John H. Harland Company v. domains ventures
Claim Number: FA0511000593976
Complainant is John H. Harland Company (“Complainant”), represented by Richard A. Kempf, of Maslon Edelman Borman & Brand, LLP, 3300 Wells Fargo Center, 90 South Seventh Street, Minneapolis, MN, 55402. Respondent is domains ventures (“Respondent”), 136 Xiaoxue Road, Xiamen, Fujian 361001.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <harlandcheck.com>, registered with Moniker Online Services, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 11, 2005.
On November 15, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <harlandcheck.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 18, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 8, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@harlandcheck.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 16, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Complainant, John H. Harland Company, founded in 1923, is a leading provider of software for financial institutions, check printing services, and testing and assessment solutions for the education market.
In connection with the provision of such services, Complainant registered the HARLAND trademark with the United States Patent and Trademark Office (“USPTO”) as of July 15, 1997.
Respondent registered the <harlandcheck.com> domain name on February 20, 2004.
Respondent’s disputed domain name resolves to a website that features “popular categories” such as “Personal Checks,” “Business Checks,” “Harland Check,” “Employment at Harland Check,” “Harland Check Company” and “Mms Personal Checks.”
Respondent’s <harlandcheck.com> domain name is confusingly similar to Complainant’s HARLAND mark.
Respondent does not have any rights or legitimate interests in the <harlandcheck.com> domain name.
Respondent has registered and uses the <harlandcheck.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the subject 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."
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(e), 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 (Nat. Arb. Forum July 31, 2000); 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.”
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:
a. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
b. Respondent has no rights or legitimate interests in respect of the domain name; and
c. the domain name has been registered and is being used in bad faith.
Complainant established rights in the HARLAND mark pursuant to Policy ¶ 4(a)(i) through registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”; see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Complainant contends that Respondent’s <harlandcheck.com>
domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name incorporates
Complainant’s entire HARLAND mark and adds the generic term “check,” a term
that describes the business in which Complainant engages. The Panel finds that Respondent’s domain
name is confusingly similar to Complainant’s mark because it merely adds the
generic word “check,” which does not significantly distinguish the domain name
from the mark. See Marriott Int’l,
Inc. v. Café au lait, FA 93670 (Nat. Arb. Forum Mar. 13, 2000) (finding
that the respondent’s domain name <marriott-hotel.com> is confusingly
similar to the complainant’s MARRIOTT mark); L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with the complainant’s registered mark
“llbean” does not circumvent the complainant’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy).
Thus Complainant has satisfied the proof requirements of Policy ¶ 4(a)(i).
Respondent has appropriated Complainant’s mark to provide links to “popular categories” such as “Personal Checks,” “Business Checks,” “Harland Check,” “Employment at Harland Check,” “Harland Check Company,” and “Mms Personal Checks.” The Panel concludes that these links refer to Complainant’s core business. The Panel further finds that appropriating another’s mark in these circumstances is neither a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Moreover, there is nothing in the record, including the WHOIS registration information, which demonstrates that Respondent is commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when it is not known by the mark).
Accordingly, Complainant has established compliance with Policy ¶ 4(a)(ii).
Respondent has appropriated Complainant’s mark to provide links to “popular categories” such as “Personal Checks,” “Business Checks,” “Harland Check,” “Employment at Harland Check,” “Harland Check Company,” and “Mms Personal Checks.” The Panel concludes that such links refer to Complainant’s core business. Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith because it is appropriating Complainant’s mark to compete with Complainant pursuant to Policy ¶ 4(b)(iii). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel also infers that Respondent is receiving click-through fees for traffic on the links on the associated web page. The Panel finds that appropriating another’s mark in a confusingly similar domain name for commercial gain in such circumstances evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003): “Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”
In addition, some of the links on the website associated with the <harlandcheck.com> domain name include Complainant’s HARLAND mark. The Panel finds that using Complainant’s mark in such links demonstrates that Respondent had actual notice in Complainant’s rights in the HARLAND mark. The Panel finds that this is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002): “[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”; see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
For all of these reasons, the Panel concludes that Complainant has met its obligations under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested shall be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <harlandcheck.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 29, 2005
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