Vericheck, Inc. v. Admin Manager
Claim Number: FA0606000734799
Complainant is Vericheck, Inc. (“Complainant”), represented by David Snead, P.O. Box 53249, Washington, DC 20009. Respondent is Admin Manager (“Respondent”), represented by Brett P. Wakino, 4266 Atlantic Avenue, Long Beach, CA 90807.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vericheck.com>, registered with Enom, Inc.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 21, 2006.
On June 21, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <vericheck.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 June 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 12, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 12, 2006.
On July 20, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends it has established rights in the VERICHECK mark through registration with the State of Georgia and through acquiring common-law rights by its continuous use and marketing under the name for approximately seventeen years. Complainant also contends that Respondent’s <vericheck.com> domain name is identical to the VERICHECK mark within the meaning of Policy ¶ 4(a)(i) because the disputed domain name encompasses the mark in its entirety and merely adds the generic top-level domain “.com.” Complainant alleges that Respondent is not commonly known by the <vericheck.com> domain name and that Respondent is using the domain name to direct internet users to a “faux search portal” to display links to Complainant’s competitors. Complainant contends that Respondent’s offer to sell the disputed domain name for $48,000 is evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name within the meaning of Policy ¶ 4(a)(ii). Complainant contends that the offer to sell the disputed domain name for $48,000 also shows Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii). Complainant asserts that Respondent is using the disputed domain name to redirect internet users to a website where competitors are advertised. In this manner, according to Complainant, Respondent is capitalizing on consumer confusion, presumably to obtain “click-through” fees for its own profits.
Respondent contends Complainant lacks sufficient rights in the VERICHECK mark to meet the requirements of Policy ¶ 4(a)(i). Respondent relies on the fact that the trademark registration for VERICHECK lies with a third-party and that Complainant was denied registration of the VERICHECK mark. Respondent also contends the mark is merely descriptive and used in its generic sense. Respondent contends that Complainant has failed to establish a prima facie case to support its allegations that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent contends that Complainant has not shown Respondent acted in bad faith within the meaning of Policy ¶ 4(a)(iii) because its offer to sell the domain name to Complainant occurred only after Complainant initiated negotiations for sale. Respondent also contends it has merely “parked” the domain name and that Complainant has not produced any evidence that Respondent is profiting through its use.
C. Additional Submissions
Complainant has continuously used and operated under the VERICHECK name since Complainant’s establishment in 1989. Moreover, Complainant registered the VERICHECK mark with the State of Georgia in August 2001. Since its establishment, Complainant has spent more than $85,000 on marketing its products and services and now conducts more than $1.2 million per month in financial transactions over the internet under the VERICHECK name. The third-party that holds the active trademark registration for the VERICHECK mark with the United States Patent and Trademark Office is VeriCheck Systems, Inc., an Arizona corporation. The registrant, however, does not use the mark. The record shows that Respondent is not commonly known by the <vericheck.com> domain name. Moreover, Respondent is not using the domain name to offer any goods or services of its own but is using the name to direct internet users to links, including links to Complainant’s competitors. Respondent acknowledges that in response to Complainant’s offer to purchase the name Respondent quoted a price of $48,000. Furthermore, consumers seeking to find Complainant’s website who use Respondent’s domain name are redirected to a website that features advertisements of competitors of Complainant, presumably for a referral fee paid to Respondent. Respondent does not merely “park” the domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 has established rights in the VERICHECK mark through the trademark registration it holds in the State of Georgia and through common law rights resulting from secondary meaning and substantial goodwill acquired by use of the mark continuously for approximately seventeen years. See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (state trademark registration); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002). Moreover, the <vericheck.com> domain name is identical to Complainant’s VERICHECK mark within the meaning of Policy ¶ 4(a)(i) because the disputed domain name encompasses the mark in its entirety and merely adds the generic top-level domain “.com.” See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000). Complainant thus has established rights in the VERICHECK mark and has also established that the disputed domain name is identical or confusingly similar within the meaning of Policy ¶ 4(a)(i).
Respondent is not using the disputed domain name to make a bona fide offering of goods or services but rather is taking advantage of consumer confusion to redirect internet users seeking Complainant’s website to links to Complainant’s competitors. This is not a legitimate purpose within the meaning of Policy ¶ 4(c)(ii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002). The fact that Respondent is not known by the mark also supports a conclusion that Respondent does not have rights and legitimate interests in the disputed domain name. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001). Finally, Respondent’s offer to sell the disputed domain name to Complainant for $48,000 also demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006). Complainant has met its burden under Policy ¶ 4(a)(ii) to show Respondent lacks rights or legitimate interests in the disputed domain name.
The fact that Respondent is using the disputed domain name to take advantage of consumer confusion and redirect internet users to a website where Complainant’s competitors are advertised shows Respondent’s bad faith. See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004). The record reasonably supports an inference that Respondent’s purpose in redirecting internet users to the competitors’ website is to earn a referral fee. This circumstance supports a finding of bad faith. See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005). Complainant has established that Respondent’s use of the disputed domain name is in bad faith within the meaning of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vericheck.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: August 2, 2006
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