Chex Systems, Inc. v. Tech Admin / ChexSystems Co / Chexsystems.co
Claim Number: FA1405001559597
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Tech Admin / ChexSystems Co / Chexsystems.co (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <chexsystemsrx.com>, registered with Network Solutions, LLC.
The domain name at issue is <chexsystems.co>, registered with Domain.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2014; the National Arbitration Forum received payment on May 15, 2014.
On May 16, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <chexsystemsrx.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 16, 2014, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chexsystems.co> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LL has verified that Respondent is bound by the Domain.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 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2014 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.co and postmaster@chexsystemsrx.com. Also on May 16, 2014, 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 June 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CHEXSYSTEMS and alleges that one disputed domain name is identical to that trademark, whilst the other is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
No Response was received by the Forum. Instead, on May 19, 2014, Respondent submitted an email to the Forum stating: “I have become aware of the domain dispute filed. I purchased the domains from a third party and was not aware of any trademark issues. I have contacted complainants several times without response letting them know I will gladly transfer the domains to them without going through UDRP. They have ignored my requests to resolve this issue and I feel it is a malicious attempt to tarnish my name.”
The factual findings pertinent to the decision in this case are that:
1. Complainant is a consumer-reporting agency which provides fee-based financial services, principally to banks, by reference to the trade mark, CHEXSYSTEMS.
2. the trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,173,774, registered November 21, 2006;
3. the disputed domain name <chexsystems.co> was registered on January 5, 2014 and <chexsystemsrx.com> was registered on February 3, 2014;
4. the domain names resolve to websites that claims to remove consumers’ files from Complainant’s database;
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
As already noted, Respondent wrote to the Forum stating that it had “contacted complainants several times without response letting them know I will gladly transfer the domains to them without going through UDRP.”
Whilst Panel is under no obligation to acknowledge that email, it remains open to Panel in circumstances where a respondent has agreed to transfer the domain name in question to a complainant to forego the UDRP analysis and order immediate transfer of the domain name (see Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003).
The Panel’s position is clear where the transfer request is mutual (see Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
The situation is less tidy when the request to transfer comes only from a respondent since on one view the related complainant has not consented to the transfer and might rightly object that consent to transfer is a way for a cybersquatter to escape an adverse decision under the Policy (see, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008).
So, whilst Respondent might object that Complainant has “ignored requests to resolve the issue”, Respondent should remember that Complainant is under no obligation to respond. Respondent’s argument that the non-response “is a malicious attempt to tarnish my name” is therefore bogus. Indeed, it was Respondent that should have filed a Response had it felt strongly about the matter. Further, there is no support for Respondent’s assertion that it “purchased the domains from a third party and was not aware of any trademark issues” and the inference that can reasonably be drawn from the available evidence and in the absence of a Response is that Respondent used the domain names in bad faith (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).
Panel finds that the appropriate course is to apply the Policy.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under paragraph 4(a)(i) of the Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”). Since Complainant provides evidence of its registration with the USPTO, Panel is satisfied that Complainant has trademark rights in CHEXSYSTEMS.
Panel also finds that the disputed domain name <chexsystems.co> is legally identical to the trademark and that the domain name <chexsystemsrx.com> is confusingly similar to the trademark. In particular, the gTLD, the ccTLD, and the letters “rx” are of no distinguishing value and do nothing to negative the likelihood of confusion (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”; Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain names.
There is no evidence that Respondent has any trademark rights and there is no evidence that Complainant has authorized Respondent to use the trademark. Complainant denies any such authorization.
Complainant asserts that Respondent is using the domain names to offer services that claim to remove consumers’ files from Complainant’s database and is therefore usage which competes with Complainant’s services under the trademark. Moreover, Complainant claims that Respondent is attempting to pass itself off as Complainant through repeated use of Complainant’s trademark and by language crafted to imply that a user has found Complainant’s services. For example, the resolving websites state, “If you can’t find your question here, or if you need more help, contact ChexSystems and we’ll be happy to help you”.
Panel finds that Complainant has done enough to question whether the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute (see Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) finding that the respondent’s attempts to pass itself off as the complainant was evidence that the respondent had no rights or legitimate interests in the disputed domain name; see also, Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because it used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Panel finds that Complainant has established prima facie cases. The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that burden has not been discharged and Panel finds that Respondent has no rights or interests. Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. The evidence strongly suggests that the websites corresponding with the disputed domain names exist for commercial gain. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s on-line locations by creating a likelihood of confusion with the Complainant’s trademark (see 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 has established the third and final aspect of the Policy.
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.co> and <chexsystemsrx.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 16, 2014
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