EMVCo, LLC c/o Visa Holdings v. [Unknown Holder]
Claim Number: FA2012001926986
Complainant is EMVCo, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is [Unknown Holder], whereabouts unknown.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emv-shimmer.com>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil J. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 31, 2020; the Forum received payment on December 31, 2020.
On January 1, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <emv-shimmer.com> 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 January 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2021 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@emv-shimmer.com. Also on January 6, 2021, 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.
A timely Response was received and determined to be complete on January 25, 2021.
On January 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil J. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based upon the EMV certification mark, 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, and Complainant owns as well more than 35 registrations for the EMV mark in 25 countries.
Based on the foregoing, Complainant’s main contentions can be summarized as follows:
Complainant asserts that the disputed domain name <emv-shimmer.com> is confusingly similar to Complainant’s EMV mark. Complainant stresses that the Domain Name features the entirety of Complainant’s EMV mark as the first and dominant term of the Domain Name, and that the separation with the hyphen draws particular attention to the EMV aspect. Thus, the Domain Name is confusingly similar to Complainant’s registered EMV mark under Policy ¶ 4(a)(i).
It is also argued that Respondent has no rights or legitimate interests in respect of the Domain Name. There is no evidence that the Respondent has been commonly known by the term “EMV”. The EMV mark is associated exclusively with Complainant and has no independent dictionary meaning. Therefore, Respondent had no reason to choose the Domain Name except to create the impression of an association with, or to trade off of the goodwill of, Complainant. 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.
Lastly, Complainant argues that the domain name was registered and is being used in bad faith. Respondent registered the Domain Name without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant’s EMV trademark. The Respondent uses the Domain Name to resolve to a site that makes pervasive use of Complainant’s EMV trademark in connection with a product related to credit cards and financial services, albeit a likely illegal product, since Respondent uses the Domain Name in connection with a credit card skimming product to misappropriate consumer financial information from credit cards at the time of a commercial transaction, which also constitutes an improper, bad faith use of the Domain Name.
B. Respondent
Respondent states that prior to receiving the Complaint it had no knowledge of the Domain Name and categorically denies ownership thereof, and alleges that such registration was completed fraudulently. Respondent underlines that it has no connection with the Domain Name and supports the removal of its association with the Domain Name from the Register, since it has in no way used the Domain Name for any commercial gain or intended to cause confusion with the Complainant’s mark.
Moreover, Respondent requests that its name be redacted from this proceeding, and states that it has no objection to the ownership being transferred to the Complainant since it does not own the Domain Name.
PRELIMINARY ISSUE: IDENTITY THEFT
According to Forum Supplemental Rule 15(b), “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added).
In the Response submitted in due time, Respondent requested that its name be redacted from this proceeding since it does not have, and has never had, any interest in the disputed domain name and therefore it is not the actual holder of the domain name which is the subject of the Complaint.
The evidence submitted by the Respondent makes the claim of identity theft well-grounded, and Complainant did not contest this assertion. Accordingly, the Panel accepts to redact the identity of the Respondent named in the Complaint to protect the identity of that person. Therefore, the Respondent in this proceeding will be identified only as “[Unknown Holder].” See Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent consents to transfer the <emv-shimmer.com> domain name to Complainant. However, after the initiation of this proceeding, NameCheap, Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
In a circumstance such as this, where Respondent demonstrated that it has no relation with and had no knowledge of the domain name <emv-shimmer.com> prior to receiving notice of the Complaint, but still decided to submit a response to the Complaint in order to be heard in this proceeding complying with Rule 1 that defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated”, and Forum Supplemental Rule 1(d) which further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement”, and considering as well that Respondent did not contest the transfer of the disputed domain name but instead agreed to transfer the domain name in question to Complainant, the Panel hereby decides to forego the traditional UDRP analysis and therefore orders an immediate transfer of the <emv-shimmer.com> domain name.
Respondent has stipulated that the domain name be transferred to Complainant and, accordingly, it is ordered that the <emv-shimmer.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil J., Panelist
Dated: February 9, 2021
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