DECISION

 

Fair Isaac Corporation v. Sasi Nair / FICO SOFTWARE SOLUTIONS FZC

Claim Number: FA2401002079739

 

PARTIES

Complainant is Fair Isaac Corporation ("Complainant"), represented by Ted Koshiol of Fair Isaac Corporation, Minnesota, USA. Respondent is Sasi Nair / FICO SOFTWARE SOLUTIONS FZC ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ficosoftwarefzc.com>, registered with Name.com, Inc.

 

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 18, 2024; Forum received payment on January 18, 2024.

 

On January 19, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <ficosoftwarefzc.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2024 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@ficosoftwarefzc.com. Also on January 23, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 14, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the FICO trademark and service mark established by its ownership of the portfolio of registrations described below and extensive and continuous use of the mark in commerce in connection with providing software and credit-related products and services since at least as early as 1995.

 

Complainant submits that since it was established it has grown into an international business providing products and services to clients in more than 100 countries. In its 2023 fiscal year, Complainant had revenues of $1.51 billion and employed approximately 3,400 people in offices worldwide.

 

In October 2023,Complainant's FICO internet platform received the Banking Innovation of the Year Platinum Award in the Future Digital Awards for Fintech & Payments 2023. In July 2023, Complainant was named Category Leader for Enterprise Fraud Solutions in the Chartis Enterprise Fraud Solutions Market Update and Vendor Landscape report from research firm Chartis four years in a row, and has received many other awards.

 

Complainant adds that the sales of products sold and services provided in connection with the FICO mark since 2009 exceed $11,000,000,000 globally and $7,300,000,000 in the U.S., and furthermore that sales of products and services in connection with the FICO mark going back to 1995 when the mark was first used exceed $17,000,000,000 globally and exceed $13,200,000,000 in the U.S.

 

In addition, Complainant submits that it owns and uses the domain names <fico.com> and <myfico.com> in connection with its software and credit-related services business, with its website at <www.fico.com> in operation since 1994 and its website at <www.myfico.com> online since 2000. True and correct copies of printouts from FICO's websites at <www.fico.com> and <www.myfico.com> have been exhibited in an attachment to the Complaint.

 

Complainant alleges that the disputed domain name is confusingly similar to Complainant's FICO mark, arguing that panels established under the Policy have found that, as in this case, where a domain name at issue incorporates a distinctive mark in its entirety, it creates sufficient similarity between the domain name at issue and the mark relied upon by the complainant, to render it confusingly similar. See Lowen Corp. v. Henry Chan, WIPO Case D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).

 

Furthermore, Complainant submits the addition of the term "softwarefzc" to the FICO mark does not negate the confusing similarity under Policy ¶ 4(1)(i), arguing that if anything, given the relationship of this term to FICO's core service offering, the addition of "software" serves only to increase the likelihood of confusion. See Exxon Mobil Corp. v. MGA Enterprises Ltd., FA 1273445 (Forum Aug. 26, 2009) (finding that the addition of the terms "travel" and "club," which have an obvious relationship to Complainant's [Exxon's] business, to Complainant's mark in the disputed domain name, exxontravelclub.com, created a confusing similarity between the disputed domain name and the registered mark).

 

Moreover, Complainant argues that the addition of a generic top-level domain extension <.com>. is irrelevant in determining similarity of the disputed domain name to Complainant's FICO mark. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case D2000-0127 (WIPO Apr. 22, 2000) ("[t]he addition of the generic top-level domain (gTLD) name '.com' is . . . without legal significance since use of a gTLD is required of domain name registrants").

 

Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that

·       Respondent has no relationship, affiliation, connection, endorsement or association with Complainant;

·       Respondent has never requested or received any authorization, permission or license from Complainant to use the Complainant's FICO mark in any way;

·       Respondent has never been commonly known by the disputed domain name or by the Complainant's FICO mark and has never acquired any trademark rights in same;

·       there is no evidence in the WhoIs information to suggest that Respondent is known by the disputed domain name;

·       given Complainant's numerous U.S. and international trademark registrations for the Complainant's FICO mark and its long-time and extensive worldwide use of the Complainant's FICO marks in connection with software and credit-related solutions and services, Respondent could not have developed any rights in the Complainant's FICO mark, unless Complainant licensed Complainant's FICO marks to respondent or otherwise allowed Respondent to use them;

·       however, Respondent has no relationship, association, affiliation, connection or endorsement with Complainant.

