Chex Systems, Inc. v. Steve Intrieri / Western Auto Lease, LLC
Claim Number: FA1311001532210
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Steve Intrieri / Western Auto Lease, LLC (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexsystemsfix.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2013; the National Arbitration Forum received payment on November 27, 2013.
On December 2, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chexsystemsfix.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 December 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@chexsystemsfix.com. Also on December 4, 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 December 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, 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.
A. Complainant
Complainant contends as follows:
Complainant, Chex Systems, Inc. is a consumer-reporting agency governed by the federal Fair Credit Reporting Act and other laws. Complainant offers fee-based financial services to its commercial customers or “members,” which are financial institutions such as banks.
Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the CHEXSYSTEMS mark (Reg. No. 3,173,774, registered November 21, 2006).
The domain name is confusingly similar to Complainant’s CHEXSYSTEMS mark because it incorporates Complainant’s mark in its entirety and merely adds a generic or descriptive term.
Respondent has no rights or legitimate interests in the domain name. Respondent is not and has not been commonly known by the domain name. Respondent is using the domain name for a pay-per-click website featuring sponsored-link advertisements for commercial websites offering financial services and other commercial websites. Respondent uses the domain name to pass itself off as Complainant.
Respondent has registered and is using the disputed domain name in bad faith. Respondent disrupts Complainant’s business by using the domain name to compete with Complainant. Respondent uses the domain name to intentionally attract, for commercial gain, Internet uses 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 products and services offered therein. Respondent uses the domain name to pass itself off as Complainant. Respondent knew of Complainant’s federally registered CHEXSYSTEMS mark when it registered the domain name, given that Respondent’s website has explicitly referred to Complainant’s CHEXSYSTEMS mark and its products and services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for its CHEXSYSTEMS mark.
Respondent is not authorized to use the CHEXSYSTEMS mark.
Respondent registered the at-issue <chexsystemsfix.com> domain name subsequent to when Complainant acquired rights in the CHEXSYSTEMS mark.
Respondent uses the domain name for a pay-per-click website featuring sponsored-link advertisements for commercial websites offering financial services and other commercial websites.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights in the CHEXSYSTEMS mark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of that mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s at-issue domain name is comprised of Complainant’s entire CHEXSYSTEMS trademark plus the generic/descriptive term “fix” with the top level domain name “.com” appended thereto. Respondent’s addition of a generic term is ineffective in distinguishing the mark from the domain name for the purposes of Policy ¶ 4(a)(i), as is Respondent’s appending of a top level domain name to the resulting string. Therefore the Panel concludes that Respondent’s <chexsystemsfix.com> domain name is confusingly similar to Complainant’s CHEXSYSTEMS mark. See also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also, Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name identifies Respondent as “Steve Intrieri / Western Auto Lease, LLC” and the entire record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the at-issue domain name notwithstanding the WHOIS contrary information. The Panel therefore finds that Respondent is not commonly known by the <chexsystemsfix.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <chexsystemsfix.com> domain name for a website promoting Respondent’s alleged financial and credit-repair services. Respondent’s at-issue domain name resolves to a website for a related titled “CHEXSYSTEMS REPAIR, LLC” which links to Complainant’s system and makes Internet users appear as more favorable candidates for credit accounts. Respondent is thus using the at-issue domain name to provide a competing service and not being used in a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). Likewise, Respondent’s intent to pass itself off as Complainant also urges that Respondent has no rights or legitimate interests in the at-issue domain name. See ChexSystems v. Nekouie (NAF FA1308001513536),(finding no legitimate interest in the respondent’s use of the domain name <chexsystems.com> for a website using ChexSystems’ mark and offering to sell a product that claimed to remove consumers’ files from ChexSystems’ database because “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.”)
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent’s use of the confusingly similar <chexsystemsfix.com> domain name to provide financial services that compete with Complainant via a website titled “CHEXSYSTEMS REPAIR, LLC” is disruptive to Complainant’s business. As mentioned above, Respondent’s use of the domain name also urges a finding that Respondent, through the <chexsystemsfix.com> domain name, is intent on pass itself off as Complainant. Either such use of the domain name demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that respondent’s registration of a domain name substantially similar to complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt complainant’s business under Policy ¶ 4(b)(iii)); see also, DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Further, given Respondent’s use of the confusingly similar at-issue domain name it is likely that Respondent desires some commercially benefit from those misled consumers who arrive at Respondent’s webpage instead of Complainant’s legitimate website. Therefore, the Panel finds that Respondent uses the <chexsystemsfix.com> 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 products and services offered therein. Such finding demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Finally, Respondent had knowledge of Complainant’s rights in the CHEXSYSTEMS mark when it registered the <chexsystemsfix.com> domain name. Respondent explicitly refers to Complainant’s CHEXSYSTEMS mark and its products and services on its at-issue website. Therefore, it is inconceivable that Respondent was unaware of Complainant at the time it registered the at-issue domain name. Respondent’s prior knowledge of Complainant's mark and rights therein additionally shows that Respondent registered the at-domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chexsystemsfix.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 13, 2014
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