliation, connection or endorsement with Complainant.

It appears that Respondent is using the domain name at issue for the sole purpose of driving Internet traffic to Respondent’s websites and trading on the goodwill associated with Complainant and the FICO mark.  Respondent’s use for commercial gain of a domain name that is identical to the FICO mark to direct Internet users interested in Complainant’s products and services to websites which offer confusingly similar and related goods and services is not a legitimate noncommercial or fair use of the domain name at issue.  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”)

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

The <theficoscore.com> domain name was registered on June 25, 2009 by Respondent’s predecessor in interest who later transferred the domain to her on February 20, 2013.  This is more than ten years after Complainant began using and developed rights in its FICO mark.  Respondent is using the domain name at issue, which is identical to the FICO mark, to direct Internet users to commercial websites featuring goods and services that compete with or are related to Complainant’s services.  Such use is clear evidence of bad faith registration and use.  See, e.g., Society for the Promotion of Japanese Animation v. In Stealth Mode, citing S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (respondent acted in bad faith by attracting Internet users to website that competes with complainant’s business), and Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (respondent diverted business from complainant to competing website in violation of Policy ¶ 4(b)(iii)).  Furthermore, it is clear that Respondent registered the domain name, which includes the FICO mark, with the FICO mark in mind, in light of the obvious link between Complainant and both the content of the websites and the goods and services offered for sale thereon.  See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the Complainant’s mark when it registered the subject domain name.”). 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <theficoscore.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  March 30, 2013

 

 

 

 

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