EMVCo, LLC c/o Visa Holdings v. William DePaul
Claim Number: FA1805001787853
Complainant is EMVCo, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is William DePaul (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emvchipservices.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 21, 2018; the Forum received payment on May 21, 2018.
On May 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <emvchipservices.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 May 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2018 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@emvchipservices.com. Also on May 24, 2018, 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 June 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, EMVCo, LLC, uses the EMV mark in connection with secure payment transactions. Complainant owns registrations for the EMV mark in 25 countries, including a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,233,769 registered Apr. 24, 2007). Respondent’s <emvchipservices.com> domain name is confusingly similar to Complainant’s mark as Respondent merely includes the EMV mark, a generic top-level domain (“gTLD”) “.com,” and the generic or descriptive terms “chip services.”[i]
2. Respondent has no rights or legitimate interests in the domain name. Further, Respondent is not authorized or licensed to use Complainant’s mark and is not commonly known by the domain name.
3. Respondent does not use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent has used the domain name in connection with a website that provides competitive goods and services to those offered by Complainant.
4. Respondent registered and uses the domain name in bad faith as the domain name resolves to a website that provides goods and services in competition with Complainant’s EMV mark. Further, Respondent had actual knowledge of Complainant’s rights to the EMV mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the EMV mark. Respondent’s domain name is confusingly similar to Complainant’s EMV mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <emvchipservices.com> domain name and that Respondent registered and uses the domain name 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(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.”).
Complainant has rights to the EMV mark through registrations with 25 countries including a registration with the USPTO (Reg. No. 3,233,769 registered April 24, 2007). Such registration of a mark is sufficient to demonstrate rights to the mark per Policy ¶ 4(a)(i). See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (“Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds Complainant has demonstrated rights to the EMV mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <emvchipservices.com> domain name is confusingly similar to the EMV mark. A domain name is confusingly similar to a complainant’s mark where the domain name incorporates an entire mark, and adds a descriptive or generic term and a gTLD. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain). Here, Respondent incorporates the entire EMV mark and the gTLD “.com” into the <emvchipservices.com> domain name. Further, the domain name adds the generic or descriptive terms “chip services” which is descriptive or generic in the field of secure payment transactions, as “chip” relates to microchips contained within credit cards and “services” simply reflects a general format of product offering. Consequently, Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <emvchipservices.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent has no rights or legitimate interests in the <emvchipservices.com> domain name. Further, Complainant has shown that it has not permitted, licensed, or authorized Respondent to use Complainant’s mark and Respondent is not commonly known by the <emvchipservices.com> domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The relevant WHOIS information identifies Respondent as “William DePaul.” Accordingly, the Panel determines that Respondent is not commonly known by the <emvchipservices.com> domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent does not use the <emvchipservices.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as it uses the domain name to engage in a competitive business. Use of a domain name to offer goods or services competitive to those of a complainant’s is typically not considered a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “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).”). Here, Complainant has provided evidence that Respondent uses the <emvchipservices.com> domain name to provide competitive goods and services to those offered by Complainant. Consequently, the Panel holds that Respondent’s use of the domain name is not in accordance with Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <emvchipservices.com> domain name in bad faith as Respondent’s purpose is to divert Internet users seeking Complainant’s products and services to a website of Respondent for Respondent’s benefit and commercial gain. Such use is indicative of bad faith under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). In the absence of a response, the Panel accepts as true Complainant’s assertion and concludes that Respondent registered and uses the <emvchipservices.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant asserts Respondent had actual knowledge of Complainant’s rights to the EMV mark prior to registering the <emvchipservices.com> domain name. Actual knowledge may be sufficient for a finding of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). It is clear that Respondent had actual knowledge of Complainant’s rights in the EMV mark as the domain name incorporates the mark and includes generic terms that relate to Complainant’s business.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emvchipservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: June 25, 2018
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