Chex Systems, Inc. v. latoya benford
Claim Number: FA1702001716966
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is latoya benford (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexsystemsclearingservice.com>, registered with GoDaddy.com, LLC.
Complainant submitted a Complaint to the Forum electronically on February 10, 2017; the Forum received payment on February 10, 2017.
On February 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chexsystemsclearingservice.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2017 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@chexsystemsclearingservice.com. Also on February 14, 2017, 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 March 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink 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 is a consumer-reporting agency providing verification products and services. Complainant uses the CHEXSYSTEMS mark in conjunction with its business practices. Complainant registered the CHEXSYSTEMS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,173,774, registered Nov. 21, 2006). Respondent’s <chexsystemsclearingservice.com> is confusingly similar to Complainant’s CHEXSYSTEMS mark because it includes the mark in its entirety, adding the generic terms “clearing” and “service” and the “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <chexsystemsclearingservice.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the CHEXSYSTEMS mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <chexsystemsclearingservice.com> resolves to a website prominently displaying Complainant’s mark, attempting to pass itself off as Complainant or an affiliate of Complainant. Additionally, Respondent’s website offers goods and services in direct competition with Complainant.
Respondent registered and is using <chexsystemsclearingservice.com> in bad faith. The disputed website attracts users for Respondent’s financial gain, attempting to pass itself off as Complainant or an affiliate thereof. Respondent’s <chexsystemsclearingservice.com> disrupts Complainant’s business by offering services in direct competition with Complainant. Respondent registered <chexsystemsclearingservice.com> with actual knowledge of Complainant and its rights to the CHEXSYSTEMS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <chexsystemsclearingservice.com>domain name.
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 (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 is a consumer-reporting agency providing verification products and services. Complainant uses the CHEXSYSTEMS mark in conjunction with its business practices. Complainant registered the CHEXSYSTEMS mark with USPTO (e.g. Reg. No. 3,173,774, registered Nov. 21, 2006). The consensus among Panels is that USPTO registrations are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel concludes that Complainant’s USPTO registration is sufficient to show rights in the CHEXSYSTEMS mark.
Complainant asserts that Respondent’s <chexsystemsclearingservice.com> is confusingly similar to Complainant’s CHEXSYSTEMS mark because it includes the mark in its entirety, adding the generic terms “clearing” and “service” and the “.com” gTLD. “[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Likewise, Panels have determined that confusing similarity exists where a disputed domain name contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain; the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). Therefore, the Panel agrees, and determines that Respondent’s <chexsystemsclearingservice.com> is confusingly similar to Complainant’s CHEXSYSTEMS mark.
Complainant has proved this element.
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 (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 (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.”).
Complainant maintains that Respondent has no rights or legitimate interests in <chexsystemsclearingservice.com>. To support its argument, Complainant states that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case indicates that Respondent used the “Domains By Proxy, LLC” privacy service to shield its identity. “In light of [r]espondent’s failure to provide any evidence to the contrary,” Panels have found that “there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).” CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015). See also Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Therefore, the Panel concludes that Respondent is not commonly known by <chexsystemsclearingservice.com>.
Complainant argues it has not authorized or licensed Respondent to use the CHEXSYSTEMS mark in any regard, nor is Respondent affiliated with Complainant. Complainant further asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. In support of its argument, Complainant demonstrates that Respondent’s <chexsystemsclearingservice.com> resolves to a website prominently displaying Complainant’s mark, attempting to pass itself off as Complainant or an affiliate of Complainant. “It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant.” Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003). Additionally, Respondent’s website offers goods and services in direct competition with Complainant. Panels have found that “capitalizing on the well-known marks of [c]omplainant by attracting internet users to its disputed domain names where [r]espondent sells competing products of [c]omplainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010). The Panel finds that Respondent does not have rights or legitimate interests in <chexsystemsclearingservice.com> pursuant to the Policy.
Complainant has proved this element.
Complainant contends that Respondent registered and is using <chexsystemsclearingservice.com> in bad faith. Respondent’s <chexsystemsclearingservice.com> resolves to a website displaying Complainant’s mark and offering competing services. Complainant asserts that the disputed domain attracts users for Respondent’s financial gain, attempting to pass itself off as Complainant or an affiliate thereof. Panels have held that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated [c]omplainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon [users] who respected the goodwill surrounding [complainant’s] mark.” Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003).
Furthermore, Complainant maintains that Respondent’s <chexsystemsclearingservice.com> disrupts Complainant’s business by offering services in direct competition with Complainant. When “[r]espondent registered a domain name confusingly similar to [c]omplainant's mark to divert Internet users to a competitor's website[, it] is a reasonable inference that [r]espondent's purpose of registration and use was to either disrupt or create confusion for [c]omplainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).” Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003). Given Complainant’s assertions, the Panel agrees and finds that Respondent registered and is using <chexsystemsclearingservice.com> in bad faith under the Policy.
Finally, Complainant argues that Respondent registered <chexsystemsclearingservice.com> with actual knowledge of Complainant and its rights to the CHEXSYSTEMS mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” Panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also contends that in light of the fame and notoriety of Complainant's CHEXSYSTEMS mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered the domain names and the Panel finds bad faith.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chexsystemsclearingservice.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 20, 2017
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