EMVCO, LLC c/o Visa Holdings v. Corey Grottola / Prophet Companies
Claim Number: FA1511001649199
Complainant is EMVCO, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, United States. Respondent is Corey Grottola / Prophet Companies (“Respondent”), Arizona, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <emvcompliant.org>, <applepayemv.org>, <appleemv.org>, <appleemv.net>, <appleemv.info>, <appleemv.com>, and <emvpci.org>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2015; the Forum received payment on November 23, 2015.
On November 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <emvcompliant.org>, <applepayemv.org>, <appleemv.org>, <appleemv.net>, <appleemv.info>, <appleemv.com>, and <emvpci.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 24, 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@emvcompliant.org, postmaster@applepayemv.org, postmaster@appleemv.org, postmaster@appleemv.net, postmaster@appleemv.info, postmaster@appleemv.com, and postmaster@emvpci.org. Also on November 24, 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 Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complaint is based on the EMV trademark, which is identified solely and exclusively with Complainant. Complainant’s EMV mark was first used in commerce in connection with secure payment transactions as early as 1999, and has been used continuously since that time. The EMV mark is registered in the United States, as follows:
· Incontestable U.S. Reg. No. 3,233,769 filed July 9, 1999 and issued April 24, 2007 for the mark EMV for “magnetically encoded smart cards containing an integrated circuit chip for electronic consumer and business payment transactions; magnetically encoded charge cards, bank cards, credit cards, debit cards and payment cards, all containing an integrated circuit chip for consumer and business payment transactions; magnetic coded card readers; point of sale transaction terminals; encryption keys and digital certificates for securing electronic data transmissions; computer hardware and computer security software, namely, encryption software; computer software for authentication, encryption and identification in financial and sales transactions; computer operating systems to insure the security of businesses and computer networks, and to provide security and access control; computer operating systems for financial transactions on computer networks” in Class A.
Complainant also owns more than 35 registrations for the EMV mark in 25 countries. 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. Previous panels have found that evidence of a registration with a national trademark authority is evidence of rights in a mark under Policy ¶ 4(a)(i). 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)). UDRP Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The Domain Names are Confusingly Similar to Complainant’s EMV Trademark
[i.] In this case, Respondent’s Domain Names are confusingly similar to Complainant’s EMV mark in that the Domain Names contain Complainant’s EMV mark in its entirety with the addition of (a) the generic top-level domain (“gTLD”) “.com”; (b) the descriptive, secure payment-related words “COMPLIANT” and “PAY,” the former of which indicates that a payment system is compliant with Complainant’s specifications for magnetically encoded smart cards; and (c) the registered trademark “APPLE,” which is indicative of the payment-related products and services offered by Apple Inc. (such as ApplePay). Previous panels have found that these terms or close synonyms are insufficient to differentiate a disputed domain name from a registered mark. See Boch Imports, Inc. and Boch Imports West, Inc. and Boch New To You, Inc. v. Westboro Motors, Inc., FA1002001308051 (Nat. Arb. Forum April 6, 2010) (“[A]dding generic terms… that are descriptive of a Complainant’s business . . . to a Complainant’s complete mark fails to create a new mark and in fact in this case establishes two domain names that have confusing similarity to Complainant’s mark”); see also Wells Fargo & Co. v. Russell Palermo, FA 1503001607932 (Apr. 19, 2015) (holding that “pay” is a descriptive term); Hewlett-Packard Development Company, L.P. v. Graham Peterson, FA 1105001387854 (Nat. Arb. Forum June 3, 2011) (holding that “compliance” is a generic term that fails to prevent a likelihood of confusion when appended to a third party’s mark); Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Domain Names are confusingly similar to Complainant’s registered EMV mark under Policy ¶ 4(a)(i).
[ii.] Complainant’s rights in its EMV mark predate the registration of the Domain Names. Complainant’s EMV mark was first used in commerce in the United States in connection with secure payment transactions as early as 1999, and has been used continuously since that time. Complainant’s United States registration was issued on April 24, 2007. Complainant’s United States Registration No. 3,233,769 for the mark EMV is now incontestable. The Domain Names were not registered until February 19, 2015.
[b.] The Respondent Has No Rights or Legitimate Interests in the Domain Names
[i.] Second, a complainant must prove that a respondent has “no rights or legitimate interests in respect of the domain name.” UDRP Rule 3(b)(ix)(2). The EMV mark is associated exclusively with Complainant and has no independent dictionary meaning. Therefore, Respondent had no reason to choose the Domain Names except to create the impression of an association with or certification by, or to trade off of the goodwill of, Complainant.