 

Complainant refers to a screen capture of the website to which the disputed domain name resolves, which it submits, illustrates that Respondent is using the disputed domain name for the sole purpose of driving Internet traffic to Respondent's website, trading on the goodwill associated with Complainant and its FICO marks, and offering confusingly similar and/or related goods and services in potential competition with Complainant.

 

The exhibited website to which the disputed domain name resolves offers software solutions and services that are related to, and potentially in competition with, some of the services offered by Complainant under the FICO mark. Specifically, Respondent's website states:

 

"FICO Software Solutions is a Customer-centric software services provider. Dedication to every Customer's success is our motto. We provide cost-effective, strategic and innovative solutions that create and add value to our clients in their business operations.

We provide world renowned ERP, CRM, Inventory and Supply Chain Management, HR & Payroll Software suiting any type of business establishments.

 

FICO Software Solutions ensures in making ERP consulting affordable as well as nimble to Small, Medium and Enterprise businesses. We strongly believe on Innovation, User-friendliness and Customer Care which are the key elements of our business model."

 

Complainant argues that this description is confusingly similar to the software solutions and services offered by Complainant. Much like Respondent, Complainant is a software solutions and services provider.

 

The "About Us" section on Respondent's website FICO's contains language that is strikingly similar to that on Complainant's site.

 

Complainant adds that Respondent's use of the disputed domain name is not legitimate because it diverts Complainant's customers and potential customers to Respondent's website, which offers confusingly similar and/or related goods and services in potential competition with FICO for commercial gain. See Homer, TLC Inc. v. Kang, FA 573872 (Forum Nov. 22, 2005) ("Respondent's use of a domain name that is identical to Complainant's mark to divert Internet users to a third-party website for Respondent's own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . .").

 

Complainant next alleges that Respondent registered and is using the disputed domain name in bad faith, arguing that Respondent knew of Complainant's rights in the FICO mark and its registration and use of the disputed domain name-- despite having such knowledge -- constitutes bad faith and warrants granting the requested relief.

 

On information and belief, Respondent registered the disputed domain name on August 19, 2023, which is more than 25 years after Complainant began using, and developed, rights in the FICO mark.

 

Complainant adds that Respondent is deemed to have constructive knowledge of Complainant's trademark rights at the time it registered and began using the disputed domain name in light of Complainant's numerous U.S. and international trademark applications and registrations containing Complainant's formative FICO mark.

 

Additionally, Complainant alleges that Respondent had actual knowledge of Complainant's trademark rights because Complainant has succeeded in three previous complainants against Respondent in respect of other domain names incorporating the FICO mark viz.

·       Fair Isaac Corporation v. Sashi Nair, FA 1613367 (Forum May 18, 2015} ordering the transfer of the domain name <ficosoftware.com> from Respondent to Complainant;

·       Fair Isaac Corporation v. Sashi Nair / FICO SOFTWARE SOLUTIONS, FA 1768555 (Forum Feb. 15, 2018); ordering the transfer of the domain name <ficosoftwaresolutions.com> from Respondent to Complainant; and

·       INDRP Arbitration Fair Isaac Corporation v. Ashwin Nair / FICO SOFTWARE SOLUTIONS, INDRP arbitrationcase no. 1627, ordering the transfer of the domain name <ficosoftware.in> from Respondent to Complainant.

 

In addition it is alleged that Respondent is deemed to have constructive knowledge of Complainant's rights in the FICO mark as a result of Complainant's multiple federal U.S. trademark registrations and numerous worldwide trademark registrations and applications for the

FICO marks; and there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively.

 

Complainant again refers to the website to which the disputed domain name resolves, arguing that it shows that Respondent is using the disputed domain name, which is identical to the Complainant's FICO marks, to direct Internet users to a commercial website featuring goods and services that complete with or are similar to those offered by Complainant. Complainant argues that such use is clear evidence of bad faith registration and use.

 

Finally, Complainant argues that Respondent has engaged in a repeated pattern of bad faith registration of confusingly similar domain names, specifically targeting FICO's Complainant's FICO marks, demonstrating a pattern of registrations where Complainant has successfully brought proceedings under the Policy and the INDRP as set out above.

