Fair Isaac Corporation v. LAMIAA BELDA / FICONEXT
Claim Number: FA2205001998207
Complainant is Fair Isaac Corporation (“Complainant”), represented by Ted Koshiol of Fair Isaac Corporation, Minnesota, USA. Respondent is LAMIAA BELDA / FICONEXT (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ficonext.com>, registered with Gandi SAS.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2022; the Forum received payment on May 26, 2022.
On May 27, 2022, Gandi SAS confirmed by e-mail to the Forum that the <ficonext.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 May 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2022 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 email@example.com. Also on May 31, 2022, 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.
A timely Response was received and determined to be complete on June 16, 2022.
On June 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
On June 28, 2022 the Panel issued a Procedural Order for the Respondent to submit its Response and other documents in pdf format so the Panel could access them. The Respondent complied.
On July 8, 2022 the Panel issued a Procedural Order extending the due date for this Decision to July 13, 2022 instead of July 8, 2022.
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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
- Complainant was founded in 1956 and has provided data for business use throughout the world since then. In fiscal year 2021, its revenues reached US$1.32 Billion, with some 3,600 employees worldwide. Since as early as 1995, Complainant has used its FICO service mark in connection with consumer credit scoring services, such that by 2009 its FICO trade name and FICO scores were in use by many banks and credit card companies globally.
- Complainant has registered its FICO service mark with the United States Patent and Trademark Office (“USPTO”), and the disputed domain name, <ficonext.com>, is confusingly similar to that mark. The disputed domain name contains Complainant’s entire service mark, adding only the descriptive term “next” and the “.com” generic top-level domain (“gTLD”).
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use any rights involving the FICO service mark. There is no evidence that Respondent is commonly known by the disputed domain name. Moreover, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent employs the disputed domain name to redirect internet users to a competing website, which offers business and financial modeling services similar to those offered by Complainant.
- Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers. Furthermore, Respondent registered and uses the disputed domain name with constructive and actual knowledge of Complainant’s rights in the FICO mark. Respondent has also ignored Complainant's correspondence demanding that Respondent cease use of the disputed domain name.
- Respondent has registered FICONEXT with the appropriate Moroccan authorities as the name of Respondent's company. That company is located in Morocco and provides management consulting services.
- The name, FICONEXT, was chosen by Respondent as an acronym that relates directly to his life experience. Respondent's career has involved finance (“FI”), and he has received a Master's degree in Controlling/Comptrolling (“CO”). Management consulting now represents Respondent's next (“NEXT”) stage in his career development.
Complainant has been in business for several decades, and its primary service, generating consumer credit scores, is used by banks and credit card companies to assess credit worthiness throughout the world. In connection with that business, Complainant has obtained multiple registrations worldwide for its FICO service mark, including with the USPTO (e.g., Reg. No. 2,273,432; registered Aug. 31, 1999).
The disputed domain name, <ficonext.com>, is owned by Respondent, and the date of registration is March 29, 2019. The disputed domain name redirects internet users to Respondent's website, which offers services related to business management consulting that are similar to and competitive with some services offered by Complainant.
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.
Complainant’s presentation of sound evidence that it has registered the FICO service mark with the USPTO convinces the Panel that Complainant has the necessary rights in that mark to satisfy Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (“Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”); see also Innomed Technologies, Inc. v. DRP Services, FA 221171 (Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”).
Complainant does not contend that the disputed domain name <ficonext.com> is identical to Complainant’s FICO mark, but instead argues that the disputed domain name is confusingly similar to that mark. The Panel is inclined to agree with that argument, as the disputed domain name contains the full mark and adds merely a short descriptive term, “next,” and the “.com” gTLD. Those minor additions do not offer a meaningful distinction between the disputed domain name and Complainant’s service mark for the purposes of Policy ¶ 4(a)(i). See Ripple Labs Inc. v. fixup Bugs, FA 1791805 (Forum July 11, 2018) (finding <ripplenext.com> to be confusingly similar to the RIPPLE mark): see also LEGO Juris A/S v. Sales Department, D2010-0379 (Wipo Apr. 29, 2010) (finding <legonext.com> to be confusingly similar to the LEGO trademark).
