EMVCo, LLC c/o Visa Holdings v. Stephanie Wells
Claim Number: FA1504001616510
Complainant is EMVCo, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Stephanie Wells (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <emvlaws.net>, <emvlaws.org>, <emvregulations.info>, <emvregulations.net>, <emvregulations.org>, and <emvregulations.com>, registered with GoDaddy.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2015; the Forum received payment on April 27, 2015.
On April 28, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <emvlaws.net>, <emvlaws.org>, <emvregulations.info>, <emvregulations.net>, <emvregulations.org>, and <emvregulations.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 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@emvlaws.net, postmaster@emvlaws.org, postmaster@emvregulations.info, postmaster@emvregulations.net, postmaster@emvregulations.org, postmaster@emvregulations.com. Also on May 1, 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 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has registered the EMV mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,233,769, registered Apr. 24, 2007). The mark is used on or in connection with the sale of magnetically encoded smart cards for consumer business payment transaction.
2. The <emvlaws.net>, <emvlaws.org>, <emvregulations.info>, <emvregulations.net>, <emvregulations.org>, and <emvregulations.com> domain names are confusingly similar to the EMV mark because all of them add a generic top-level domain (“gTLD”) of some sort, and each contain generic terms that fail to distinguish the domain names from Complainant’s mark.
3. Respondent is not commonly known as the disputed domain names, nor is Respondent a licensee of Complainant. Further, the domain names resolve to a parked webpage containing links unrelated to Complainant or its business.
4. Respondent has engaged in bad faith registration and use. Respondent is attempting to commercially profit from a likelihood of confusion. Further, Respondent had actual knowledge of Complainant’s trademark rights.
5. All of the domain names were registered in June 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the EMV mark. Respondent’s domain names are confusingly similar to Complainant’s EMV mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <emvlaws.net>, <emvlaws.org>, <emvregulations.info>, <emvregulations.net>, <emvregulations.org>, and <emvregulations.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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 registered the EMV mark with the USPTO (e.g., Reg. No. 3,233,769, registered Apr. 24, 2007). The mark is used on or in connection with the sale of magnetically encoded smart cards for consumer business payment transactions. The registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <emvlaws.net>, <emvlaws.org>, <emvregulations.info>, <emvregulations.net>, <emvregulations.org>, and <emvregulations.com> domain names are confusingly similar to the EMV mark. Each domain name adds a generic top-level domain (“gTLD”) of some sort, and each contains generic terms that fail to distinguish the domain names from Complainant’s mark. As a general rule, a gTLD, such as “.com,” “.net,” “.org,” or “.info,” does not distinguish a domain name from the mark at issue. See 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). Further, a domain names is confusingly similar to a mark despite the addtion of generic or descriptive terms to the domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to the EMV mark according to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the EMV mark in domain names. “Stephanie Wells” is listed as the registrant of record for the disputed domain names. The record is void of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Under such circumstances, Respondent does not have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Each of the domain names resolves to a parked webpage containing links unrelated to Complainant or its business. Although a respondent does not control the content of a parked webpage, a respondent is nevertheless responsible for the webpage’s content. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Use of a webpage that fails to offer any goods or services and displays links unrelated to a complainant cannot give a respondent rights under Policy ¶¶ 4(c)(i) or (iii), especially where the respondent presumably commercially gains from the presence of the links. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. Because the record shows that Respondent has used the domain names to profit from Complainant’s trademark rights, Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iv). 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). Thus, the Panel finds Policy ¶ 4(b)(iv) bad faith.
Complainant also contends that in light of the fame and notoriety of its EMV mark, it is inconceivable that Respondent could have registered the <emvlaws.net>, <emvlaws.org>, <emvregulations.info>, <emvregulations.net>, <emvregulations.org>, and <emvregulations.com> domain names without actual knowledge of Complainant's rights in the mark. Because the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names, the Panel finds adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emvlaws.net>, <emvlaws.org>, <emvregulations.info>, <emvregulations.net>, <emvregulations.org>, and <emvregulations.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 8, 2015
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