[ii.] Respondent is not commonly known by the Domain Names according to Policy ¶ 4(c)(ii). Respondent is not an authorized licensee, distributor, retailer or subsidiary of Complainant. Respondent has never been authorized to use Complainant’s EMV mark, nor has Complainant authorized or licensed Respondent to supply or distribute Complainant’s goods or services. Further, Respondent’s goods have not been certified pursuant to Complainant’s certification process. Previous panels have found no rights or legitimate interests where (a) respondent is not a licensee of complainant; (b) complainant’s prior rights in the mark precede respondent’s registration of the domain name; and (c) respondent is not commonly known by the domain name in question. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
[iii.] The term EMV is not a descriptive or geographically significant word in which Respondent might have a claim to rights of use. Further, Respondent is not making a legitimate noncommercial or fair use of the EMV mark. Instead, Respondent registered and has used the <emvcompliant.org>, <applepayemv.org> and <emvpci.org> domains in connection with websites that provide competitive goods and services to those offered under Complainant’s EMV certification mark. Respondent’s intent to divert Internet users seeking Complainant’s website or websites offering products and services that have been certified by Complainant to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant’s mark by diverting Internet users to a competing commercial site).
[iv.] Through its counsel, Complainant sent the attached cease and desist letter to Respondent on September 28, 2015, and requested that Respondent cease its infringing use of Complainant’s EMV trademark and transfer the Domain Names to Complainant. Following receipt of this communication from Complainant, Respondent has neither abandoned nor transferred the Domain Names.
[v.] Following receipt of Complainant’s demand letter, the Respondent removed the content from the <emvcompliant.org>, <applepayemv.org> and <emvpci.org> sites such that these sites no longer resolve to any active content. Further, Respondent has not used the <appleemv.org>, <appleemv.net>, <appleemv.info>, or <appleemv.com> domain names in connection with a bona fide offering of goods or services. As such, as of the filing date of this Complaint, none of the disputed Domain Names resolve to any active content. Use of a domain name to resolve to an inactive website is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). Capital One Fin. Corp. v. Yancey, FA 1612152 (Nat. Arb. Forum Apr. 27, 2015) (no bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii) where the “…at-issue domain name addresses an inactive webpage displaying the message ‘Website Coming Soon.’”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (failure to make active use of a domain name is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii)).
[c.] Respondent Has Registered the Domain Names and the Domain Names’
Inactivity Constitutes Bad Faith
[i.] Finally, Complainant must show that the disputed Domain Names were registered in bad faith and have been used in bad faith. Policy ¶ 4(b). Respondent registered the Domain Names without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant’s EMV trademark. Prior panels have held that bad faith is found if it is unlikely that the registrant would have selected the relevant domain names without knowing of the reputation of the trademark in question. Until the receipt of Complainant’s demand letter, the Respondent used the <emvcompliant.org>, <applepayemv.org> and <emvpci.org> domains to resolve to content that incorporated Complainant’s EMV trademark. Such conduct indicates that Respondent had actual knowledge of Complainant’s EMV trademark at the time of registration of the Domain Names.
[ii.] Complainant enjoys exclusive rights in the EMV trademark by virtue of its registrations for the mark and/or its long-term, widespread and prominent use of that mark. Complainant has never consented to Respondent’s registration of the EMV trademark as part of the Domain Names, nor has Complainant ever granted any of its rights to Respondent. Therefore, Respondent has registered and is using the Domain Names in bad faith.
[iii.] Through its counsel, Complainant sent the attached cease and desist letter to Respondent on September 28, 2015. On October 8, 2015, Respondent offered to sell the Domain Names to Complainant for $1,500 per domain, an amount well in excess of Respondent’s actual out-of-pocket costs to register each domain. Further, the Respondent is publicly offering the <appleemv.com> domain for sale on the GoDaddy site for $1,777. An offer to sell a disputed domain for an amount in excess of actual out-of-pocket costs constitutes prima facie evidence that a respondent has acted in bad faith under Policy ¶ 4(b)(i). See Fosbrooke, Inc. v. Biotech Scams, FA 1640351 (Nat. Arb. Forum Oct. 23, 2015) (“Prior Panels have found that a respondent’s offering of disputed domain names for an amount in excess of out-of-pocket costs can demonstrate bad faith under Policy ¶ 4(b)(i)”) (citing George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name)).
