Fidelity National Information Services, Inc. and Certegy Check Services, Inc. v. Jeff Sawyer / Clear Commerce Solution
Claim Number: FA1409001578375
Complainant is Fidelity National Information Services, Inc. and Certegy Check Services, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Jeff Sawyer / Clear Commerce Solution (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clear-commerce.com>, <clearcommerceinc.com>, and <fdisclearcommerce.com>, registered with WILD WEST DOMAINS, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2014; the National Arbitration Forum received payment on September 4, 2014.
On September 5, 2014, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <clear-commerce.com>, <clearcommerceinc.com>, and <fdisclearcommerce.com> domain names are registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the names. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 September 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@clear-commerce.com, postmaster@clearcommerceinc.com, postmaster@fdisclearcommerce.com. Also on September 15, 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 October 8, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims it uses CLEARCOMMERCE extensively in its e-commerce products and services enterprise. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,259,499 registered July 6, 1999). The <clear-commerce.com>, <clearcommerceinc.com>, and <fdisclearcommerce.com> domain names are all confusingly similar to the CLEARCOMMERCE mark.
Respondent has no rights or legitimate interests in the domain names. Respondent is not known by the domain names, and merely listing “Clear Commerce Solution” next to “Jeff Sawyer[‘s]” name does not show a genuine relationship between Respondent and the domain name. The domain names are used to promote a competing service, except for <clear-commerce.com>, which fails to resolve to any active website.
Respondent registered and is using the domain names in bad faith. First, Respondent’s registration of three infringing domain names evidences his pattern of bad faith registration. Further, the presence of a competing business on the pages of <clearcommerceinc.com> and <fdisclearcommerce.com> shows commercial disruption. Second, the presence of competing businesses on the <clearcommerceinc.com>, and <fdisclearcommerce.com> domain names is evidence that Respondent is seeking to capitalize on a likelihood Internet users will assume that CLEARCOMMERCE services are available on the domain name’s website. Third, Respondent had to have had knowledge of Complainant’s rights when registering confusingly similar domain names for use in competing businesses.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Fidelity National Information Services, Inc. (“FIS”) and Certegy Check Services, Inc.(“Certegy”), use the CLEARCOMMERCE in their e-commerce products and services enterprise. FIS is one of the world’s leading technology providers to the financial-services and e-commerce industries. In 2006, FIS merged with Certegy, a financial services company that provides check authorization and check cashing services to a wide variety of businesses and financial institutions throughout the world, and Certegy became a wholly-owned subsidiary of FIS. Today, FIS offers a wide range of financial and e-commerce products and services under the CLEARCOMMERCE mark through Certegy. Certegy owns the CLEARCOMMERCE trademark. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,259,499 registered July 6, 1999).
Respondent, Jeff Sawyer / Clear Commerce Solution, registered <clear-commerce.com> on April 27, 2012; <clearcommerceinc.com> on April 27, 2012; and <fdisclearcommerce.com> on August 6, 2012. The <clearcommerceinc.com> and <fdisclearcommerce.com> domain names are used to promote a competing service. The <clear-commerce.com> fails to resolve to any active website.
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 has rights in the CLEARCOMMERCE mark Policy ¶ 4(a)(i) through registration with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The <clear-commerce.com>, <clearcommerceinc.com>, and <fdisclearcommerce.com> domain names are all confusingly similar to the CLEARCOMMERCE mark. The addition of the “.com” gTLD, the introduction of a hyphen, the business designation “inc,” and the descriptive term “fdis” (Complainant believes this is its FIS mark with an additional “d”) are not sufficient methods of distinguishing the domain names from the mark under Policy ¶ 4(a)(i). See Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen).
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.
Respondent is not commonly known by the domain names. Merely listing “Clear Commerce Solution” next to “Jeff Sawyer[‘s]” name does not show a genuine relationship between Respondent and the domain name. There is no other evidence in the record to suggest that Respondent is actually known by the domain names. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
The <clearcommerceinc.com> and <fdisclearcommerce.com> domain names are used to promote a competing service. Capitalizing on Complainant’s mark by attracting Internet users to the disputed domain names to provide a competing service is not a bona fide offering under Policy ¶ 4(c)(i), or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The <clear-commerce.com> fails to resolve to any active website, which is evidence of a lack of any right or legitimate interest recognizable under the UDRP’s Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)).
Respondent’s registration of three infringing domain names evidences a pattern of bad faith registration and Policy ¶ 4(b)(ii) bad faith. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
The presence of a competing business on the pages of <clearcommerceinc.com> and <fdisclearcommerce.com> shows commercial disruption and Policy ¶ 4(b)(iii) bad faith. See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (bad faith disruption found when the domain names were used to promote a competing venture).
The presence of competing businesses on the <clearcommerceinc.com>, and <fdisclearcommerce.com> domain names is evidence that Respondent is seeking to capitalize on a likelihood Internet users will assume that CLEARCOMMERCE services are available on the domain name’s website. Therefore, Policy ¶ 4(b)(iv) bad faith exists in this case. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Respondent’s failure to make active use of the <clear-commerce.com> domain name is bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Respondent had actual knowledge of Complainant’s rights when registering confusingly similar domain names for use in competing businesses. Therefore, Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See 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 having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clear-commerce.com>, <clearcommerceinc.com>, and <fdisclearcommerce.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 23, 2014
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