EMVCo, LLC c/o Visa Holdings v. Denis Petrov / Private Person
Claim Number: FA2011001920896
Complainant is EMVCo, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Denis Petrov / Private Person (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emv.solutions>, registered with Tucows Domains 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2020; the Forum received payment on November 16, 2020.
On November 17, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <emv.solutions> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 November 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2020 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@emv.solutions. Also on November 20, 2020, 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 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant provides secure payment transactions under the EMV trademark. Complainant has rights in the EMV trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,233,769, registered on April 24, 2007). Respondent’s <emv.solutions> domain name is confusingly similar to Complainant’s trademark because it includes the entire EMV trademark and simply adds the “.solutions” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <emv.solutions> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the EMV trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to offer goods and services that directly compete with Complainant. Furthermore, Respondent offers the disputed domain name for sale at an excessive price.
Respondent registered and uses the <emv.solutions> domain name in bad faith. Respondent diverts consumers away from Complainant’s website and to Respondent’s own website for profit where Respondent offers competing goods and services. Additionally, Respondent has actual knowledge of Complainant’s rights in the EMV trademark based on the resolving webpage for the disputed domain name which features Complainant’s trademark and offers competing goods and services for sale.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registration:
No. 3,233,769 EMV (word), registered April 24, 2007 for goods in intl class 9.
The disputed domain name was registered on October 23, 2018.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the EMV trademark based on registration with the USPTO (Reg. No. 3,233,769, registered on April 24, 2007). Registration of a trademark with the USPTO is a valid showing of rights in a trademark. 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)). Since Complainant provides evidence of registration of the EMV trademark with the USPTO, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant aruges that Respondent’s <emv.solutions> domain name is confusingly similar to Complainant’s trademark because it includes the entire EMV trademark and simply adds the “.solutions” gTLD. The addition of a gTLD to a trademark is insufficient to distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶ 4(a)(i).”). Thus, the Panel find that the disputed domain name is identical to the EMV trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 argues that Respondent does not have rights or legitimate interests in the <emv.solutions> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the EMV trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent lacks rights in a mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS information lists “Denis Petrov / Private Person” as the registrant and no information suggests that Complainant has authorized Respondent to use the EMV trademark in any way. Thus, the Panel find that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to offer competing goods and services. The use of a disputed domain name to offer goods or services that compete with a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Here, Complainant provides a screenshot showing the resolving webpage for the disputed domain name which features Complainant’s EMV trademark in Respondent’s trade name and appears to offer goods and services that directly compete with those Complainant offers under its EMV trademark. Thus, the Panel agree with Complainant and find that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Furthermore, Complainant asserts that Respondent lacks rights or legitimate interests in the <emv.solutions> domain name because Respondent offers to sell the disputed domain name to Complainant for an excessive price. An offer to sell a disputed domain name for an amount in excess of out-of-pocket costs suggests a respondent does not have rights or legitimate interests in the domain name per Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”). Complainant provides an email that Respondent sent in response to Complainant’s cease and desist notice in which Respondent offers to abandon the domain for $10,000. Therefore, the Panel find that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Complainant argues that Respondent registered and uses the <emv.solutions> domain name in bad faith because Respondent diverts consumers away from Complainant’s website to Respondent’s own website for profit where Respondent offers competing goods and services. Under Policy ¶ 4(b)(iv), use of a disputed domain name to offer competing goods and services and to divert Internet users for profit is evidence of bad faith. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s trademark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its trademark); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As already noted, Complainant has provided screenshots of the resolving webpage for the disputed domain which features Complainant’s EMV trademark in Respondent’s trade name and offers goods and services that directly compete with Complainant. Therefore, the Panel find that this is a clear case of bad faith registration and use under Policy ¶ 4(b)(iv).
Additionally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the EMV trademark at the time of registration based on the resolving webpage for the disputed domain name which, as said and described above, features Complainant’s trademark and offers competing goods and services for sale. Actual knowledge may be found based on the use made of a disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant argues that since the EMV trademark is incorporated into Respondent’s trade name on the resolving webpage for the disputed domain and because the disputed domain offers the same goods and services that Complainant offers under its EMV trademark, Respondent must have had actual knowledge of Complainant’s rights in the trademark at the time Respondent registered the <emv.solutions> domain name. The Panel agree with the Complainant, with further reference to the fact that the Respondent has obviously tried to give the impression that the Respondent is the same as the Complainant, or at least is closely related to the Complainant, and the Panel find that Respondent had actual knowledge of Complainant’s rights in the EMV trademark at the time of registration. The Panel therefore find bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emv.solutions> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 28, 2020
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