EMVCO, LLC c/o Visa Holdings v. Kevin Hodes / Meridian Payment Systems
Claim Number: FA1511001647508
Complainant is EMVCO, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Kevin Hodes / Meridian Payment Systems (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <emvauth.com>, <emvauthorize.com>, <emvchyp.com>, <emvchypcards.com>, <emvfaqs.com>, <emvterm.com>, <emvterms.com>, <emvtrans.com>, <emvverify.com>, and <getemvnow.com>, registered with Wild West Domains, 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2015; the Forum received payment on November 18, 2015.
On November 18, 2015, Wild West Domains, Llc confirmed by e-mail to the Forum that the <emvauth.com>, <emvauthorize.com>, <emvchyp.com>, <emvchypcards.com>, <emvfaqs.com>, <emvterm.com>, <emvterms.com>, <emvtrans.com>, <emvverify.com>, and <getemvnow.com> domain names are registered with Wild West Domains, Llc and that Respondent is the current registrant of the names. Wild West Domains, Llc has verified that Respondent is bound by the Wild West Domains, 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 November 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@emvauth.com, postmaster@emvauthorize.com, postmaster@emvchyp.com, postmaster@emvchypcards.com, postmaster@emvfaqs.com, postmaster@emvterm.com, postmaster@emvterms.com, postmaster@emvtrans.com, postmaster@emvverify.com, and postmaster@getemvnow.com. Also on November 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.
A timely Response was received and determined to be complete on December 10, 2015.
On December 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Roberto A. Bianchi 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.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends as follows:
Complainant has rights in the EMV trademark based on registration of the mark with the USPTO (Reg. No. 3,233,769, registered April 24, 2007). Compl., at Attached Ex. D. Respondent’s disputed domains are confusingly similar to the EMV marks. All disputed domain names include the EMV mark, and add the generic top-level domain “.com” plus generic terms. These differences do not differentiate the disputed domain names from Complainant’s mark to a degree that would prevent a finding of confusing similarity.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been commonly known by the disputed domain names, nor has Respondent been authorized to use the EMV mark in any manner. Additionally, Respondent’s use of the disputed domain names, to redirect users to Respondent’s competing website, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compl., at Attached Ex. E.
Respondent has registered and is using the disputed domain names in bad faith. Respondent, through use of confusingly similar domain names which redirect to Respondent’s commercial website, has attracted and confused Internet users for commercial profit. Further, Respondent had knowledge of Complainant’s rights in the EMV mark at the time the disputed domain names were registered.
B. Respondent
In its Response, Respondent contends the following:
Respondent purchased the disputed domain names to redirect them to his website with the goal of assisting merchants with the EMV switch. Respondent has been in the credit card processing world since 1999.
Respondent paid just under $300 for the disputed domain names and would be willing to relinquish them for the price he paid to register them.
Respondent had no intention of deceiving or harming the EMV brand in any way.
Complainant owns U.S. Registration No. 3,233,769, Reg. Date April 24, 2007, filed on July 9, 1999, for the mark EMV, covering “magnetically encoded smart cards containing an integrated circuit chip for electronic consumer and business payment transactions; magnetically encoded charge cards, bank cards, credit cards, debit cards and payment cards, all containing an integrated circuit chip for consumer and business payment transactions; magnetic coded card readers; point of sale transaction terminals; encryption keys and digital certificates for securing electronic data transmissions; computer hardware and computer security software, namely, encryption software; computer software for authentication, encryption and identification in financial and sales transactions; computer operating systems to insure the security of businesses and computer networks, and to provide security and access control; computer operating systems for financial transactions on computer networks.”
The disputed domain names were registered on July 13, 2015.
Respondent runs a business of merchant services at the “www.swypit.com” website. Respondent redirected the disputed domain names to this website.
