Fair Isaac Corporation v. Sashi Nair
Claim Number: FA1504001613367
Complainant is Fair Isaac Corporation (“Complainant”), Minnesota, USA. Respondent is Sashi Nair (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ficosoftware.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2015; the Forum received payment on April 7, 2015.
On April 8, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ficosoftware.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 April 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@ficosoftware.com. Also on April 10, 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 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
A. Complainant
Complainant contends under Policy ¶ 4(a)(i) that it, Fair Isaac Corporation (“FICO”), is the leading provider of decision management solutions and provides over 5,000 businesses throughout the world with software and consulting services. Complainant uses and has used the FICO mark in connection with providing credit-related products and services since 1995.
Complainant claims to own the FICO mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,273,432 registered August 31, 1999).
Complainant contends that Respondent’s domain name <ficosoftware.com> is confusingly similar to the Complainant’s FICO marks. The disputed domain name merely includes the generic top-level domain (“gTLD”) “.com” and a descriptive term “software” which is insufficient to distinguish the domain from Complainant’s mark.
Next, under Policy ¶ 4(a)(ii), the Complainant contends that Respondent has never been commonly known by the domain name. Respondent is not using the disputed domain name for a legitimate or fair use, or to provide a bona fide offering of goods and services. Respondent uses the disputed domain name to sell products and services that are confusingly similar to those that Complainant offers.
Finally, under Policy ¶ 4(a)(iii), the Complainant contends that Respondent’s bad faith is demonstrated by Respondent’s use of the disputed domain name to offer goods and services in competition with Complainant. Complainant alleges that Respondent had constructive knowledge of Complainant’s rights in the FICO mark at the time the domain was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on April 12, 2014. Respondent did send an e-mail message to the Forum on May 18, 2015. As this e-mail was not timely and was not in a form recognized by the Forum, the Panel considers it a nonresponsive Response.
As the Respondent has failed to file a Response in this matter, the Panel will make its determination based on the reasonable claims of Complainant and accept those reasonable claims as true. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name and that the Respondent has engaged in bad faith use and registration of the domain names.
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 asserts it has rights in the FICO mark through registration with the USPTO (Reg. No. 2,273,432 registered August 31, 1999). Evidence of a registration with the USPTO is sufficient to establish rights in a given mark. 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). Therefore, the Panel concludes that Complainant has rights in the FICO mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <ficosoftware.com> domain name is confusingly similar to Complainant’s FICO mark. The disputed domain name includes Complainant’s entire mark with the addition of the generic term “software.” The addition of a generic term to a mark does not distinguish the mark and the disputed domain name. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The disputed domain name includes the gTLD “.com”. Panels have routinely found that the addition of gTLDs such as “.com” does not distinguish a disputed domain name from a Complainant’s mark. See 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.”)
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent has never been commonly known by the <ficosoftware.com> domain name as evidenced by the WHOIS information provided in this case. The WHOIS information indicates that the registrant for the disputed domain name is listed as “Sashi Nair.” Prior panels have held that a Respondent is not commonly known by a disputed domain where the WHOIS information and other information in the record gives no indication that the Respondent is commonly known by the domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”)
Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent uses the disputed domain to sell products and services which Complainant believes are confusingly similar and in competition with those it offers. The descriptions of the Respondent’s company and Complainant’ company are remarkable similar. Compare Complainant’s attached exhibit D (describing Respondent’s company) and Complainant’s exhibit C (describing Complainant’s company). Panels have routinely found that diverting users to a website through the use of a mark not owned by the owner of the website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 appears to be commercially profiting from its use of the disputed domain name. There is nothing in this record to dispute this reasonable claim by the Complainant. As such. the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii).
In its e-mail dated May 18, 2015, the Respondent did claim to have rights and legitimate interests in and to the disputed domain name. However, Respondent’s nonresponsive Response attached no evidence on which the Panel might rely even if the Panel agreed with Respondent and the nonresponsive Response was not timely nor in the prescribed form. Even though these deficiencies existed, the Panel did consider the nonresponsive Response in making this determination. As there was no evidence submitted to support Respondent’s claim, the Panel has no choice but to decide in favor of the Complainant. In addition, the nonresponsive Response included no arguments regarding the other two elements of a UDRP claim.
Complainant asserts that Respondent is acting in bad faith pursuant to Policy ¶ 4(b)(iii). Complainant argues that Respondent uses the disputed domain name to direct internet users to a website offering goods and services similar to those offered by FICO and for the purposes of Respondent’s commercial profit. Prior panels have found that using a domain name substantially similar to a mark held by another can constitute bad faith when that domain is used to offer goods or services that compete against the holder of the mark. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) As the Respondent is unfairly using Complainant’s mark to offer competing goods and services, the Panel finds that Respondent is acting in bad faith under Policy ¶ 4(b)(iii).
Complainant also argues that its trademark registrations for the FICO mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice alone is not sufficient to support a bad faith finding, due to the fame of Complainant's mark, Respondent had constructive knowledge and actual knowledge of the mark and Complainant's rights. Given the totality of the circumstances, it is clear that the Respondent registered and is using the disputed domain name 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)."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <ficosoftware.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: May 18, 2015
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