EMVCo, LLC c/o Visa Holdings v. Liliya Ahmadullina
Claim Number: FA2012001926988
Complainant is EMVCo, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Liliya Ahmadullina (“Respondent”), Moscow, Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emv.store> (the “disputed domain name”), registered with Registrar of Domain Names REG.RU LLC.
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 31, 2020; the Forum received payment on December 31, 2020.
On January 11, 2021, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <emv.store> disputed domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 January 19, 2021, the Forum served the Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of February 8, 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.store. Also on January 19, 2021, the Russian language 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 timely response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
The following communication from Respondent was received on February 6, 2021:
“Hello,
Indeed, our designer added a logo on the site that we were not allowed to use. The EMVCo trademark and logo were removed from the site at the request of the copyright holder, and will no longer be used on the site.
However, the Russian company EMV RUS (ЕМВ РУС - ИНН / КПП: 7720543250 / 772001001) is not related to EMVCo LLC.”
On February 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 timely response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
PANEL NOTE: LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant engages in the area of payment transactions technology. Complainant has rights in the EMV trademark through its registration with the United States Patent and Trademark Office (“USPTO”). (e.g., Reg. 3,233,769, registered April 24, 2007), which trademark is incontestable (hereinafter the “EMV Mark”).
Complainant contends that Respondent’s <emv.store> disputed domain name is confusingly similar to Complainant’s EMV Mark, that Respondent lacks rights in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
The Panel finds that Complainant owns a registered trademark in the EMV Mark in the United States through the USPTO. The Panel further concludes that the disputed domain name is identical to Complainant’s EMV Mark, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a formal and timely response, the Panel may 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”).
The Panel finds that Complainant has enforceable rights in the EMV Mark through its registration with the USPTO. (e.g., Reg. 3,233,769, registered April 24, 2007). Registration with the USPTO is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership of a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a formal and timely response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond:
In support, the Panel finds that Respondent is not commonly known by the <emv.store> disputed domain name, nor has Complainant authorized or licensed Respondent to use its EMV Mark in the disputed domain name. In addition, Respondent does not use the <emv.store> disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name and its resolving website to pass off as a Complainant and offer related or competing products and services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also 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).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the Panel finds that Respondent registered and is using the disputed domain name for commercial gain in bad faith. Under Policy ¶ 4(b)(iv), attempting to divert internet users to a disputed domain name’s resolving website, where Respondent passes off as Complainant and offers competing or related products or services demonstrates bad faith registration and use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Second, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the EMV Mark at the time of registration. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in establishing bad faith, and may be demonstrated by a respondent registering a domain name that incorporates a complainant’s trademark. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
Respondent is using the disputed domain name to resolve to a website that competes with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that respondent’s use of the disputed domain name to direct Internet users to a website which competed with complainant was evidence of bad faith).
Finally, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emv.store> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: February 22, 2021
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