EMVCo, LLC c/o Visa Holdings v. Domain Administrator / China Capital Investment Limited
Claim Number: FA1705001732580
Complainant is EMVCo, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, U.S.A. Respondent is Domain Administrator / China Capital Investment Limited (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chipsoemv.com> and <emvliabilityshift.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2017; the Forum received payment on May 19, 2017.
On May 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chipsoemv.com> and <emvliabilityshift.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@chipsoemv.com, and postmaster@emvliabilityshift.com. Also on May 25, 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 June 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The business of Complainant is the facilitation of financial transactions worldwide.
Complainant holds a registration for the EMV mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,233,769, registered April 24, 2007).
Respondent registered the disputed domain names <chipsoemv.com> and <emvliabilityshift.com> on September 21, 2015, and April 26, 2016, respectively.
The generic terms “chipso”, “liability” and “shift,” which are embedded in the domain names, are descriptive of Complainant’s business.
The domain names are confusingly similar to Complainant’s EMV mark.
Respondent has not been commonly known by either of the domain names.
Complainant has not authorized Respondent to use the EMV mark.
Respondent is not using the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has used one of the domain names to resolve to a website that offered goods and services in competition with the business of Complainant.
Currently, both domain names redirect Internet users to webpages that merely recite: “Coming Soon.”
Complainant has sent to the attention of Respondent a letter demanding that it cease and desist its use of the domain names, to which Respondent responded by refusing to do so.
Respondent has neither any rights to nor any legitimate interest in the either of the domain names.
Respondent knew of Complainant and its rights in the EMV mark when it registered the domain names.
Respondent intends to use the domain names to divert Internet users from Complainant’s website for Respondent’s commercial benefit.
Respondent has registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum August 11, 2015):
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 … USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <chipsoemv.com> and <emvliabilityshift.com> domain names are confusingly similar to Complainant’s EMV mark. Each of the domain names incorporates the mark in its entirety, merely adding the generic terms “chipso”, “liability” and “shift,” which are descriptive of Complainant’s business, plus the generic Top Level Domain (“gTLD”), “.com”. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a UDRP complainant’s products, and of the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the domain names
<chipsoemv.com> and <emvliabilityshift.com>, and that Complainant has not authorized Respondent to use its EMV mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Domain Administrator,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the contested domain names so as to have acquired rights to or legitimate interests in either of them within the purview of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information identified “Fred Wallace” as the registrant of the domain name). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a UDRP respondent was not commonly known by a disputed domain name where a complainant had not authorized that respondent to incorporate its NAVISTAR mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs both of the domain names <chipsoemv.com> and <emvliabilityshift.com>, which were registered on September 21, 2015, and April 26, 2016, respectively, to resolve to websites that redirect Internet users to webpages that recite only the words: “Coming Soon.” In the circumstances here obtaining, this use of the domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the domain names as described in those provisions. See, for example, Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum April 12, 2007) (finding, under Policy ¶ 4(c)(i) and ¶ 4(c)(iii), that a respondent lacked rights to or legitimate interests in a domain name that was confusingly similar to the mark of another where that Respondent had not made demonstrable preparations to use the domain name legitimately since its registration months prior to the filing of a UDRP complaint).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent knew of Complainant and its rights in the EMV mark when it registered the challenged <chipsoemv.com> and <emvliabilityshift.com> domain names. This demonstrates Respondent’s bad faith in registering the domain names. See Norgren GmbH v. Domain Admin / Private Registrations, FA1501001599884 (Forum February 25, 2014) (finding, under Policy ¶ 4(a)(iii), bad faith registration of a domain name where a respondent knew of a complainant and its rights in a mark at the time it registered a confusingly similar domain name.
This leaves the question whether Respondent has also used the domain names in bad faith. Particularly in light of Respondent’s registration of two domain names appropriating Complainant’s EMV mark and its failure to respond to the Complaint in this proceeding, we conclude that it has. See, for example,
Comerica Inc. v. Horoshiy, Inc., D2004-0615 (WIPO October 18, 2004):
Whether Respondent has used Complainant’s name in bad faith is less clearly evident on the facts. Indeed, Respondent’s conduct is distinctive in the fact that it has registered, but does not appear to have used, the domain names in dispute in any distinctive way. There is no evidence that Respondent has used the domain name [sic] to attract Complainant’s customers to Respondent’s business, nor even that Respondent has any business at all, other than registering the disputed domain names for some as yet undetermined design. No evidence has been adduced that Respondent has sought to sell the disputed domain names to others, although Respondent has purchased or otherwise secured the disputed domain names from another,…. Nor has Respondent sought to extract a sales price from Complainant; but instead has remained wholly silent in the face of Complainant’s protestations about the registration of the disputed domain names. No matter. What can reasonably be concluded is that Respondent is a cybersquatter even though his exact purpose is as yet undetermined, other than to deliberately appropriate Complainant’s name. This is a classic case of passive holding, as outlined in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Should Respondent be required to relinquish the disputed domain names in the absence of its explicit use of them? I think so. The very act of having acquired them raises the probability of Respondent using them in a manner that is contrary to Complainant’s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such disputed names can be put that would not violate Complainant’s rights. See eg. Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. To argue that Complainant should have to wait for some future use of the disputed domain names to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The result would be the likelihood of the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant’s goodwill and business. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent’s bad faith. On the contrary, it raises the specter of continuing bad faith abuse by Respondent of Complainant’s Mark, name and related rights and legitimate business interests.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <chipsoemv.com> and <emvliabilityshift.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 26, 2017
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