EMVCo, LLC c/o Visa Holdings v. Stephanie Wells
Claim Number: FA1505001617890
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 NAME
The domain name at issue is <emvsolutions.us>, registered with GODADDY.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2015; the Forum received payment on May 5, 2015.
On May 5, 2015, GODADDY.COM, INC. confirmed by e-mail to the Forum that the <emvsolutions.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@emvsolutions.us. Also on May 7, 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 June 3, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
A. Complainant
1. Complainant has rights in the EMV mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,233,769, registered on April 24, 2007).
2. Respondent’s <emvsolutions.us> domain name, registered on June 13, 2014, is confusingly similar to Complainant’s EMV mark because Respondent has simply attached the term “solutions” and the country code top-level domain (“ccTLD”) “.us.”
3. Respondent is not commonly known by the disputed domain name, as the WHOIS information provided lists “Stephanie Wells” as Registrant. Respondent has not been authorized by Complainant to use the EMV mark. Moreover, Respondent has not submitted further evidence to indicate it is commonly known by the disputed domain name.
4. Respondent does not own a trade or service mark that is identical to the disputed domain name.
5. Respondent fails to use the resolving website to make a bona fide offering of goods or services or a legitimate noncommercial or fair use by hosting ‘click-through’ links from which Respondent presumably profits.
6. Respondent uses the resolving website to attract Internet users for commercial profit by hosting ‘click-through’ links from which Respondent presumably profits.
7. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the EMV mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the EMV mark. Respondent’s domain name is confusingly similar to Complainant’s EMV mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <emvsolutions.us> domain name, and that Respondent registered and uses the domain name 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 conducts business related to transaction security, including encoded chips into cards for electronic consumer and business transactions, as well as encryption, authentication and access control. Complainant has rights in the EMV mark through its registration with the USPTO (Reg. No. 3,233,769, registered on April 24, 2007) which is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has rights in the EMV mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <emvsolutions.us> domain name is confusingly similar to Complainant’s EMV mark because Respondent has simply attached the term “solutions” and the ccTLD “.us.” “ccTLDs” are irrelevant to Policy ¶ 4(a)(i) analysis. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Complainant urges that the term “solutions” is either a generic term, or a descriptive term that relates to Complainant’s business in security based technology. Neither the addition of a generic term nor a term descriptive of a complainant’s business suffices to differentiate a domain name from a mark under Policy ¶ 4(a)(i) analysis. 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 Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Accordingly, the Panel finds that Respondent’s <emvsolutions.us> domain name is confusingly similar to Complainant’s EMV mark pursuant 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.
The record reflects that Respondent does not own any trade or service mark that is identical to the <emvsolutions.us> domain name. Complainant urges that Respondent has no connection whatsoever with the EMV mark, and uses the disputed domain entirely to host ‘click-through’ links, thereby showing a lack of ownership in any identical mark. Thus, there is nothing in the record to show that Respondent owns any marks or trade names within the protection of Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information provided lists “Stephanie Wells” as Registrant; Respondent has not provided any further evidence to indicate she is commonly known by the disputed domain name. Complainant urges that Respondent has not been authorized to use its EMV mark. When a respondent fails to provide indications of being commonly known by a domain name and complainants have not authorized the use of a mark, those respondents are not commonly known by the domain names under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
Complainant alleges that Respondent is not using the resolving website to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant urges that the resolving website hosts a series of ‘click-through’ links, and that Respondent likely profits when confused Internet users click on these links. Using a resolving website to host links from which a respondent presumably profits through clicks of confused Internet users is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Thus, the Panel finds that Respondent is not using the resolving website to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the resolving website to attract Internet users for commercial profit by hosting ‘click-through’ links from which Respondent presumably profits. Complainant also alleges that the very use of the EMV mark in the domain name creates the impression that Complainant is affiliated with and endorses the hosted links, especially because Complainant urges that “EMV” is not a word and has no meaning other than through its association with Complainant. When respondents use a domain name confusingly similar to a complainant’s mark in order to host links, and receive profit from Internet users clicking on those links, this constitutes bad faith use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Accordingly, the Panel finds Respondent is using the <emvsolutions.us> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the EMV mark. Complainant urges that because “EMV” lacks meaning outside of its association with Complainant, there is no possible reason why Respondent would register the <emvsolutions.us> domain name, except to capitalize on the notoriety of Complainant’s EMV mark, proving Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. The Panel agrees. See Via Rail Canada Inc. v. Mean Old Man Prods., AF-0759 (eResolution Apr. 23, 2001) (“A strong trademark, where unique because of its coined origins . . . might effectively preclude any legitimate or good faith registration or use of an identical or similar domain name.”). Past panels have also have found bad faith when respondents’ registration indicates having been aware of a complainant’s rights. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Accordingly, the Panel finds that Respondent’s registration of the <emvsolutions.us> domain name constitutes bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emvsolutions.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 11, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page