Vericheck, Inc. v. Admin Manager
Claim Number: FA0606000734799
PARTIES
Complainant is Vericheck, Inc. (“Complainant”), represented by David Snead, P.O. Box 53249, Washington, DC 20009. Respondent is Admin Manager (“Respondent”), represented by Brett P. Wakino, 4266 Atlantic Avenue, Long Beach, CA 90807.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vericheck.com>, registered with Enom, 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.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on June 20, 2006; the National
Arbitration Forum received a hard copy of the Complaint on June 21, 2006.
On June 21, 2006, Enom, Inc. confirmed by
e-mail to the National Arbitration Forum that the <vericheck.com> domain name is registered with Enom, Inc. and
that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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 June 22, 2006, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 12, 2006 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@vericheck.com
by e-mail.
A timely Response was received and determined
to be complete on July 12, 2006.
On July 20, 2006,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends it has established
rights in the VERICHECK mark through registration with the State of Georgia and
through acquiring common-law rights by its continuous use and marketing under
the name for approximately seventeen years.
Complainant also contends that Respondent’s <vericheck.com> domain name is identical to the VERICHECK
mark within the meaning of Policy ¶ 4(a)(i) because the disputed domain name encompasses the mark in its
entirety and merely adds the generic top-level domain “.com.” Complainant alleges that Respondent is not
commonly known by the <vericheck.com>
domain name and that Respondent is using the domain name to direct internet
users to a “faux search portal” to display links to Complainant’s
competitors. Complainant contends that
Respondent’s offer to sell the disputed domain name for $48,000 is evidence of
Respondent’s lack of rights and legitimate interests in the disputed domain
name within the meaning of Policy ¶ 4(a)(ii). Complainant contends
that the offer to sell the disputed domain name for $48,000 also shows
Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant asserts that Respondent is using the disputed domain name to
redirect internet users to a website where competitors are advertised. In this manner, according to Complainant,
Respondent is capitalizing on consumer confusion, presumably to obtain
“click-through” fees for its own profits.
B. Respondent
Respondent contends Complainant lacks
sufficient rights in the VERICHECK mark to meet the requirements of Policy
¶ 4(a)(i). Respondent relies on the fact that the trademark registration for
VERICHECK lies with a third-party and that Complainant was denied registration
of the VERICHECK mark. Respondent also
contends the mark is merely descriptive and used in its generic sense. Respondent contends that Complainant has
failed to establish a prima facie case to support its allegations that
Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Respondent contends that Complainant has not shown Respondent acted in
bad faith within the meaning of Policy ¶ 4(a)(iii) because its offer to sell the domain name to Complainant
occurred only after Complainant initiated negotiations for sale. Respondent also contends it has merely
“parked” the domain name and that Complainant has not produced any evidence
that Respondent is profiting through its use.
C. Additional Submissions
None.
FINDINGS
Complainant has continuously used and operated under the VERICHECK name since Complainant’s establishment in 1989. Moreover, Complainant registered the VERICHECK mark with the State of Georgia in August 2001. Since its establishment, Complainant has spent more than $85,000 on marketing its products and services and now conducts more than $1.2 million per month in financial transactions over the internet under the VERICHECK name. The third-party that holds the active trademark registration for the VERICHECK mark with the United States Patent and Trademark Office is VeriCheck Systems, Inc., an Arizona corporation. The registrant, however, does not use the mark. The record shows that Respondent is not commonly known by the <vericheck.com> domain name. Moreover, Respondent is not using the domain name to offer any goods or services of its own but is using the name to direct internet users to links, including links to Complainant’s competitors. Respondent acknowledges that in response to Complainant’s offer to purchase the name Respondent quoted a price of $48,000. Furthermore, consumers seeking to find Complainant’s website who use Respondent’s domain name are redirected to a website that features advertisements of competitors of Complainant, presumably for a referral fee paid to Respondent. Respondent does not merely “park” the domain name.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (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
the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 has established rights in the
VERICHECK mark through the trademark registration it holds in the State of
Georgia and through common law rights resulting from secondary meaning and
substantial goodwill acquired by use of the mark continuously for approximately
seventeen years. See Lee Enters., Inc. v. Polanski, FA 135619 (Nat.
Arb. Forum Jan. 22, 2003) (state trademark registration); see also Quality
Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb.
Forum Sept. 7, 2002). Moreover, the <vericheck.com> domain name is identical to
Complainant’s VERICHECK mark within the meaning of Policy ¶ 4(a)(i) because the
disputed domain name encompasses the mark in its entirety and merely adds the
generic top-level domain “.com.” See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000). Complainant thus has established rights in
the VERICHECK mark and has also established that the disputed domain name is
identical or confusingly similar within the meaning of Policy ¶ 4(a)(i).
Respondent is not using the disputed domain
name to make a bona fide offering of goods or services but rather is
taking advantage of consumer confusion to redirect internet users seeking
Complainant’s website to links to Complainant’s competitors. This is not a legitimate purpose within the
meaning of Policy ¶ 4(c)(ii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002). The fact that Respondent is not known by the
mark also supports a conclusion that Respondent does not have rights and
legitimate interests in the disputed domain name. See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001).
Finally, Respondent’s offer to sell the disputed domain name to
Complainant for $48,000 also demonstrates Respondent’s lack of rights or
legitimate interests in the disputed domain name. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat.
Arb. Forum Feb. 13, 2006). Complainant
has met its burden under Policy ¶ 4(a)(ii) to show Respondent lacks rights or
legitimate interests in the disputed domain name.
The fact that Respondent is using the
disputed domain name to take advantage of consumer confusion and redirect
internet users to a website where Complainant’s competitors are advertised
shows Respondent’s bad faith. See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec.
1, 2004). The record reasonably
supports an inference that Respondent’s purpose in redirecting internet users to
the competitors’ website is to earn a referral fee. This circumstance supports a finding of bad faith. See Maricopa Cmty. Coll.
Dist. v. College.com, LLC, FA
536190 (Nat. Arb. Forum Sept. 22, 2005).
Complainant has established that Respondent’s use of the disputed domain
name is in bad faith within the meaning of Policy ¶ 4(a)(iii).
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vericheck.com>
domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: August 2, 2006
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