The Clearing House Payments Company L.L.C. v. Royal Titus
Claim Number: FA2108001958010
Complainant is The Clearing House Payments Company L.L.C. (“Complainant”), represented by Mary Grace Gallagher of Alston & Bird, LLP, Georgia, USA. Respondent is Royal Titus (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clearinghousegroup.com> (“Domain Name”), registered with eNom, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2021; the Forum received payment on August 3, 2021.
On August 3, 2021, eNom, LLC confirmed by e-mail to the Forum that the <clearinghousegroup.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 August 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@clearinghousegroup.com. Also on August 10, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On September 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
A. Complainant
Complainant, The Clearing House, is the only private-sector automated clearing house and wire operator in the United States, clearing and settling nearly $2 trillion in U.S. dollar payments each day, representing half of all commercial automated clearing house and wire volume. Complainant has rights in the THE CLEARING HOUSE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,132,217, registered April 24, 2012). Respondent’s <clearinghousegroup.com> domain name is confusingly similar to Complainant’s THE CLEARING HOUSE mark as it incorporates the “clearing house” portion of the THE CLEARING HOUSE mark and adds the generic term “group” and the gTLD “.com”.
Respondent lacks rights or legitimate interests in the <clearinghousegroup.com> domain name. Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the THE CLEARING HOUSE mark. Additionally, Respondent fails to make active use of the Domain Name.
Respondent, in communications with the Forum on July 12, 2021, has asserted that it is also the owner of the <clearinghousegroup.org> domain name which was the subject of a recent transfer decision in The Clearing House Payments Company L.L.C. v. FRIDAY OMAGA, FA1953832 (Forum Aug. 4, 2015). The Respondent had registered and used the <clearinghousegroup.org> domain name for the purposes of operating a website (“Respondent’s Website”) that almost precisely replicated the Complainant’s website at www.theclearinghouse.org; including reproducing Complainant’s logo and purporting to offer identical services. The Domain Name was registered on July 5, 2021, 3 days after Complainant commenced proceedings against Respondent in respect of the <clearinghousegroup.org> domain name.
Respondent registered and uses the <clearinghousegroup.com> domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the THE CLEARING HOUSE mark based on the circumstances of registration and the Respondent’s Website. Respondent has offered to sell the Domain Name to the Complainant. Given Respondent’s use of the <clearinghousegroup.org> domain name it is likely that the Domain Name is being held pending use in a similar manner to that used by <clearinghousegroup.org> domain name, namely to pass off as Complainant in furtherance of a phishing and/or malware scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the THE CLEARING HOUSE mark. The Domain Name is confusingly similar to Complainant’s THE CLEARING HOUSE mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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."
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 asserts rights in the THE CLEARING HOUSE mark through its registration of the mark with the USPTO (e.g Reg. No. 4,132,217, registered April 24, 2012). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <clearinghousegroup.com> domain name is confusingly similar to Complainant’s THE CLEARING HOUSE mark because it wholly incorporates the dominant portion of the Complainant’s THE CLEARING HOUSE mark (the “the” element being non-distinctive and the device element not being able to be incorporated into a domain name) while adding the descriptive word “group” and the “.com” gTLD to form the Domain Name. Adding a generic term and a gTLD to the dominant portion of a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the THE CLEARING HOUSE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Royal Titus” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is inactive. In the absence of any additional evidence inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website.
However, the evidence of the circumstances of the Domain Name’s registration as well as the evidence of the use that Respondent made of the <clearinghousegroup.org> domain name strongly suggests that the Respondent intends to use the Domain Name to redirect to a website similar to the Respondent’s website where Respondent passes off as Complainant and purports to offer services in direct competition with Complainant under the THE CLEARING HOUSE mark. The use of a confusingly similar domain name to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Name, July 5, 2021, Respondent had actual knowledge of Complainant’s THE CLEARING HOUSE mark. Complainant had recently commenced a UDRP proceeding against the domain name <clearinghousegroup.org>, also registered by Respondent (albeit under a different pseudonym). On July 12, 2021, Respondent (using a third pseudonym) wrote to the Forum offering to sell both domain names to Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds on the balance of probability that Respondent registered and uses the Domain Name in bad faith as Respondent registered the Domain Name and is presently holding the domain the Domain Name with the intention of using it for a website similar to the Respondent’s Website, where the Respondent passes off as Complainant (by mimicking Complainant’s website) and offers services in direct competition with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel finds Complainant has satisfied 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 <clearinghousegroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 3, 2021
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