Fidelity National Information Services, Inc. v. Clint G. Kittrell
Claim Number: FA1501001600890
Complainant is Fidelity National Information Services, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Clint G. Kittrell (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ezcardinfocom.org>, registered with GoDaddy.com, LLC (R91-LROR).
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 January 20, 2015; the National Arbitration Forum received payment on January 20, 2015.
On January 21, 2015, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <ezcardinfocom.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) 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 January 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2015 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@ezcardinfocom.org. Also on January 21, 2015, 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 February 13, 2015, 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.
Complainant
Complainant utilizes EZCARDINFO.COM to promote its chargecard services to banks and financial institutions. Complainant has used the mark extensively since 2001, with its website routinely getting hundreds of thousands of views each month. Complainant operates its business online, making strong use of the <ezcardinfo.com> domain name to serve as its “face” on the Internet.
Respondent has no rights or legitimate interest in the <ezcardinfocom.org> domain name. Respondent is not commonly known by the <ezcardinfocom.org> domain name. Respondent is using the <ezcardinfocom.org> domain name to pass itself off as Complainant by promoting services essentially identical to the EZCARDINFO.COM.
Respondent registered and is using the <ezcardinfocom.org> domain name in bad faith. Respondent disrupts Complainant’s business by offering a directly competing service through the website associated with the domain name—namely, Respondent purports to be an official information source for EZCARDINFO.COM services, while promoting competing referral links.
Respondent
Respondent did not submit a Response in this proceeding.
For the 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 does not base its Policy ¶ 4(a)(i) assertion of rights on a trademark registration, but instead claims common law rights in the EZCARDINFO.COM mark. Panels have concluded that a complainant may satisfy Policy ¶ 4(a)(i) without a registered mark so long as it can establish common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
In demonstrating a common law trademark, Complainant explains that it utilizes EZCARDINFO.COM to promote its chargecard services to banks and financial institutions. Complainant claims it has used the mark extensively since 2001, with its website routinely getting hundreds of thousands of views each month. Complainant argues that it operates its business online, making strong use of the <ezcardinfo.com> domain name to serve as its “face” on the Internet. The Panel accepts that Complainant’s efforts have acquired the requisite secondary meaning for the EZCARDINFO.COM mark, and finds Complainant has demonstrated its Policy ¶ 4(a)(i) rights in the mark as a common law trademark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
Complainant claims that Respondent’s <ezcardinfocom.org> domain name is confusingly similar to the EZCARDINFO.COM mark. As Respondent merely removes a period from the mark and adds the gTLD “.org,” the Panel concludes the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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 claims that the <ezcardinfocom.org> domain name is not a name by which Respondent is commonly known. “Clint Kittrell” is listed as registrant of record for this disputed domain name. In LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013), the panel held that there was insufficient basis for finding the respondent to be commonly known by a domain name when absolutely nothing present in the record illustrated such a connection. The Panel agrees that there is no evidence under Policy ¶ 4(c)(ii) that Respondent is commonly known by the domain name.
Complainant claims that Respondent is using the <ezcardinfocom.org> domain name to pass itself off as Complainant by promoting services essentially identical to those of EZCARDINFO.COM. Respondent is providing various “information” about EZCARDINFO.COM services, while also displaying hyperlinks to various businesses. The Panel concludes that such a use 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 Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Complainant has proven this element.
Complainant claims that Respondent disrupts Complainant’s business by offering a directly competing service through the website associated with the domain name. Respondent purports to be an official information source for EZCARDINFO.COM services, while promoting competing referral links. The Panel agrees that the evidence shows that Respondent purports to offer legitimate information about Complainant’s business, but then sends users to various other websites via hyperlinks. The Panel finds that such a use is sufficiently competitive with regards to Complainant’s business, and finds this is evidence of Policy ¶ 4(b)(iii) bad faith through a commercial disruption. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant claims that Respondent is seeking to capitalize on the likelihood that Internet users will be confused as to the association between the disputed domain name and the EZCARDINFO.COM mark. The Panel agrees that the use of the domain name as shown could create consumer confusion, as Respondent’s website describes the EZCARDINFO.COM services as if it were a legitimate source of information. The Panel finds Policy ¶ 4(b)(iv) bad faith in using a confusingly similar domain name for such a scheme. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant alleges that bad faith registration is evident due to the fact that Respondent uses the domain name to purport to provide information about EZCARDINFO.COM services. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, 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 <ezcardinfocom.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 17, 2015
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