Fidelity National Information Services, Inc. v. Prep Direct
Claim Number: FA1906001849694
Complainant is Fidelity National Information Services, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, DC, USA. Respondent is Prep Direct (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fis.direct>, registered with NameCheap, Inc..
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2019; the Forum received payment on June 25, 2019.
On June 26, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <fis.direct> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2019 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@fis.direct. Also on June 27, 2019, 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 July 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a global leader in financial services technology. Complainant has rights in the FIS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,714,946, registered April 7, 2015). See Compl. Ex. 9. The disputed domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety, merely adding the “.direct” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant by redirecting the disputed domain name to Complainant’s own website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to redirect to Complainant’s own website, interfering with Complainant’s ability to control the use of the FIS mark. Respondent creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s activities by impersonating Complainant. Respondent had knowledge of Complainant’s rights in the FIS mark given Complainant’s long-term and worldwide use of the mark, the fact that the disputed domain name contains the mark it its entirety, and Respondent’s use of the disputed domain name to redirect to Complainant’s own website.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on March 4, 2019.
2. Complainant has established rights in the FIS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,714,946, registered April 7, 2015).
3. The disputed domain name resolves to Complainant’s own site
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the FIS mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Complainant provides copies of its registrations with the USPTO (e.g. Reg. No. 4,714,946, registered April 7, 2015). See Compl. Ex. 9. Accordingly, the Panel finds that Complainant has established rights in the FIS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that the disputed domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety, merely adding the “.direct” gTLD. The addition of a gTLD is insufficient to distinguish a disputed domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the disputed domain name is identical or confusingly similar to the FIS mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the FIS mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Prep Direct,” and there is no other evidence to suggest that Respondent was authorized to use the FIS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends Respondent uses the disputed domain name to pass off as Complainant by redirecting the disputed domain name to Complainant’s own website. Using a disputed domain name to mimic a complainant’s website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Additionally, using a disputed domain name to redirect to a complainant’s own website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Complainant provides a declaration which asserts that when the declarant accessed the disputed domain name, the declarant was redirected to Complainant’s website. See Compl. Ex. 10. Therefore, the Panel finds Respondent does not use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to redirect to Complainant’s own website, interfering with Complainant’s ability to control the use of the FIS mark. Redirecting a disputed domain name to a complainant’s own website can be evidence of bad faith. See Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003) (concluding that respondent acted in bad faith by using the disputed domain name to redirect Internet traffic to Complainant’s own website because it “interferes with Complainant’s ability to control the use of its own trademarks on the Internet” . . . [and] creates a risk that Respondent could collect and use data about Internet users intending to access Complainant’s website”). Additionally, the Panel has adopted a broad interpretation of compete and disrupt under Policy ¶ 4(b)(iii) which includes activities in opposition to a complainant. See H-D U.S.A., LLC v. Auliya ulfiyanto, FA 1682051 (Forum Aug. 17, 2016) (adopting a broad interpretation of “compete and disrupt” in Policy ¶ 4(b)(iii), and finding bad faith where the respondent was “operating a website whose activities are in opposition to Complainant”). Complainant argues that redirecting the disputed domain name back to Complainant’s website disrupts Complainant’s business. The Panel recalls Complainant provides a declaration which asserts that when the declarant accessed the disputed domain name, the declarant was redirected to Complainant’s website. See Compl. Ex. 10. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent registered and uses the disputed domain name in bad faith by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s activities by impersonating Complainant. Using a disputed domain name obviously connected to a complainant’s mark to create a likelihood of confusion for commercial gain can demonstrate bad faith under Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues that by redirecting to Complainant’s own website, Respondent uses the disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s activities. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s registration and use of the disputed domain name to redirect to Complainant’s website is an independent ground of bad faith. Using a disputed domain name to redirect to a complainant’s own website can be evidence of bad faith under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”) The Panel recalls Complainant provides a declaration which asserts that when the declarant accessed the disputed domain name, the declarant was redirected to Complainant’s website. See Compl. Ex. 10. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent had knowledge of Complainant’s rights in the FIS mark given Complainant’s long-term and worldwide use of the mark, the fact that the disputed domain name contains the mark it its entirety, and Respondent’s use of the disputed domain name to redirect to Complainant’s own website. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find 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.”); see also Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Complainant provides screenshots of Complainant’s own website and Complainant’s annual report in support of Complainant’s argument that the FIS mark has longstanding and worldwide use. See Compl. Exs. 3 through 8. Complainant provides a declaration which asserts that when the declarant accessed the disputed domain name, the declarant was redirected to Complainant’s website. See Compl. Ex. 10. As the Panel agrees, it finds Respondent registered the disputed domain name with knowledge of Complainant’s rights in the FIS mark, thus constituting bad faith under 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 <fis.direct> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 31, 2019
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