[iv.] Respondent registered and has used the <emvcompliant.org>, <applepayemv.org> and <emvpci.org> domains in connection with websites that provide competitive goods and services to those offered under Complainant’s EMV certification mark. Respondent’s intent to divert Internet users seeking Complainant’s website or websites offering products and services that have been certified by Complainant to websites of Respondent for Respondent’s benefit and profit constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Emaar Properties PJSC v. Marguerite Patrie, FA 1508001635622 (Nat. Arb. Forum October 22, 2015) (“Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) where a respondent uses a complainant’s well-known mark to attract users to the respondent’s website and likely profits”) (citing Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. 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)).
[v.] Respondent is not currently using any of the Domain Names to resolve to any active content. Respondent’s failure to use the Domain Names is further “evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” State Farm Mut. Auto. Ins. Co. v. Anderson, FA 1613011 (Nat. Arb. Forum May 21, 2015).
[vi.] Therefore, Respondent registered and is using the Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 uses its EMV mark in connection with secure payment transactions. Complainant registered the EMV mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,233,769, registered April 24, 2007). Complainant’s USPTO registration demonstrates its rights in its mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant claims the disputed domain names are confusingly similar to Complainant’s mark because they incorporate Complainant’s mark in its entirety and merely add the descriptive terms “compliant,” “pay,” and “apple” and a gTLD. The addition of descriptive terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Adding a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis because every domain name must contain a TLD (and to hold otherwise would be to eviscerate the UDRP). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 claims Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Respondent has no license or authorization to use Complainant’s mark. The WHOIS information merely lists “Corey Grottola / Prophet Companies” as registrant. There is no obvious connection between Respondent’s name and Complainant’s mark. Respondent has failed to provide any evidence for the Panel’s consideration. Therefore, there is no basis in the record to find Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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).
Complainant claims Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <emvcompliant.org>, <applepayemv.org>, and <emvpci.org> domain names were originally connected with websites that provided competitive goods and services to those offered under Complainant’s mark. However, Complainant did not provide evidence in support of this claim. These three disputed domain names presently resolve to inactive webpages. The <appleemv.org>, <appleemv.net>, <appleemv.info>, and <appleemv.com> domain names do not resolve to any active content. Respondent’s use of a disputed domain name to sell products and services competing with the complainant’s business would 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) (although there is no evidence of that happening). 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).”). There is no bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent fails to make an active use of a disputed domain name (which is usually, but not always, evidenced by a web site). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Respondent is not presently using the disputed domain names 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), whether or not the domain names forwarded to a competitor’s web site sometime in the past.
Respondent made an offer to sell the disputed domain names to Complainant for $1,500.00 per domain. Respondent put this offer into email correspondence. Respondent is publicly offering the <appleemv.com> domain name for $1,777.00. These amounts are likely well in excess of Respondent’s out-of-pocket costs. A respondent’s offering of a disputed domain name for an amount in excess of out-of-pocket costs does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. 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.”). Respondent’s offer to sell the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Respondent offered to sell the disputed domain names for $1,500.00 per domain, an amount well in excess of Respondent’s actual out-of-pocket costs to register each domain. Respondent is publicly offering the <appleemv.com> domain name for $1,777.00. A respondent’s attempt to sell a disputed domain name for an amount in excess of the out-of-pocket cost to acquire the domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). In light of this evidence, it is clear Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Complainant claims Respondent’s initial use of the <emvcompliant.org>, <applepayemv.org>, and <emvpci.org> domain names to forward to web sites providing goods and services which compete with Complainant. Such a use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv), but Complainant has filed to provide evidence of this use. This Panel declines to find Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) with respect to the <emvcompliant.org>, <applepayemv.org>, and <emvpci.org> domain names.
Respondent currently makes no active use of any of the disputed domain names. A respondent’s inactive holding of a disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant claims Respondent registered the disputed domain names with actual knowledge of Complainant’s mark. In so arguing, Complainant claims Respondent’s change in its use of the disputed domain names from offering competing products and services to the failure to make an active use was precipitated by Complainant sending Respondent a letter demanding the transfer of the disputed domain names. The information Complainant provided does not demonstrate Respondent acted as Complainant claimed. Therefore, the Panel will not find bad faith on those grounds.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <emvcompliant.org>, <applepayemv.org>, <appleemv.org>, <appleemv.net>, <appleemv.info>, <appleemv.com>, and <emvpci.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, December 22, 2015
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