`
EMVCO, LLC c/o Visa Holdings v. Lewis McClam / EMV AUDIT ORGANIZATION
Claim Number: FA1506001625626
Complainant is EMVCO, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Lewis McClam / EMV AUDIT ORGANIZATION (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emvaudit.org>, 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 June 22, 2015; the Forum received payment on June 23, 2015.
On June 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <emvaudit.org> 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 June 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@emvaudit.org. Also on June 29, 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 July 22, 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 states that it owns the EMV mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,233,769, registered April 24, 2007). This mark is used on or in connection with magnetically encoded smart cards containing an integrated circuit chip for electronic consumer and business payment transactions.
Complainant alleges that the <emvaudit.org> domain name is confusingly similar to Complainant’s EMV mark in that the disputed domain name contains the EMV mark in its entirety, along with the generic term “audit.” Further, Respondent has also attached the generic top-level domain (“gTLD”) “.org” to the disputed domain name, which is irrelevant to Policy ¶ 4(a)(i) analysis.
The Complainant claims that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, as demonstrated by the relevant WHOIS information for the disputed domain name. Additionally, Respondent is neither licensed nor authorized to use Complainant’s EMV mark. Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Previously, Respondent used the disputed domain name in an attempt to create an impression of affiliation with Complainant, as demonstrated by Respondent’s use of Complainant’s mark at a confusingly similar domain name. See Compl., at Attached Ex. E. Respondent has currently parked the disputed domain name with the Registrar, but has still placed a variety of different unrelated hyperlinks, through which Respondent presumably receives click-through fees. See Compl., at Attached Ex. F.
Respondent previously and currently uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain, by previously attempting to identify itself as an affiliate of Complainant and by currently offering click-through hyperlinks to businesses unrelated to Complainant. See Compl., at Attached Exs. E-F.
Complainant alleges that in light of the fame and notoriety of Complainant’s EMV mark, it is inconceivable that Respondent could have registered the disputed domain name without constructive and/or actual knowledge of Complainant’s rights in the mark. Complainant alleges that Respondents attempts to profit from confusion it caused on the Internet using the confusingly similar disputed domain name constitutes bad faith use and registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on December 20, 2014. The Respondent did not file a Response but did send a note to the Forum that stated as follows: “I no longer own this domain.”
As Respondent has not filed an appropriate Response to this matter, the Panel shall make its determination on this case based on the reasonable and undisputed assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s incontestable trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent engaged in bad faith use and re
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 uses the EMV mark in connection with magnetically encoded smart cards containing an integrated circuit chip for electronic consumer and business payment transactions. Complainant claims to own the EMV mark through its trademark registration with the USPTO (Reg. No. 3,233,769, registered April 24, 2007), which adequately demonstrates Complainant’s rights in the mark according to Policy ¶ 4(a)(i). See Attached Exhibit D.
Complainant argues that the <emvaudit.org> domain name is confusingly similar to the EMV mark, because the disputed domain name fully incorporates the EMV mark, while also adding the generic term “audit” and the gTLD “.org.” The addition of generic terms is an insignificant change according to Policy ¶ 4(a)(i) and that the addition of a gTLD is irrelevant to 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 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).
As such, the Panel finds that Respondent’s <emvaudit.org> domain name is confusingly similar to the EMV mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent lacks rights and legitimate interests in the disputed domain name. In so arguing, Complainant asserts that Respondent is not commonly known by the disputed domain name. Further, Complainant notes that Respondent has never been licensed or authorized to use Complainant’s EMV mark in any way. The WHOIS information identifies “Lewis McClam” as registrant of the disputed domain name. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent previously used the disputed domain name to attempt to evince an affiliation with Complainant. Complainant notes that Respondent used the EMV mark prominently throughout the disputed domain name’s resolving page, which may have confused Internet users as to its association with Complainant. See Compl., at Attached Ex. E. Complainant also notes that as soon as Complainant sent Respondent a cease and desist letter, Respondent immediately changed the use of the disputed domain name to a parked page that now offers click-through links to a variety of different unrelated businesses to that of Complainant. See Compl., at Attached Ex. F. Either behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Accordingly, the Panel finds that Respondent’s behavior, in either situation, is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant believes that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). First, Complainant alleges that Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain, which serves as evidence of Respondent’s bad faith under Policy ¶ 4(b)(iv). Specifically, Complainant mentions that Respondent previously used a confusingly similar domain name and resolving website to falsely affiliate itself with Complainant and that Respondent currently uses the disputed domain name as a parked webpage with a variety of hyperlinks unrelated to Complainant’s business. See Compl., at Attached Ex. E-F. Complainant believes that Respondent presumably receives click-through fees from the placement of such links. Either behavior constitutes bad faith under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also 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)). Consequently, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant asserts that in light of the fame and notoriety of Complainant’s EMV mark, it is inconceivable that Respondent registered the disputed domain name without constructive and/or actual knowledge. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's mark and under a totality of the circumstances, it is clear that Respondent had actual knowledge of the mark and Complainant's rights.
Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith under 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 <emvaudit.org> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: July 30, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page