Chex Systems, Inc. v. ROBERT PIERSMA
Claim Number: FA1504001613136
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is ROBERT PIERSMA (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexsystemschecking.com>, registered with REGISTER.COM, INC.
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 Forum electronically on April 6, 2015; the Forum received payment on April 6, 2015.
On April 8, 2015, REGISTER.COM, INC. confirmed by e-mail to the Forum that the <chexsystemschecking.com> domain name is registered with REGISTER.COM, INC. and that Respondent is the current registrant of the name. REGISTER.COM, INC. has verified that Respondent is bound by the REGISTER.COM, INC. 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 April 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@chexsystemschecking.com. Also on April 8, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 owns the CHEXSYSTEMS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,173,774, registered Nov. 21, 2006). Complainant offers fee-based financial services to financial institutions, and uses the CHEXSYSTEMS mark in connection with its services. The <chexsystemschecking.com> domain name is confusingly similar to the CHEXSYSTEMS mark. The domain name includes Complainant’s mark in full, adds the descriptive word “checking,” and adds a generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as nothing in the record reflects that Respondent is commonly known by the disputed domain name. Complainant has never authorized Respondent to use Complainant’s CHEXSYSTEMS mark. Respondent’s lack of rights or legitimate interests in the <chexsystemschecking.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <chexsystemschecking.com> domain name to offer pay-per-click advertisements on its resolving website. Respondent attempts to pass itself off as Complainant.
Respondent has engaged in bad faith registration and use of the <chexsystemschecking.com> domain name. Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by misleading Complainant’s consumers. Additionally, Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Respondent had knowledge of Complainant’s rights in the CHEXSYSTEMS mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
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 states that it owns the CHEXSYSTEMS mark through its registration with the USPTO (e.g., Reg. No. 3,173,774, registered Nov. 21, 2006). Complainant contends that it offers fee-based financial services to financial institutions, and uses the CHEXSYSTEMS mark in connection with its services. Past panels have found that registration of a mark with the USPTO sufficiently establishes a complainant’s rights in a mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel concludes that Complainant’s valid registration of the CHEXSYSTEMS mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant asserts that the <chexsystemschecking.com> domain name is confusingly similar to the CHEXSYSTEMS mark. Specifically, the domain name includes Complainant’s mark in full, adds the descriptive word “checking,” and adds the gTLD “.com” to the domain name. Past panels have held that a disputed domain name that merely adds a descriptive word onto a complainant’s registered mark is not adequately distinguishable, especially when the added word describes the complainant’s products or service. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The addition of a gTLD does not serve to differentiate the disputed domain name from the registered mark. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Accordingly, the Panel determines that the disputed domain name is confusingly similar to Complainant’s mark under 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 alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent is not commonly known by the disputed domain name, as nothing in the record reflects that Respondent is commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “Robert Piersma” as the registrant of record. Complainant has never authorized Respondent to use Complainant’s CHEXSYSTEMS mark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights in the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent’s lack of rights or legitimate interests in the <chexsystemschecking.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant claims that Respondent uses the <chexsystemschecking.com> domain name to host pay-per-click advertisements on its resolving website. The website displays links such as “Top 10 Savings Accounts” and “2nd Chance Bank Account,” which redirect users to other financial services. Past panels have found that a respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel concludes that Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i), and that, as Respondent presumably attempts to profit through click-through fees, there logically cannot be a “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent attempts to pass itself off as Complainant, which demonstrates that Respondent lacks rights or legitimate interests in the <chexsystemschecking.com> domain name. Complainant asserts that Respondent’s resolving website incorporates highly misleading descriptions that give the false impression that such services are offered directly by or sponsored by Complainant. Past panels have concluded that a respondent’s attempt to pass itself off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). The Panel finds that Respondent is attempting to pass itself off as Complainant, and concludes that such contentions are further evidence that Respondent lacks rights or legitimate interests in the <chexsystemschecking.com> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant claims that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by misleading Complainant’s consumers. Complainant argues that its business is disrupted when Internet users mistakenly click on hyperlinks that lead to third-party financial services. Past panels have found that the use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant argues that Respondent uses the disputed domain name to intentionally attract Internet users, for commercial gain, through a likelihood of confusion with Complainant. Complainant asserts that Respondent uses pay-per-click hyperlinks on its resolving website, which suggests bad faith registration and use. Past panels have found that hyperlinks are typically associated with referral fees, and a respondent’s use of competing hyperlinks is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent had knowledge of Complainant’s rights in the CHEXSYSTEMS mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). Complainant argues that Respondent’s website explicitly refers to Complainant’s CHEXSYSTEMS mark and its services on the resolving website, which indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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").
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 <chexsystemschecking.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 11, 2015
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