FIDO Alliance, Inc. v. CHRISTOPHE COLLAS / PROBITAS LDA
Claim Number: FA2112001976367
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 <fido2you.com>, registered with Register SpA.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2021 in both Portuguese and English. The Forum received payment on December 8, 2021.
On December 9, 2021, Register SpA confirmed by e-mail to the Forum that the <fido2you.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, which is in Portuguese, 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 December 10, 2021, the Forum served the Complaint and all Annexes, including a Portuguese and English language Written Notice of the Complaint, setting a deadline of December 30, 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@fido2you.com. Also on December 10, 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 Portuguese language Notification of Respondent Default.
On January 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the Register SpA registration agreement is in Portuguese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <fido2you.com> domain name shall be Portuguese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
The Panel notes that the domain name resolves to the website “www.safe2you.online”, which promotes products in both English and Portuguese (Complaint Exhibit D). In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Portuguese Complaint and Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant is a technology industry association focused on developing authentication standards to help reduce the worlds over-reliance on passwords. Complainant has rights in the FIDO mark through numerous registrations of the mark, including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <fido2you.com> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <fido2you.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the FIDO mark. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to a page offering what appear to be Complainant’s own goods for sale. The domain name was previously being offered for sale.
Respondent registered the <fido2you.com> domain name in bad faith with actual knowledge of Complainant’s rights in the FIDO mark and is using it to disrupt Complainant’s business and divert customers for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the FIDO mark through registrations of the mark with the USPTO, including Reg. No. 4,679,315 registered January 27, 2015. The Panel finds Respondent’s <fido2you.com> domain name to be confusingly similar to Complainant’s mark because it incorporates the FIDO mark in its entirety and adds the term “2you”, which does not distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent’s <fido2you.com> domain name was registered on April 24, 2021, many years after Complainant has shown that its FIDO trademark had become very well-known. On or about November 1, 2021 the domain name resolved to a website in Portuguese which indicated that the domain name might be for sale. Shortly thereafter Respondent received service from the Forum of a complaint by the present Complainant over the domain name <fido4you.com>, which had been registered by the present Respondent on April 28, 2021 and which resolved to a website promoting for sale Complainant's products or products that competed directly with Complainant's products: FIDO Alliance, Inc. v. CHRISTOPHE COLLAS / PROBITAS LDA, FA1971044 (Forum Dec. 2, 2021). That complaint resulted in the transfer to Complainant of the <fido4you.com>domain name. Since at least December 1, 2021 Respondent’s <fido2you.com> domain name has resolved to a website at “www.safe2you.online”, containing content virtually identical to that to which the domain name <fido4you.com> resolved in the hands of Respondent, promoting what appear to be FIDO branded products.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <fido2you.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019) (“According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue.”). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s very well-known FIDO mark when Respondent registered the <fido2you.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location and of the goods promoted on that website or location. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fido2you.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 6, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page