 

Complainant submits that multiple panel decisions have found that such behavior constitutes bad faith, and argues that in this present case, Respondent's bad faith is particularly egregious, where he has again and again targeted Complainant's FICO marks, flaunting the prior panel decisions in deliberate disregard of Complainant's rights and after having been put on clear notice of those rights.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns and uses the FICO mark in connection with its business providing applied analytics, software and credit related products, which it holds a portfolio of registrations including the following:

·       U.S. federal service mark registration FICO, registration number 2,273,432, registered on the Principal Register on August 31, 1999 for services in international class 36;

·       U.S. federal service mark registration FICO, registration number 2,573,131, registered on the Principal Register on May 28, 2002 for services in international classes 35, 36, and 41;

·       U.S. federal trademark registration FICO, registration number 2,989,390, registered on the Principal Register on August 30, 2005, for goods in international class 9; and

·       U.S. federal trademark and service mark registration FICO, registration number 4,032,019, registered on the Principal Register on September 27, 2011 for goods and services in international classes 9, 16, 35, 36, 41, 42, and 45.

 

Complainant has an established Internet presence and is the owner of the domain names <fico.com> and <myfico.com>. Its website at <www.fico.com> has been in operation since 1994 and its website at <www.myfico.com> has been in operation since 2000.

 

The disputed domain name <ficosoftwarefzc.com> was registered on August 19, 2023 and resolves to a website that purports to be maintained and presented by an entity calling itself FICO Software Solutions offering software products that compete with those offered by Complainant.

 

There is no information available about Respondent except for that provided in the Complaint, as amended, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name in the course of this proceeding.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has provided convincing uncontested evidence that it has rights in the FICO mark, established by its ownership of its portfolio of United States registered trademarks and service marks described above and long and use of the mark in its international business providing applied analytics, software and credit related products, including on its website at <www.fico.com> and <www.myfico.com>.

 

The disputed domain name <ficosoftwarefzc.com> consists of Complainant's FICO mark in its entirety, the generic term "software", the letters "fzc "and the generic Top Level Domain ("gTLD") extension <.com>.

 

Complainant's FICO mark is the initial, dominant and only distinctive element in the disputed domain name. It is clearly identifiable within the disputed domain name.

 

For the purposes of this Complaint the addition of the generic term "software" and the letters "fzc" contribute no distinguishing character to the disputed domain name and nor do they prevent a finding of confusing similarity between the disputed domain name and Complainant's mark.

 

Similarly, the gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for an Internet domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant's mark.

 

This Panel finds therefore that the disputed domain name is confusingly similar to the FICO mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In its Complaint, Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name as set out in Complainant's detailed submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant has adduced uncontested convincing evidence that it has held registered trademark rights in the FICO mark going back to at least August 31, 1999 when the earlier of its abovementioned trademarks was registered in the United States.

 

The disputed domain name was registered many years later on August 19, 2023.

 

Complainant has shown that this is the fourth occasion on which it has brought complaints against Respondent for registering domain names that are confusingly similar to its FICO mark. Two of those proceedings were brought under the Policy and one was an arbitration under the INDRP policy as cited above.

 

There is therefore no doubt that Respondent had actual knowledge of Complainant, its FICO mark and its goodwill when the disputed domain name was chosen and registered.

 

This Panel finds therefore that the disputed domain name was registered in bad faith with the intention of taking predatory advantage of Complainant's goodwill and reputation in the FICO mark.

 

The exhibited screen capture of the website to which the disputed domain name resolves shows that Respondent is purporting to impersonate Complainant and purporting to offer software products which are similar to and compete with Complainant's products.

 

Respondent's website is not well presented and raises the question as to whether it is a genuine website. Nonetheless Respondent presents itself as being "FICO Software Solutions is a Customer-centric software services provider" and is therefore impersonating Complainant.

 

There is no indication on the website that Respondent has no association with Complainant and the text on Respondent's website infers an association with Complainant.

 

Respondent is therefore using the disputed domain name to attract and lure Internet traffic to its website, by creating the initial interest confusion among Internet users who are expecting to reach a a website maintained by or associated with Complainant. Upon arriving at Respondent's website there is nothing to indicate that the visitor has not arrived at a website maintained by or associated with Complainant.

 

This Panel finds therefore that by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with Complainant's NICO mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location and the products and services that Respondent purports to offer.

 

The fact that Respondent is engaged in a pattern of registering domain names that are confusingly similar to Complainant's mark also allow for a finding of use of the disputed domain name in bad faith by targeting Complainant, its mark and its goodwill.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

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 <ficosoftwarefzc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

James Bridgeman SC, Panelist

Dated: February 14, 2024