Chex Systems, Inc. v. TINA SAWATZKY / SIMPLE LIFE
Claim Number: FA1508001633758
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is TINA SAWATZKY / SIMPLE LIFE (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexaccount.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2015; the Forum received payment on August 17, 2015.
On August 18, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <chexaccount.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 August 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@chexaccount.com. Also on August 19, 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 September 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 offers debit account verification and reporting services under the CHEXSYSTEMS mark.
Complainant holds a registration for the CHEXSYSTEMS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,173,774, registered November 21, 2006).
Respondent registered the <chexaccount.com> domain name on May 21, 2008.
The domain name is confusingly similar to Complainant’s CHEXSYSTEMS mark.
Respondent has not been commonly known by the domain name.
Complainant has never authorized Respondent to use its CHEXSYSTEMS mark.
Respondent has not used the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead Respondent uses the domain name to resolve to a website featuring pay-per-click advertisements, some of which relate to commercial enterprises that compete with Complainant’s business.
Respondent uses the domain name and its resolving website to pass itself off as Complainant for commercial gain.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the CHEXSYSTEMS mark when it registered the domain name.
Respondent has engaged in bad faith registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The disputed domain name registered by Respondent is neither identical nor confusingly similar to the service mark in which Complainant has rights.
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 may decide this proceeding on the basis of Complainant's undisputed representations pursuant to ¶¶’s 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to ¶ 14(b) of the Rules.
Complainant has rights in the CHEXSYSTEMS service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of that mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Panama). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under Policy ¶ 4(a)(i) whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
The first question for decision is, therefore, whether Respondent’s domain name, <chexaccount.com>, is either identical or confusingly similar to Complainant’s CHEXSYSTEMS mark.
We begin by noting that the inclusion of the generic Top Level Domain (“gTLD”) “.com” in the domain name is of no consequence to our analysis. This is because every domain name requires a gTLD. See, for example, OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” to the mark of another in creating a domain name does not distinguish the domain name from the mark under Policy ¶ 4(a)(i)). We therefore turn our attention to the balance of the domain name.
As there can be no question of the possibility of identity between the substantive portion of the domain name and the mark, we are left with the issue of confusing similarity. On the point of confusing similarity between them, the domain name does not contain the whole or any part of the mark term “systems.” Instead it contains only the four letters “chex,” to which Complainant does not lay claim standing alone, and the generic term “account.”
Complainant contends that confusing similarity exists between the mark and domain name, in part, because the included term “account” relates to its business. But it would be more correct to say that the term “account” relates to virtually every business. Complainant’s contention on this point is, therefore, of no avail.
In support of its contention on the question of confusing similarity, Complainant also cites to a line of UDRP proceedings in which it has prevailed. See Chex Systems v. Nekouie (NAF Case No. FA1308001513536) (domain name: <chexsystems.com>); Chex Systems v. Piersma (NAF Case No. FA1504001613136) (domain name <chexsystemschecking.com>); Chex Systems v. Pham Dinh Nhut (NAF Case No. FA1403001548788) (domain name <chexsystems.org>); Chex Systems v. Intieri (NAF Case No. FA1311001532210) (domain name <chexsystemsfix.com>); and Chex Systems v. Goldendex (NAF Case No. FA1311001531145) (domain name <chexsystemsgone.com>). Those cases are inapposite here because in each of them the disputed domain name contained Complainant’s entire CHEXSYSTEMS mark.
Complainant further appears to argue that virtually any domain name containing the term “chex” must be found to be confusingly similar to its CHEXSYSTEMS mark. We disagree. One need only examine the many domain names related to the familiar food products marketed under the CHEX brand to appreciate the weakness of Complainant’s contention. It is likewise significant that the term “chex” is also used in domain names related to products and services as varied as sporting goods, educational services, surgical tools and television broadcasting. Against this backdrop, Complainant simply cannot claim for itself so broad a reach for the term “chex.”
In light of all of this, it cannot be said that the <chexaccount.com> domain name is confusingly similar to Complainant’s CHEXSYSTEMS mark. Accordingly, we must find that Complainant has failed to establish that it has satisfied the proof requirements of Policy ¶ 4(a)(i).
Because Complainant has not satisfied its obligations of proof under Policy ¶ 4(a)(i), we need not analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because a UDRP complainant must prove all three elements under the Policy, its failure to prove any one of them makes inquiry into the remaining elements unnecessary). See also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (declining to inquire into a respondent’s rights to or legitimate interests in a domain name or its registration and use of that domain name in bad faith where a UDRP complainant failed to satisfy the proof requirements of Policy ¶ 4(a)(i)).
Complainant having failed to establish all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the <chexaccount.com> domain name REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: September 18, 2015
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