As a result, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
The consensus of prior Policy panels is that when a complainant can sustain a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name, the burden shifts to that respondent to come forward with clear evidence that it does possess those rights or legitimate interests. 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.”); see also G.D. Searle & Co. v. Martin Marketing, FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Complainant has established to the Panel’s satisfaction that the disputed domain name is confusingly similar to Complainant’s mark, and Complainant strongly asserts that it has granted no authorization or license for Respondent to use that mark in any manner, including within a domain name. Accordingly, the Panel concludes that Complainant has sustained a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
In rebuttal to said prima facie case, Respondent contends that it does have rights in the disputed domain name, <ficonext.com>, because Respondent uses the disputed domain name to offer management consulting services, which he contends constitute “a bona fide offering of goods or services” per Policy ¶ 4(c)(i). However, the Panel agrees with Complainant that those management consulting services fall within the scope of services that Complainant offers under its FICO mark, to which the Panel has found the disputed domain name to be confusingly similar. In accord with prior Policy panel decisions, the Panel finds that Respondent’s offering similar, and thus competing, services under a disputed domain name that is confusingly similar to a long-established and internationally well-known mark does not conform to the requirements of Policy ¶ 4(c)(i), Moreover, such usage of the disputed domain name also fails to constitute “a legitimate noncommercial or fair use” of that name pursuant to Policy ¶ 4(c)(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. Rather, 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) (“Past panels have decided that a respondent’s 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).”).
Respondent also argues that the disputed domain name corresponds identically to Respondent's company name, which is duly registered with the appropriate Moroccan authority. The Respondent is therefore suggesting that its company, FICONEXT, is commonly known as the disputed domain name, <ficonext.com>, in compliance with the requirements described in Policy ¶ 4(c)(ii) for establishing Respondent's rights or legitimate interests in the disputed domain name. The Panel does agree with the Respondent's argument that the pertinent parts of the two names are exactly the same. However, the Panel’s examination of the Response and its annexes cannot sustain a finding that Respondent’s company is “commonly known” by its moniker in a specific substantial community − in Morocco or internationally. As a result, the Panel must conclude that Respondent's failure to present clear and persuasive evidence, as opposed to mere self-serving assertions, that Respondent’s company, FICONEXT, is “commonly known” as the disputed domain name, means that Respondent has also failed to meet the requirements described in Policy ¶ 4(c)(ii) for establishing its rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.3 (“The respondent must however be “commonly known” (as opposed to merely incidentally being known) by the relevant moniker [...] Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence.”).
Thus, the Panel finds that Respondent has not successfully rebutted Complainant's prima facie case as set forth above.
Accordingly, the Panel finds that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the Respondent registered and uses the disputed domain in bad faith per Policy ¶¶ 4(b)(iii) and (iv), which state:
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.
In support of this contention, Complainant has asserted, and provided sufficient supporting evidence, that Respondent uses the disputed domain name to host a website that offers services that compete directly with some of the services offered by Complainant. The Panel determines that such usage causes disruption to Complainant's business and is intended for commercial gain due to likely confusion between Complainant's mark and the disputed domain name as internet users are redirected to Respondent's own website. As a result, the Panel believes that Respondent's actions fit neatly within the bad faith parameters set forth in Policy ¶¶ 4(b)(iii) and (iv) above. See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (“Use of a disputed domain name to divert Internet users from a complainant’s website to a respondent’s competing website can evince a finding a bad faith per Policy ¶ 4(b)(iii) [...] Use of a disputed domain name to create confusion as to the affiliation of a complainant with the respondent’s competing website in question can support a finding of bad faith per Policy ¶ 4(b)(iv).”); see also Fitness International, LLC v. ALISTAIR SWODECK, FA 1623644 (Forum July 9, 2015).
Therefore, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ficonext.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: July 13, 2022
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