EMVCO, LLC c/o Visa Holdings v. DAVID ZUMAYA
Claim Number: FA1511001649804
Complainant is EMVCO, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is DAVID ZUMAYA (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emvwhitepaper.com>, registered with FastDomain Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2015; the Forum received payment on November 30, 2015.
On November 30, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <emvwhitepaper.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 December 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@emvwhitepaper.com. Also on December 1, 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 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 has rights in the EMV trademark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,233,769, registered April 24, 2007). Respondent’s disputed domain <emvwhitepaper.com> domain is confusingly similar to the EMV mark. The domain merely adds the generic top level domain (“gTLD”) “.com” and the descriptive term “white paper.” These differences are insufficient to differentiate the domain from Complainant’s EMV mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name or an authorized licensee, distributor, retailer or subsidiary of Complainant. Additionally, using a domain to offer goods and services that compete with Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent uses the domain to create a likelihood of confusion in the mind of internet users from which Respondent profits. Respondent’s use of Complainant’s EMV mark at the disputed domain demonstrates that Respondent had actual knowledge of Complainant rights in the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, EMVCO, LLC c/o Visa Holdings, uses its EMV mark in connection with secure payment transactions. Complainant has rights in the EMV mark through registration with the USPTO. (Reg. No. 3,233,769, registered April 24, 2007). The mark is an acronym for its founding member organizations—Europay, Mastercard and Visa—and is recognized as the authority for secure payment transactions worldwide. The <emvwhitepaper.com> domain name is confusingly similar to Complainant’s mark.
Respondent, DAVID ZUMAYA, registered the <emvwhitepaper.com> domain name on October 22, 2014. Respondent is using the domain name commercially to sell products and services that compete with Complainant.
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(f), 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 has rights in the EMV mark under Policy ¶ 4(a)(i) through registration 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 complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <emvwhitepaper.com> domain name is confusingly similar to the EMV mark under Policy ¶ 4(a)(i) as it incorporates Complainant’s certification mark and adds the descriptive term “whitepaper” and the gTLD “.com.”
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).
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not authorized or licensed Respondent to use its EMV mark. The WHOIS information for the <emvwhitepaper.com> domain name lists “David Zumaya” as the registrant. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information, an absence of authorization from a complainant, and a lack of information in the record to the contrary. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the <emvwhitepaper.com> domain name to offer goods and services that compete with Complainant which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ (c)(i) or ¶ 4(c)(iii). The domain name resolves to content that makes widespread reference to Complainant’s EMV trademark at the bottom of the home page. The resolving website uses false information to direct users to the links to commercial websites provided on the site that offer products and services that compete with the products and services certified under Complainant’s EMV certification mark. Panels have held that a respondent using a confusingly similar domain name to sell competing goods is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent uses the <emvwhitepaper.com> domain name to create a likelihood of confusion in the mind of internet users from which Respondent profits. Given the prominent use of Complainant’s EMV trademark and the offering of false information intended to direct Internet users to the commercial websites offered by or affiliated with Respondent for Respondent’s benefit, the site to which the domain name resolves falsely suggests that Complainant is affiliated with Respondent and that the links to the products and services offered on the resolving website provide products that were approved or certified by Complainant. As Respondent uses the <emvwhitepaper.com> domain name to attract and confuse internet users for commercial gain, Respondent has acted in bad faith. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Respondent had actual knowledge of Complainant’s rights in the EMV mark when Respondent registered the <emvwhitepaper.com> domain name. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emvwhitepaper.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 16, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page