On August 18, 2015, Complainant sent an email to Respondent asserting Complainant’s rights in the EMV mark and requesting Respondent the transfer to Complainant or the abandonment of the disputed domain names. On September 27, 2015, Complainant’s counsel sent a cease and desist letter to Respondent in relation to the disputed domain names. Apparently Respondent did not reply to any of these communications.
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.
Complainant contends that Respondent is not commonly known by any of the disputed domain names, and that Respondent is not an authorized licensee, distributor, retailer or subsidiary of Complainant. Respondent has never been authorized to use Complainant’s EMV mark, nor has Complainant authorized or licensed Respondent to supply or distribute Complainant’s goods or services. Complainant further states that the term “EMV” is not a descriptive or geographically significant word in which Respondent might have a claim to rights of use. Complainant also contends that Respondent is not making a legitimate noncommercial or fair use of the EMV mark. Instead, Respondent registered and is using the disputed domain names in connection with a site that provides competitive goods and services to those offered under Complainant’s EMV mark. For example, when an Internet user enters the domain name <getemvnow.com>, he or she is immediately redirected to Respondent’s commercial website,”www.swypit.com”. Exhibit E. Respondent’s current use of the disputed domain names to trade off the good will of Complainant, and to falsely suggest an affiliation with or approval by Complainant, is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the Domain Names pursuant to Policy ¶ 4(c)(iii).
In support of these contentions Complainant submits a printout of a website showing that at least on November 13, 2015 the <getemvnow.com> disputed domain name was redirected to the “www.swypit.com” website of Respondent where card processing and other merchant services are offered. The Panel has conducted a search of archived pages on the Wayback Machine at “www.archive.org” and found an archived page with a similar content for the <emvverify.com> disputed domain name corresponding to August 1, 2015. In fact, Respondent itself admits in his Response to previously having redirected the disputed domain names to his commercial website. See Resp.
The Panel cannot but agree with Complainant that this redirection of a disputed domain name to a commercial website offering services in competition with those provided by Complainant is neither a bona fide offering pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Panel also notes that Respondent does not appear to be known – commonly or otherwise- by the disputed domain names, which excludes the application of Policy ¶ 4(c)(ii). In sum, Complainant has made a prima facie case that Respondent lacks any rights and interests in the disputed domain names. For its part Respondent fails to come forward with any contention or argument stating that it has at least a right or legitimate interest in the disputed domain names.
The Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain names.
The Panel notes that Complainant’s registration of the EMV mark predates the registration of the disputed domain names by several years. See Findings above. Also, the fact that Respondent´s redirected the disputed domain names to a website offering services in competition with those covered by Complainant`s EMV mark leads to infer that Respondent knew of Complainant`s mark and targeted it at the time of registering the disputed domain names. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith.
Complainant has shown that at least the <getemvnow.com> disputed domain names was redirected to Respondent`s “www.swypit.com” commercial website offering card processing and other merchant services mostly related with electronic payments, i.e., the business sector where the products and services covered by Complainant’s EMV mark are also offered. Also, as stated above, the Wayback Machine has archived pages showing that the <emvverify.com> domain name also had been redirected to “www.swypit.com”. Moreover, in its Response Respondent itself states,
“In July of 2015, I purchased the domains in question to point to my web site hoping I could be a good resource for assisting merchants with the emv switch. I have been in the credit card processing world since 1999.”
In the Panel’s opinion, this shows that Respondent, by using the disputed domain names as described, has intentionally attempted to attract, for commercial gain, Internet users presumably to his website, by creating a likelihood of confusion with Complainant’s EMV mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website., which is a circumstance of registration and use in bad faith of the disputed domain names pursuant to Policy ¶ 4b(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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emvauth.com>, <emvauthorize.com>, <emvchyp.com>, <emvchypcards.com>, <emvfaqs.com>, <emvterm.com>, <emvterms.com>, <emvtrans.com>, <emvverify.com>, and <getemvnow.com> domain names be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi
Panelist
Dated: January 4, 2016
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