Chex Systems, Inc. v. Goldendex LLC
Claim Number: FA1311001531145
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Goldendex LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexsystemsgone.com>, which is registered with Register.com, Inc.
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 National Arbitration Forum electron-ically on November 21, 2013; the National Arbitration Forum received payment on November 21, 2013.
On November 22, 2013, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <chexsystemsgone.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the registra-tion agreement of Register.com, Inc., 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 22, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of December 12, 2013 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, adminis-trative, and billing contacts, and to postmaster@chexsystemsgone.com. Also on November 22, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Not-ices, 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 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
Complainant, a consumer-reporter agency governed by the Federal Fair Credit Reporting Act of the United States, is a wholly-owned subsidiary of Fidelity Nat-ional Information Services, Inc. (“FIS”).
Complainant maintains a database of debit data that can be used to determine consumer credit risk, and it offers account verification services to its financial institution members.
Complainant holds a registration, which is on file with the United States Patent and Trademark Office (“USPTO”), for the CHEXSYSTEM service mark (Registry No. 3,173,774, registered November 21, 2006).
Respondent registered the <chexsystemsgone.com> domain name on Sep-tember 21, 2013.
The domain name is confusingly similar to Complainant’s CHEXSYSTEMS mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use its CHEXSYSTEMS mark for any reason.
Respondent is not making a bona fide offering of goods or services or a legit-imate noncommercial or fair use of the disputed domain name.
Respondent uses the disputed domain name to resolve to a commercial website that prominently features Complainant’s CHEXSYSTEMS mark and offers ser-vices that are claimed to remove consumers’ files from Complainant’s database.
The resolving website also sells services that claim to update consumers’ files in the CHEXSYSTEMS databases.
Respondent has no rights to or legitimate interests in the domain name.
Respondent is attempting to pass itself off as Complainant.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent employs the domain name for commercial gain by creating a likeli-hood of confusion among Internet users as to the possibility of Complainant’s association with the domain name.
Respondent knew of Complainant and its rights in the CHEXSYSTEMS mark when it registered the disputed domain name.
Respondent registered and is using the <chexsystemsgone.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 service 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 can-celled 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 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP complaint to be deemed true); 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.”
Complainant has rights in the CHEXSYSTEMS service mark for purposes of Policy 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that a UDRP complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <chexsystemsgone.com> domain name is confusingly similar to Complainant’s CHEXSYSTEMS service mark. The do-main name includes the entire mark, with the addition only of the generic word “gone” and the generic Top-Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, fail to save the domain name from the realm of confusing similarity under the standards of the Policy. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, because a con-tested domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the generic word “bomb,” the domain name was confus-ingly similar to a UDRP complainant’s mark).
See also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (finding, under Policy ¶ 4(a)(i), that attaching a gTLD to the mark of an-other in creating a domain name was “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then 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 Dec. 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 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 deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first note that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by the <chexsystemsgone.com> domain name, and that Complainant has not authorized Respondent to use its CHEXSYSTEMS mark for any reason. Moreover, the pertinent WHOIS inform-ation identifies the registrant of the domain name only as “Goldendex LLC,” which does resemble the domain name. On this record, we must conclude that Respondent has not been commonly known by the contested domain name so as to have demonstrated that it has rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding, under Policy ¶ 4(c)(ii), that a respondent was not com-monly known a disputed domain name where there was no evidence in the rec-ord, including the relevant WHOIS information, showing that that respondent was commonly known by the domain name, and where a UDRP complainant assert-ed that it did not authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <chexsystemsgone.com> domain name, in that Respondent employs the domain name to resolve to a commercial website that offers services claiming to remove consumer files from Complain-ant’s database, and that claim to update consumers’ files in the CHEXSYSTEMS databases. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See, for example, Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a UDRP respondent’s use of a disputed do-main name to redirect Internet users to a financial services website that competed with the business of a complainant was not a bona fide offering of goods or services).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <chexsystemsgone.com> domain name disrupts Complainant’s business. This stands as evidence that the domain name was registered and is being used in bad faith as provided in Policy ¶ 4(b)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website that competed with the business of a UDRP complainant disrupted that complainant’s business and therefore demonstrated bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent uses the domain name, which is confusingly similar to Complainant’s CHEXSYSTEMS service mark, to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to the possibility of Complainant’s affiliation with the domain name and its resolving website. This demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Wei-guang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name that was confusingly similar to a UDRP complainant’s mark to host a commercial website offering services similar to those offered by that complainant under its mark).
Finally under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the CHEXSYSTEMS service mark when it registered the disputed domain name. This is independent proof of Respond-ent’s bad faith in the registration of the domain name. See Minicards Vennoot-schap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. For-um Sept. 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) where that had respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <chexsystemsgone.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 2, 2014
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