EMVCO, LLC c/o Visa Holdings v. Robert Brantzeg
Claim Number: FA1511001647287
Complainant is EMVCO, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, United States. Respondent is Robert Brantzeg (“Respondent”), Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emvcompliancecouncil.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2015; the Forum received payment on November 16, 2015.
On November 17, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <emvcompliancecouncil.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 November 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2015 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@emvcompliancecouncil.com. Also on November 23, 2015, 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 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant uses its EMV mark in connection with secure payment transactions. Complainant has registered the EMV mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,233,769, registered April 24, 2007), which demonstrates Complainant’s rights in its mark. The <emvcompliancecouncil.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and merely adds the descriptive terms “compliance” and “council” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to provide competitive goods and services to those offered under Complainant’s EMV mark.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s disputed domain name disrupts and competes with Complainant’s business. Second, Respondent uses the disputed domain name to profit from Internet users’ confusion. Finally, because of Respondent’s widespread use of Complainant’s mark on its resolving website, it is clear that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, EMVCO, LLC c/o Visa Holdings, uses its EMV mark in connection with secure payment transactions. Complainant has rights in the EMV mark through registration with the USPTO. (Reg. No. 3,233,769, registered April 24, 2007). The mark is an acronym for its founding member organizations—Europay, Mastercard and Visa—and is recognized as the authority for secure payment transactions worldwide. The <emvcompliancecouncil.com> domain name is confusingly similar to Complainant’s mark.
Respondent, Robert Brantzeg, registered the <emvcompliancecouncil.com> domain name on May 19, 2015. Respondent uses its disputed domain name to provide competitive goods and services to those offered under Complainant’s EMV mark.
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(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) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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 EMV mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <emvcompliancecouncil.com> domain name is confusingly similar to Complainant’s EMV mark under Policy ¶ 4(a)(i) as it wholly incorporates Complainant’s certification mark and adds the descriptive terms “compliance” and “council” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <emvcompliancecouncil.com> domain name Policy ¶ 4(c)(ii). Complainant has not licensed or authorized Respondent to use Complainant’s mark. The WHOIS information lists “Robert Brantzeg” as registrant. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is not using the <emvcompliancecouncil.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Specifically, Respondent uses the disputed domain name to provide competitive goods and services to those offered under Complainant’s EMV mark. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent’s <emvcompliancecouncil.com> domain name disrupts and competes with Complainant’s business in bad faith under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Respondent uses the <emvcompliancecouncil.com> domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent is attempting to profit from falsely suggesting that Complainant is affiliated with Respondent by offering products that are certified by Complainant. A respondent’s use of disputed domain name to host a website that offers goods and services similar to those offered by the complainant under its mark constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Respondent registered the <emvcompliancecouncil.com> domain name with actual knowledge of Complainant’s mark. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emvcompliancecouncil.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 2, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page