FIDO Alliance, Inc. v. CHRISTOPHE COLLAS / PROBITAS LDA
Claim Number: FA2110001971044
Complainant is FIDO Alliance, Inc. (“Complainant”), represented by John C. Cain of Munck Wilson Mandala, LLP, Texas, USA. Respondent is CHRISTOPHE COLLAS / PROBITAS LDA (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fido4you.com>, registered with Register SpA.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2021; the Forum received payment on October 28, 2021. The Complaint was received in English and Portuguese.
On November 3, 2021, Register SpA confirmed by e-mail to the Forum that the <fido4you.com> domain name is registered with Register SpA and that Respondent is the current registrant of the name. Register SpA has verified that Respondent is bound by the Register SpA 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 November 4, 2021, the Forum served the Portuguese and English language Complaint and all Annexes, including a Portuguese and English language Written Notice of the Complaint, setting a deadline of November 24, 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@fido4you.com. Also on November 4, 2021, the Portuguese and English 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
PANEL NOTE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Portuguese, thereby making the language of the proceedings in Portuguese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Portuguese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant, FIDO Alliance, Inc., develops and promotes authentication standards that help reduce reliance on passwords. Complainant has rights in the FIDO mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,679,315, registered Jan. 27, 2015). See Amend. Compl. Ex. B. Respondent’s <fido4you.com> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, adding only the generic and/or descriptive term “4you.”
Respondent lacks rights and legitimate interests in the <fido4you.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or authorized Respondent to use the FIDO mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent uses the domain name to resell products that either are Complainant’s products or compete directly with Complainant’s products.
Respondent registered and uses the <fido4you.com> domain name in bad faith because Respondent uses the FIDO mark to suggest to consumers that the merchandise on Respondent’s website is sponsored or approved by Complainant. Moreover, Respondent had constructive and/or actual knowledge of Complainant’s rights in the FIDO mark based on the fame of the mark, as well as the fact that Respondent passes off as Complainant and sells merchandise branded with the FIDO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that develops and promotes authentication standards that help reduce reliance on passwords.
2. Complainant has established its trademark rights in the FIDO mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,679,315, registered Jan. 27, 2015).
3. Respondent registered the <fido4you.com> domain name on April 28, 2021.
4. Respondent uses the domain name to resell products that either are Complainant's products or compete directly with Complainant's products.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the FIDO mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,679,315, registered Jan. 27, 2015). See Amend. Compl. Ex. B. Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FIDO mark. Complainant argues that Respondent’s <fido4you.com> domain name is confusingly similar to Complainant’s FIDO mark because it incorporates Complainant’s mark in its entirety, adding only the generic and/or descriptive term “4you.” Adding a generic and/or descriptive term and a generic top-level domain (“gTLD”) to the complainant’s mark does not negate confusing similarity. 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, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also MFCXY Inc. v. John Holmes, FA1504001616557 (Forum Jun. 10, 2015) (finding <myfreecams4you.com> confusingly similar to MY FREE CAMS mark because the addition of “4you” to MY FREE CAMS failed to “materially differentiate” the two). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s FIDO mark under Policy ¶ 4(a)(i).
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), 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”).
(a) Respondent has chosen to take Complainant’s FIDO trademark and to use it in its domain name, adding only the generic and/or descriptive term “4you” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <fido4you.com> domain name on May 23, 2020;
(c) Respondent is attempting to pass itself off as Complainant by redirecting Internet users to Complainant’s legitimate website. Additionally, Respondent is using the domain name to host competing hyperlinks;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <fido4you.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or authorized Respondent to use the FIDO mark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information identifies “CHRISTOPHE COLLAS / PROBITAS LDA” as the registrant of the domain name. See Amend. Compl. Ex. D. Additionally, Complainant asserts that it has not licensed or authorized Respondent to use the FIDO mark. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <fido4you.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the domain name to resell products that either are Complainant’s products or compete directly with Complainant’s products. Use of a disputed domain name to sell competing goods or to sell complainant’s goods does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”); 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).”); see additionally Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Respondent’s website which includes the false designation “FIDO Alliance Member,” suggesting an endorsement by Complainant, prominent displays of the FIDO mark with Complainant’s trademarked stylized “I” design (USPTO Reg. No. 6,240,147, registered Jan. 05, 2021), and offers of products that purport to be NEOWAVE products branded with the FIDO mark. See Amend. Compl. Exs. C & E. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 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 argues that Respondent registered and uses the <fido4you.com> domain name in bad faith because Respondent uses the FIDO mark to suggest to consumers that the merchandise on Respondent’s website is sponsored or approved by Complainant. Use of the disputed domain name to sell counterfeits or unauthorized products of the complainant is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see additionally Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see additionally H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). The Panel is reminded that Complainant provides screenshots of Respondent’s website, which prominently features the FIDO mark and promotes products branded with the FIDO mark. See Amend. Compl. Ex. E. Complainant contends that Respondent’s use of the FIDO mark on the website creates a presumption that the website content is sponsored by Complainant. Thus, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered the <fido4you.com> domain name with actual and/or constructive knowledge of Complainant’s rights in the FIDO mark based on the fame of the mark, as well as the fact that Respondent passes itself off as Complainant and sells merchandise branded with the FIDO mark. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the fame of the mark as well as the respondent’s use of the disputed domain name to pass itself off as complainant and sell competing or unauthorized goods. 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 AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see additionally G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”). Complainant contends that its FIDO mark is widely known, especially in the field of developing authentication standards, user authentication, and password management. Complainant also provides screenshots of Respondent’s website, showing that Respondent presents itself as “FIDO Alliance” and sells merchandise branded with the FIDO mark. See Amend. Compl. Ex. E. Therefore, as the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the FIDO mark, the Panel finds bad faith registration pursuant to Policy ¶ 4(a)(iii).
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 FIDO mark and in view of the conduct that Respondent has engaged in when using the disputed 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 <fido4you.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 2, 2021
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