ChexSystems, Inc. v. Nader Nekouie / IDTheft Pros, LLC
Claim Number: FA1308001513536
Complainant is ChexSystems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Nader Nekouie / IDTheft Pros, LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexsystems.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 known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2013; the National Arbitration Forum received payment on August 7, 2013.
On August 8, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chexsystems.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 August 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@chexsystems.com. Also on August 8, 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.
Respondent requested and was granted an extension until September 17, 2013 to submit a response.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent is not and has not been commonly known by the domain name.
ii. Respondent registered and uses the domain name for a commercial website that offers to sell consumers the same CHEXSYSTEMS report that Complainant provides for free, offers to sell a product that claims to remove consumers’ files from Complainant’s database, and offers information and other services related to identity-theft protection.
iii. Respondent’s activities constitute passing off in that Respondent is trying to pass itself off as Complainant. Respondent registered and uses the domain name for a commercial website that prominently features unauthorized uses of Complainant’s CHEXSYSTEMS mark and name, including Complainant’s website content, Complainant’s contact information, the website title “ChexSystems—Official Website,” and a strikingly similar CHEXSYSTEMS logo.
i. Respondent disrupts Complainants’ business by using the domain name to unfairly compete with Complainant.
ii. Respondent uses the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its CHEXSYSTEMS mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent, its website, and/or its activities.
iii. Respondent disrupts Complainants’ business by using the domain name to pass itself off as Complainant.
iv. Respondent knew of Complainants’ federally registered CHEXSYSTEMS mark when it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant argues that it is a consumer reporting agency governed by the federal Fair Credit Reporting Act and other laws. Complainant contends that it offers fee-based financial services to its commercial customers, which are financial institutions such as banks. Complainant claims that it is the owner of a trademark registration with the USPTO for the CHEXSYSTEMS mark (Reg. No. 3,173,774, registered November 21, 2006, first used March 31, 1983). The Panel notes that Respondent appears to reside within the United States. Therefore, the Panel holds that Complainant’s registration of the CHEXSYSTEMS mark with the USPTO sufficiently proves its rights in the CHEXSYSTEMS mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). However, the Panel notes that the initial registration of the <chexsystems.com> domain name on April 4, 2001 predates Complainant’s registration of the CHEXSYTEMS mark on November 21, 2006. The Panel finds that the registration of a trademark is unnecessary for the establishment of rights, however, so long as Complainant can establish common law rights in the CHEXSYSTEMS mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant alleges that it also owns common law rights in the CHEXSYSTEMS mark that date back to 1983. Complainant contends that it has used the CHEXSYSTEMS mark since as early as March 31, 1983. The Panel finds that Complainant’s continuous and ongoing use of the CHEXSYSTEMS mark in commerce sufficiently proves secondary meaning in the mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Therefore, the Panel finds that Complainant has common law rights in the CHEXSYSTEMS mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <chexsystems.com> domain name is identical to Complainant’s CHEXSYSTEMS mark because the domain is comprised of Complainant’s mark in its entirety and the non-distinguishing gTLD “.com.” The Panel determines that Respondent’s inclusion of a gTLD does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel finds that Respondent’s <chexsystems.com> domain name is identical to Complainant’s CHEXSYSTEMS mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent is not and has not been commonly known by the domain name. Complainant contends that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the <chexsystems.com> domain name. Complainant also asserts that it has not authorized Respondent to use its CHEXSYSTEMS mark. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel finds that Respondent is not commonly known by the <chexsystems.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent registered and uses the <chexsystems.com> domain name for a commercial website that offers to sell consumers the same CHEXSYSTEMS report that Complainant provides for free, offers to sell a product that claims to remove consumers’ files from Complainant’s database, and offers information and other services related to identity-theft protection. Additionally, Complainant alleges that Respondent’s activities constitute passing off in that Respondent is trying to pass itself off as Complainant. Complainant argues that Respondent registered and uses the <chexsystems.com> domain name for a commercial website that prominently features unauthorized uses of Complainant’s CHEXSYSTEMS mark and name, Complainant’s website content, Complainant’s contact information, the website title “ChexSystems—Official Website,” and a strikingly similar CHEXSYSTEMS logo. The Panel holds that Respondent’s attempt to pass itself off as Complainant through its <chexsystems.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant has proven this element.
Complainant contends that Respondent disrupts Complainants’ business by using the domain name to unfairly compete with Complainant. Complainant argues that Respondent is using the <chexsystems.com> domain name to sell consumers the same CHEXSYSTEMS report that Complainant provides for free, to sell a product that claims to remove consumers’ files from Complainant’s database, and to offer information and other services related to identity-theft protection. Prior panels have held that a respondent’s use of a domain name to provide competing services diverts users away from the complainant’s business disrupts the complainant’s business in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent is using the <chexsystems.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent uses the domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant and its CHEXSYSTEMS mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent, Respondent’s website, and/or Respondent’s activities. Complainant contends that Respondent is using the <chexsystems.com> domain name to run a commercial website that offers to sell consumers the same CHEXSYSTEMS report that Complainant provides for free and a product that claims to remove consumers’ files from Complainant’s database, and offers informational and other services related to identity-theft protection. Complainant also argues that Respondent is using the <chexsystems.com> domain name to pass itself off as Complainant. Complainant argues that Respondent registered and uses the <chexsystems.com> domain name in connection with a commercial website that prominently features unauthorized uses of Complainant’s CHEXSYSTEMS mark and name, Complainant’s website content, Complainant’s contact information, the website title “ChexSystems—Official Website,” and a strikingly similar CHEXSYSTEMS logo. The Panel finds that Respondent’s use of the <chexsystems.com> domain name to attract users to its own website and to pass itself off as Complainant evidences bad faith use and registration under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant asserts Respondent knew of Complainant’s federally registered CHEXSYSTEMS mark when it registered the <chexsystems.com> domain name. Complainant contends that Respondent’s actual knowledge is evidenced by Respondent’s explicit reference to Complainant’s CHEXSYSTEMS mark and its products and services. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s attempt to pass itself off as Complainant, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <chexsystems.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 23, 2013
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