Visa International Service Association v. MASOUD TAJEDDIN / TEHRANVISACARD.COM
Claim Number: FA1703001719985
Complainant is Visa International Service Association (“Complainant”), represented by Cindy A. Villanueva of Lewis Roca Rothgerber Christie LLP, Nevada, USA. Respondent is MASOUD TAJEDDIN / TEHRANVISACARD.COM (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tehranvisacard.com>, registered with eNom, Inc.
Each of 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.
Honorable Bruce E. Meyerson, (Ret.),Honorable Charles K. McCotter, Jr., (Ret.). as Panelists and The Honourable Neil Anthony Brown QC as Presiding Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2017; the Forum received payment on March 3, 2017.
On March 3, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <tehranvisacard.com> domain name is registered with eNom, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2017 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@tehranvisacard.com. Also on March 9, 2017, 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 April11, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed
Honorable Bruce E. Meyerson, (Ret.),Honorable Charles K. McCotter, Jr., (Ret.). as Panelist and The Honourable Neil Anthony Brown QC as Presiding 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 made the following contentions
Complainant provides payment cards and payment processing services worldwide. Complainant uses the VISA mark in conjunction with its business practices. Complainant registered the VISA trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,065,272, registered May 10, 1977). See Amend. Compl., at Attached Ex. 2. Additionally, Complainant registered the VISA mark with multiple government trademark agencies in countries throughout North and South America, Europe, Australia, and Asia. See Amend. Compl., at Attached Ex. 3. Respondent’s <tehranvisacard.com> is confusingly similar to Complainant’s VISA mark because it incorporates the mark in its entirety, adding the generic term “card”, the geographic term “tehran”, and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <tehranvisacard.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the VISA mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <tehranvisacard.com> resolves to a website offering products in direct competition with Complainant under Complainant’s mark and color scheme. See Amend. Compl., at Attached Ex. 12.
Respondent registered and is using <tehranvisacard.com> in bad faith. The disputed domain name attempts to attract users to Respondent’s website for commercial gain. Respondent registered <tehranvisacard.com> with actual knowledge of Complainant and its rights to the VISA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the finance and related industries.
2. Complainant has established its trademark rights in the VISA mark by virtue of having registered it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,065,272, registered May 10, 1977) and internationally;
3. Respondent registered the <tehranvisacard.com> domain name on April 9, 2013.
4. The <tehranvisacard.com> domain name resolves to a website offering products in direct competition with Complainant under Complainant’s mark and color scheme.
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(f), 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 (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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the VISA mark in conjunction with its business of providing payment cards and processing services worldwide. . Complainant submits that it registered the VISA trademark with USPTO (e.g., Reg. No. 1,065,272, registered May 10, 1977) and has adduced evidence to that effect which the Panel accepts. See Amend. Compl., at Attached Ex. 2. Additionally, Complainant has registered the VISA mark with multiple government trademark agencies in countries throughout North and South America, Europe, Australia, and Asia. See Amend. Compl., at Attached Ex. 3. The consensus among UDRPO panels is that registrations with the USPTO and other government trademark agencies are sufficient to show rights in a mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel finds that Complainant’s multiple trademark registrations establish Complainant’s rights in the VISA mark.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VISA mark.Complainant contends that Respondent’s <tehranvisacard.com> is confusingly similar to Complainant’s VISA mark because it incorporates the mark in its entirety, adding the generic word “card”, the geographic word “tehran”, and the “.com” gTLD. Prior panels have concluded that the addition of generic and similar words and a top level domain to a trademark to constitute a domain name does not negate a finding of confusingly similar which is otherwise made out, as it is in the present case for the purposes of a Policy ¶ 4(a)(i) analysis. See, e.g., Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016). Moreover, “it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.” Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004). Thus, the Panel finds that Respondent’s <tehranvisacard.com> is confusingly similar to Complainant’s VISA mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s VISA mark and to
use it in its domain name, adding only the generic word “card” and the geographic word “Tehran”, which encourage internet users to assume that the domain name relates to the credit card business of Complainant in Tehran;
(b) Respondent registered the disputed domain name on April 9, 2013;
(c) The domain name resolves to a website offering products in direct competition with Complainant under Complainant’s mark and color scheme;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Masoud Tejeddin” of “Tehranvisacard.com.” See Amend. Compl., at Attached Ex. 10. Moreover, where a response has not been filed, as in the present case, complainants have found success under Policy ¶ 4(c)(ii) due to the absence of any evidence that Respondent is commonly known by the disputed domain name. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Given Respondent’s lack of corroborating evidence that it is known by the <tehranvisacard.com> domain name, the Panel finds that Respondent is not commonly known by the disputed domain name and has therefore failed under Policy ¶ 4(c)(ii);
(f) Complainant submits that it has not authorized or licensed Respondent to use the VISA mark in any regard, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Complainant demonstrates by evidence that Respondent’s <tehranvisacard.com> domain name resolves to a website offering products in direct competition with Complainant under Complainant’s mark and color scheme. See Amend. Compl., at Attached Ex. 12. The “use of a domain to sell products and/or services that compete directly with a complainant’s business does 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).” General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016). See also Alcon, Inc. v. ARanked, FA 1306493 (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).”). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <tehranvisacard.com> domain name pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and is using the <tehranvisacard.com> domain name in bad faith. The Panel notes that the domain name resolves to a webpage offering goods and services in direct competition with Complainant such as a rival and competing credit card. See Amend. Compl., at Attached Ex. 12. The disputed domain name clearly attempts to attract users to Respondent’s website for commercial gain. Panels have found bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website offering similar services to the complainant under its mark. See e.g., MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000). “Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion.” ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) Therefore, the Panel finds that Respondent is attempting to benefit commercially from Complainant’s mark, which evinces bad faith under Policy ¶ 4(b)(iv). See, e.g., Id.
Secondly, Respondent registered the <tehranvisacard.com> domain name with actual knowledge of Complainant and its rights to the VISA mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” Panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also contends that in light of the fame and notoriety of Complainant's VISA mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, as the circumstances show that Respondent had actual knowledge of Complainant's mark when it registered the domain names, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the VISA mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tehranvisacard.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC (Presiding Panelist),
Honorable Bruce E. Meyerson, (Ret.) and
Honorable Charles K. McCotter, Jr., (Ret.).
Panelists
Dated: April 14, 2017
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