Visa International Service Association v. Visa Corp
Claim Number: FA0603000660977
Complainant is Visa International Service Association (“Complainant”), represented by Michael J. Leonard, of Pepper Hamilton LLP, 3000 Two Logan Square, Eighteenth and Arch Streets, Philadelphia, PA 19103-2799. Respondent is Visa Corp (“Respondent”), 4795 Tanners Spring Drive, Alpharetta, GA 30022.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <verifled-by-visa.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2006.
On April 5, 2006, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <verifled-by-visa.com> domain name is/are registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@verifled-by-visa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
Complainant is the world’s largest processor of consumer financial transactions, processing over 5,000 transactions per second at more than 24 million locations worldwide.
Complainant’s annual worldwide sales volume totals over $3.4 trillion on more than 1.2 billion VISA branded payment cards.
Complainant has registered numerous marks with the United States Patent and Trademark Office (“USPTO”) in connection with the provision of these services including the VERIFIED BY VISA mark (Reg. No. 3,039,816 issued Jan. 10, 2006, filed Jan. 30, 2001).
Respondent registered the <verifled-by-visa.com> domain name on February 23, 2006.
Complainant has not licensed or otherwise authorized Respondent’s use of its mark.
Respondent’s domain name resolves to a website that prominently displays Complainant’s VISA mark and resembles Complainant’s official homepage, improperly inviting Internet users to enter credit card numbers and other personal information.
Respondent’s <verifled-by-visa.com> domain name is confusingly similar to Complainant’s VERIFIED BY VISA mark.
Respondent does not have any rights or legitimate interests in the <verifled-by-visa.com> domain name.
Respondent registered and used the <verifled-by-visa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the VERIFIED BY VISA mark through its registration with the USPTO. Moreover, Complainant’s rights in the mark date the filing of its trademark application on January 30, 2001. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effectiveness of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003): “As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”
Complainant contends, and Respondent does not deny, that Respondent’s <verifled-by-visa.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name consists merely of a misspelled variation of Complainant’s VARIFIED BY VISA mark, created by replacing the letter “i” with the letter “l” and adding hyphens to separate the words. The addition of hyphens to separate words is irrelevant when determining whether a domain name is confusingly similar to a competing mark. See Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that a respondent's <marrriott.com> domain name was confusingly similar to a complainant's MARRIOTT mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003): “[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).” See also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <verifled-by-visa.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it has such rights or legitimate interests. Because of Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant has asserted that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest exists); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to
accept all reasonable allegations set forth…as true.
However, the Panel may nonetheless, and will now analyze the
evidence of record to determine further whether there is support for any claim
of rights or legitimate interests that might have been advanced on behalf of
Respondent.
Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s mark. The Panel notes that although Respondent is listed in its WHOIS information as Visa Corp., no evidence has been offered to verify its identity under that name. In the absence of such verification, the Panel concludes that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Furthermore, Complainant contends, and Respondent does not deny, that Respondent is using the <verifled-by-visa.com> domain name to hold itself out as Complainant in an effort to lure Internet users into divulging credit card numbers and other personal information in connection with a “phishing” scheme. The Panel finds that such use of the contested domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶ 4(c)(i) or (iii)); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitates a complainant’s credit application website and attempts fraudulently to acquire personal information from a complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel thus finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant contends, without contradiction from Respondent, that Respondent is using the <verifled-by-visa.com> domain name to entrap Internet users in a “phishing” scheme aimed at fraudulently obtaining their credit card numbers and other personal information. The Panel finds that Respondent’s use of the disputed domain name in this fashion is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a respondent registered and used a contested domain name in bad faith because it redirected Internet users to a website that imitated a complainant’s website and was used fraudulently to acquire personal information from the complainant’s potential associates).
Moreover, the Panel finds that Respondent’s use of the <verifled-by-visa.com> domain name will likely cause confusion as to Respondent’s sponsorship of and affiliation with the resulting website. Such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that a respondent violated Policy ¶ 4(b)(iv) by displaying a complainant’s mark on its website and offering services identical to those offered by the complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a questioned domain name is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Finally, it appears that Respondent registered the contested
domain name with either actual or constructive knowledge of Complainant’s
rights in the VERIFIED BY VISA mark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such actual or constructive knowledge evidences bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <verifled-by-visa.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 15, 2006
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