EMVCo, LLC c/o Visa Holdings v. William DePaul
Claim Number: FA1712001762613
Complainant is EMVCo, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is William DePaul (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <evmcompliance.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 December 13, 2017; the Forum received payment on December 13, 2017.
On December 14, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <evmcompliance.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 December 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2018 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@evmcompliance.com. Also on December 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 January 8, 2018, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has used its EMV mark in connection with the management and marketing of its business in secure payment transactions since 1999.
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 domain name <evmcompliance.com> on or about July 4, 2017.
The domain name is confusingly similar to Complainant’s EMV mark.
Complainant has not licensed or otherwise authorized Respondent to use its EMV mark in any fashion.
Respondent has not been commonly known by the domain name.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to resolve to a website that, for Respondent’s commercial gain, markets goods and services competing with those offered by Complainant.
Respondent also uses the domain name to perpetrate a form of fraud, commonly called “phishing,” upon unsuspecting Internet users by employing the domain name to deliver e-mail messages purporting to be sent on behalf of the entity “EMV Compliance” to support an invoice scam designed to deceive merchants into sending money to pay for fictional certification services.
Respondent does not have rights to or legitimate interests in the domain name.
The domain name is an instance of typo-squatting.
Respondent knew of Complainant and its rights in the EMV mark when it registered the domain name.
Respondent registered and is using the <evmcompliance.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
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 BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of its mark with the USPTO adequately proved its rights under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <evmcompliance.com> domain name is confusingly similar to Complainant’s EMV mark. The domain name contains the mark in its entirety, merely transposing the letters “m” and “v,” appending the term “compliance,” which can be taken to relate to an aspect of complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015):
Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).
See also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding that the addition of a generic term and a gTLD to the mark of another in creating a domain name was insufficient to distinguish that domain name from the mark under Policy ¶ 4(a)(i)).
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 name. 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 they are 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 name 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 the <evmcompliance.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its EMV mark in any fashion. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “William DePaul,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum December 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in a domain name where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark, and where it failed to submit evidence that it was commonly known by that domain name). See also State Farm Mutual Automobile Ins. Co. v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding, under Policy ¶ 4(c)(ii), that, because the relevant WHOIS record listed “Dale Anderson” as the registrant of a disputed domain name, a respondent failed to show that it was commonly known by an entirely dissimilar domain name).
We next observe that Complainant alleges, without objection from Respondent, that Respondent uses the <evmcompliance.com> domain name to resolve to a website that markets services competing with those of Complainant, presumably to commercially benefit Respondent by means of the receipt of pay-per-click fees. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name within the meaning of those subsections of the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding, under Policy ¶¶ 4(c)(i) and (iii), that a respondent’s employment of a domain name that was confusingly similar to the mark of a UDRP complainant in order to compete with the business of that complainant was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use). See also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.
We also take note of Complainant’s undenied assertion that Respondent uses the <evmcompliance.com> domain name to achieve commercial gain by perpetrating a fraud upon unsuspecting internet users. This too is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use within the purview of the Policy. See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum August 8, 2017):
[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.
Further see Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for 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 therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the contested <evmcompliance.com> domain name, which we have found to be confusingly similar to Complainant’s EMV mark, to attempt to profit financially from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (finding that a respondent’s use of a challenged domain name to display links to the websites of a UDRP complainant’s commercial competitors demonstrated bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
We are also convinced by the evidence that Respondent uses the disputed <evmcompliance.com> domain name to profit from the operation of a fraudulent phishing scheme. This employment is the very definition of bad faith registration and use of the domain name. See, for example, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015):
Respondent uses the … domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
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 <evmcompliance.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 18, 2018
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