Fair Isaac Corporation v. Sashi Nair / FICO SOFTWARE SOLUTIONS
Claim Number: FA1801001768555
Complainant is Fair Isaac Corporation (“Complainant”), represented by James Woodward of Fair Isaac Corporation, Minnesota, USA. Respondent is Sashi Nair / FICO SOFTWARE SOLUTIONS (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ficosoftwaresolutions.com>, registered with GoDaddy.com, 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.
David S. Safran as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 24, 2018; the Forum received payment on January 24, 2018.
On January 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ficosoftwaresolutions.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 January 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 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@ficosoftwaresolutions.com. Also on January 26, 2018, 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.
A timely Response was received and determined to be complete on January 29, 2018.
On February 2, 2018, an additional Submission was received here from Complainant which complies with Supplemental Rule 7.
On February 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Fair Isaac Corporation, has used its FICO mark since at least 1995 to promote its products and services in the financial decision management technology. Complainant established rights in the FICO mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,273,432, registered Aug. 31, 1999). See Compl. Ex. B. Respondent’s <ficosoftwaresolutions.com> domain name is confusingly similar to Complainant’s FICO mark because it merely adds the generic term “software solutions” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the <ficosoftwaresolutions.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion. Nothing in the WHOIS information would indicate that Respondent is commonly known by the at-issue domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <ficosoftwaresolutions.com> domain name to pass off as Complainant as it resolves to a website that offers similar and related goods and services that compete with Complainant’s business. See Compl. Ex. E.
Respondent registered and used the domain name in bad faith. Respondent established a pattern of bad faith registration and use through its involvement in a prior adverse UDRP decision. See Compl. Ex. C. Further, Respondent used the <ficosoftwaresolutions.com> domain name to disrupt Complainant’s business by diverting Internet users to Respondent’s competing website. See Compl. Ex. E. Finally, Respondent registered the <ficosoftwaresolutions.com> domain name with actual and constructive knowledge of Complainant’s rights in the FICO mark, shown by the use of the FICO mark in the domain name and the competitive services offered on the resolving webpage, along with the repeated communications between Complainant and Respondent regarding the continued infringing use of the FICO mark. See Compl. Ex. E (resolving webpage for the disputed domain) & Compl. Ex. F (email communication between the parties).
B. Respondent
Respondent’s business is named “Financial Information Company Organized Software Solutions” (F.I.C.O.S.S.) and has no relation to Complainant.
C. Additional Submissions
Respondent did not refute any allegation made by Complainant. Further, Respondent’s Response indicates further bad faith, as it offers to sell the <ficosoftwaresolutions.com> domain name for $10,000.00.
Respondent registered the domain which is confusingly similar to a trademark in which Complainant has rights with actual knowledge of Complainant’s trademark, has used the domain in competition with Complainant, and is not known by the domain name and has acquired no rights in it.
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.
Complainant contends it established rights in its FICO mark through registration with the USPTO (e.g. Reg. No. 2,273,432, registered Aug. 31, 1999). See Compl. Ex. B. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant established rights in the FICO mark under Policy ¶ 4(a)(i).
Next, Complainant claims that Respondent’s <ficosoftwaresolutions.com> domain name is confusingly similar to Complainant’s FICO mark because it merely adds the generic term “software solutions” and the gTLD “.com” to the fully incorporated mark. The addition of a generic term and a gTLD do not negate confusing similarity between a mark and a disputed domain name. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). As such, the Panel agrees and holds that Respondent’s <ficosoftwaresolutions.com> domain name is confusingly similar to Complainant’s FICO mark.
The Panel recognizes that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims that Respondent does not have rights or legitimate interests in the <ficosoftwaresolutions.com> domain name. A respondent may lack rights and legitimate interests in a domain name when the respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The WHOIS information of record lists “Sashi Nair / FICO SOFTWARE SOLUTIONS” as the registrant of the domain name. See Compl. Ex. A. Complainant contends it has not licensed or otherwise authorized Respondent to use its mark in any fashion and Respondent did not provide any affirmative evidence to suggest that it is commonly known by the disputed domain name. A respondent may lack rights and legitimate interests in a domain name if the complainant has not authorized the respondent to use the mark and the respondent fails to provide evidence that respondent is commonly known by the domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). As such, the Panel holds that Respondent is not commonly known by the <ficosoftwaresolutions.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant claims Respondent is not using the <ficosoftwaresolutions.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Complainant avers that Respondent uses the <ficosoftwaresolutions.com> domain name to pass off as Complainant as it resolves to a website that offers similar and related goods and services that compete with Complainant’s business. Use of a confusingly similar domain name to pass off as a complainant and offer competing goods is generally not considered to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant contends that screenshots of the <ficosoftwaresolutions.com> domain name’s resolving website indicate that the site copies information from Complainant’s <fico.com> website. Compare Compl. Ex. D (Screenshots of Complainant’s <fico.com> website)with Ex. E. (Screenshots of Respondent’s <ficosoftwaresolutions.com> domain name). Specifically, Complainant alleges that Respondent’s website imitates Complainant’s company description, as well as the products and services offered by Complainant’s business. Id. Accordingly, the Panel holds that Respondent attempts to pass off as Complainant to offer competing goods, indicative of possessing no rights and legitimate interests in the domain name under Policy ¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and used the domain name in bad faith, as Respondent established a pattern of bad faith registration and use through its involvement in a prior adverse UDRP decision. A respondent’s involvement in prior adverse UDRP decisions may establish a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).” Complainant provides the UDRP decision it references in Exhibit C, where the respondent was “Sashi Nair,” the domain name was <ficosoftware.com>, and the respondent was ordered to transfer the domain name to the complainant, “Fair Isaac Corporation.” See Compl. Ex. C. As such, the Panel agrees that Respondent has been involved in prior adverse UDRP decisions in bad faith under Policy ¶ 4(b)(ii).
Further, Complainant claims that Respondent used the <ficosoftwaresolutions.com> domain name to disrupt Complainant’s business by diverting Internet users to Respondent’s competing website. Using a disputed domain name to disrupt a complainant’s business by offering competing goods or services can evince bad faith under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Complainant’s screenshot of Respondent’s resolving webpage shows that Respondent displays similar content to the content located at Complainant’s own webpage. Compare Compl. Ex. D with Compl. Ex. E. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business by offering competing goods or services in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the FICO mark at the time of registering the disputed domain name. The Panel agrees with Complainantthat Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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 contends that Respondent registered the <ficosoftwaresolutions.com> domain name with knowledge of Complainant’s rights in the FICO mark, shown by the use of the FICO mark in the domain name and the competitive services offered on the resolving webpage, along with the repeated communications between Complainant and Respondent regarding the continued infringing use of the FICO mark. See Compl. Ex. E (resolving webpage for the disputed domain) & Compl. Ex. F (email communication between the parties). The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, In Complainant’s Additional Submission, Complainant claims that Respondent offered to sell the <ficosoftwaresolutions.com> domain name to Complainant for $10,000.00 in excess of out-of-pocket expenses associated with the domain name. Offering to sell a confusingly similar domain name for costs in excess of out-of-pocket expenses can evince bad faith registration under Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Accordingly, the Panel agrees that Respondent’s offering of the domain name for sale for 10,000.00 constitutes an offer in excess of out-of-pocket expenses, and thus, the Panel agrees that Respondent has acted in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ficosoftwaresolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
David S. Safran, Panelist
Dated: February 15, 2018
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