Chex Systems, Inc. v. CREDIT Webmaster
Claim Number: FA1511001647594
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is CREDIT Webmaster (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexassist.com>, registered with Wild West Domains, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 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 <chexassist.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. 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@chexassist.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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 has rights in the CHEXSYSTEMS mark, and other marks using the term CHEX through registration in the United States in 2006. Its business includes a consumer reporting agency governed by the federal Fair Credit Reporting Act and other laws. Complainant offers free services to consumers under its CHEXSYSTEMS name and mark. In particular, its provides consumers with free copies of the consumer’s personal report in its database upon the consumer’s request. Complainant has used the domain name <chexhelp.com> to direct Internet users to its other web sites.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s CHEXSYSTEMS mark. The disputed domain name includes the prominent word “CHEX” in the mark, removes the term “SYSTEMS,” adds the generic term “assist,” and adds the generic top-level domain (“gTLD”) “.com.” Respondent’s inclusion of the dominant portion of Complainant’s CHEXSYSTEMS mark, while merely adding a generic term, demonstrates that Respondent’s domain is not sufficiently distinguished from Complainant’s mark. Complainant cites UDRP precedents to support its position.
Respondent has no rights or legitimate interests in the disputed domain name. Nothing in the record, including WHOIS information, indicates Respondent is commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain name, to phish for internet user information while attempting to pass itself off as Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The website that resolves from the disputed domain name prominently displays the CHEXSYSTEMS mark and invites consumers to “challenge your negative items on your ChexSystems report” and displays an unauthorized online copy of Chex Systems’ Request for Consumer Statement form with live data fields where consumers may enter personal and confidential information including, for example, the consumer’s Social Security number, driver’s license number, and bank account information. Complainant cites UDRP precedents to support its position.
Respondent has registered and is using the disputed domain name in bad faith. Respondent bad faith is evident from using Complainant’s mark to confuse and attract internet users for commercial gain. Respondent is competing and disrupting Complainant’s business through offering competing content in opposition to Complainant. Respondent’s phishing activity demonstrates bad faith. Finally, Respondent’s use of Complainant’s mark on the webpage that resolves from the domain and the domain name itself indicate that Respondent had actual knowledge of Complainant’s CHEXSYSTEMS mark at the time of registration. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark CHEXSYSTEMS and uses them to market its consumer reporting services.
Complainant’s registration of its mark dates back to 2006.
The disputed domain names were registered in 2014.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name points to a web sites that is used for phishing. The website that resolves from the disputed domain name prominently displays Complainant’s mark and includes an unauthorized copy of Complainant’s request for consumer statement form
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.”).
The disputed domain name is confusingly similar to Complainant’s CHEXSYSTEMS mark because it differs from the mark through the removal of the term “SYSTEMS,” the addition of the generic term “assist,” and the further addition of the gTLD “.com.” Panels have held that the addition of a generic term to a mark does not differentiate the domain from a mark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Similarly, removing a portion of a mark does not reduce confusing similarity where a complainant holds many different marks that include a consistent term and interchangeable related terms. See Maple Leaf Sports & Entm’t Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is confusingly similar to the complainant’s marks, where the complainant holds many trademarks that contain the term “LEAFS”). Finally, the addition of the gTLD “.com” is consistently deemed irrelevant when analyzing confusing similarity. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
For these reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Nothing in the record, including WHOIS information, indicates Respondent is commonly known by the disputed domain name. Indeed, WHOIS information indicates that Respondent registered the disputed domain name using the name “Credit Webmaster” which does not resemble the disputed domain name. WHOIS information, along with a lack of information to the contrary, has been used by previous panels to determine that a respondent is not commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further, Respondent’s apparent attempt to pass itself off as Complainant indicates a lack of rights or legitimate interests in the disputed domain name. The website that resolves from the disputed domain name prominently displays the CHEXSYSTEMS mark and includes an unauthorized copy of Complainant’s request for consumer statement form. Prior panels have found that a respondent using a disputed domain to attempt to pass itself off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Consequently, the Panel finds that Respondent’s use does not fall within the parameters of Policy ¶ 4(a)(i) or ¶ 4(a)(iii).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Respondent’s disputed domain name resolves to a website that prominently uses Complainant’s mark and requests users fill out personal information including their social security number. Thus Respondent is competing and disrupting Complainant’s business through offering competing content in opposition to Complainant: past panels have declined to use a narrow definition of competition under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). Panels have also found that a respondent acting in opposition and thus disrupting a complainant can fall within Policy ¶ 4(b)(iii). See Yahoo! Inc. v. N/A / asghar hasan zadeh, FA 1517435 (Nat. Arb. Forum Sept. 27, 2013) (finding that Respondent is disrupting Complainant’s legitimate business, proving bad faith use and registration under Policy ¶ 4(b)(iii)).
The Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iii).
Further, Respondent intentionally attracts, for commercial gain, users who mistakenly believe that Respondent’s domain is affiliated with or owned by Complainant. Panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent phishes for user information or passes off as a complainant. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Accordingly, the Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chexassist.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 17, 2015
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