EMVCO, LLC c/o Visa Holdings v. DNS Manager / Profile Group
Claim Number: FA1511001647505
Complainant is EMVCO, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, United States. Respondent is DNS Manager / Profile Group (“Respondent”), Delaware, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ineedemv.com>, registered with Name.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2015; the Forum received payment on November 19, 2015.
On November 20, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <ineedemv.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 November 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@ineedemv.com. Also on November 24, 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.
A timely Response was received and determined to be complete on December 14, 2015.
On December 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Complainant submitted an Additional Submission on December 22, 2015. Complainant’s Additional Submission was submitted beyond the time period allowed and therefore has not been considered by the Panel.
Respondent submitted a document under protest entitled “Respondent’s Provisional Reply to Complainant’s Additional Submission” on December 23, 2015, which constitutes a timely submission. However, since Complainant’s Additional Submission has not been considered, the Panel also declines to consider Respondent’s reply.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <ineedemv.com> domain name is confusingly similar to Complainant’s EMV mark.
2. Respondent does not have any rights or legitimate interests in the <ineedemv.com> domain name.
3. Respondent registered and uses the <ineedemv.com> domain name in bad faith.
B. Respondent
1. Respondent’s <ineedemv.com> domain name is not confusingly similar to Complainant’s EMV mark, as EMV is an acronym for other things.
2. Respondent is using the <ineedemv.com> domain name for a legitimate pay-per-click business.
3. Respondent did not register and is not using the <ineedemv.com> domain name in bad faith, as the links on the resolving website do not currently compete with Complainant’s business.
Complainant uses its EMV mark in connection with secure payment transactions. Complainant has registered the EMV mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,233,769, registered April 24, 2007).
The <ineedemv.com> domain name was registered on October 19, 2014. It was used to compete with Complainant and is now used for pay-per-click advertising.
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.
The Panel finds that Complainant’s registration of its EMV mark with the USPTO demonstrates its rights in its mark for purposes of 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)).
Respondent’s <ineedemv.com> domain name incorporates Complainant’s mark and merely adds the generic words “I” and “need” and the gTLD “.com.” Previous panels have held that the addition of generic terms to a complainant’s mark does not distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Previous panels have also found that the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel finds that Respondent’s <ineedemv.com> domain name is confusingly similar to Complainant’s EMV mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the <ineedemv.com> domain name.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, and is not commonly known by the disputed domain name or any variant of Complainant’s mark. Complainant also states that Respondent has no license or authorization to use Complainant’s mark. The WHOIS information lists “DNS Manager / Profile Group” as registrant of the disputed domain name. Past panels have concluded that a respondent is not commonly known by a disputed domain name where the WHOIS information does not indicate that the respondent is affiliated with the complainant, and where the complainant has not authorized the use of its mark in the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Respondent offers no argument or evidence that it is commonly known by the disputed domain name. The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the <ineedemv.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name resolves to pay-per-click websites from which Respondent derives revenue through the advertisement of products and services that are in direct competition with Complainant’s business. The Panel notes Complainant’s Exhibit F for printouts of Respondent’s resolving website, which show competing links. Respondent argues that the printouts are from a time period before Respondent started using the disputed domain name. However, the Panel finds that the printouts show that the most likely use of the disputed domain name is competition or at least association with Complainant, regardless of who is using it. The use of the letters EMV makes no sense otherwise. Despite Respondent’s argument that there are many other possible references for the letters EMV, Respondent did not argue any other possible reason for the selection of EMV connected with the use of the disputed domain name. The letters do not hold general meaning, apart from Complainant’s trademark, as do other descriptive or generic words in domain names that have been deemed available for widespread use.
Respondent is currently using a domain name containing Complainant’s registered and incontestable mark for pay-per-click advertising. Past panels have found that a respondent’s attempt to use a confusingly similar domain name to sell products and services that are unrelated to a complainant’s business does not constitute 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). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). While Complainant’s EMV mark may not be as famous as the SEIKO mark, the Panel finds that Respondent is nonetheless using the disputed domain name to divert Internet users looking for Complainant’s products or services to Respondent’s pay-per-click website. This does not constitute a legitimate business. Therefore, the Panel finds that Respondent is not using the disputed domain name in connection 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the disputed domain name to profit from Internet user’s confusion, thereby engaging in bad faith registration and use under Policy ¶ 4(b)(iv). Past panels have held that such use of a disputed domain name to display links to websites that offer third-party products and services constitutes bad faith under 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); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
The Panel finds that 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 <ineedemv.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 30, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page