VeriFone, Inc. v. Steve Sasman
Claim Number: FA0910001287342
Complainant is VeriFone, Inc. (“Complainant”), represented by Michael
R. Scott of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <veriphone.biz>, <veriphone.info>, <veriphone.mobi>, and <veriphone.org>, registered with Go Daddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 1, 2009; the National Arbitration Forum received a hard copy of the Complaint October 2, 2009.
On October 2, 2009, Go Daddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <veriphone.biz>, <veriphone.info>, <veriphone.mobi>, and <veriphone.org> domain names are registered with Go Daddy.com, Inc. and that Respondent is the current registrant of the names. Go Daddy.com, Inc. verified that Respondent is bound by the Go Daddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 2009, 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@veriphone.biz, postmaster@veriphone.info, postmaster@veriphone.mobi, and postmaster@veriphone.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <veriphone.biz>, <veriphone.info>, <veriphone.mobi>, and <veriphone.org> domain names are confusingly similar to Complainant’s VERIFONE mark.
2. Respondent has no rights to or legitimate interests in the <veriphone.biz>, <veriphone.info>, <veriphone.mobi>, and <veriphone.org> domain names.
3. Respondent registered and used the <veriphone.biz>, <veriphone.info>, <veriphone.mobi>, and <veriphone.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VeriFone, Inc., is a leader in providing technology based products and services including computers, computer software, data terminals, and payment technology products. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VERIFONE mark (e.g., Reg. No. 1,229,416 issued March 8, 1983).
Respondent registered the disputed domain names March 24, 2009. Respondent’s disputed domain names resolve to websites displaying third-party links to websites offering payment technology products in competition with 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 owns various trademark registrations for the
VERIFONE mark with the USPTO (e.g., Reg. No. 1,229,416 issued March 8,
1983). The Panel finds that Complainant
established rights in the VERIFONE mark for purposes of Policy ¶ 4(a)(i)
through its trademark registrations with the USPTO. See
Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum
Dec. 21, 2006) (finding that the Complainant’s federal trademark registration
established its rights in the mark under Policy ¶ 4(a)(i)); see also
Complainant argues that
Respondent’s disputed domain names are confusingly similar to Complainant’s
VERIFONE mark pursuant to Policy ¶ 4(a)(i).
Each of Respondent’s disputed domain names contains a phonetically
identical misspelled version of Complainant’s mark and adds a generic top-level
domain (“gTLD”). The Panel finds that a
disputed domain name that contains a phonetically identical misspelled version
of a complainant’s registered mark creates a domain name that is confusing similar
to the complainant’s mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks all rights and legitimate interests in the disputed domain names. When Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant established a prima facie case and Respondent has failed to file a Response in which it shows that it does have rights to or legitimate interests in the mark and domain names. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair or legitimate use. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain names. As proof, Complainant offers the WHOIS information, which lists the registrant as “Steve Sasman.” The Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed
domain names resolve to a website featuring advertisements and links relating
to Complainant’s competitors in the payment technology industry. The
Panel may infer that Respondent profits through the generation of click-through
fees from the links to Complainant’s competitors. Therefore, the Panel
finds that Respondent’s use of the disputed domain names is not in connection
with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and
that it is not in connection with a legitimate noncommercial or fair use of the
disputed domain names under Policy ¶ 4(c)(iii). See 24 Hour Fitness
USA, Inc. v. 24HourNames.com-Quality Domains For
Typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who make those typographical errors. The disputed domain names take advantage of Internet users who mistype Complainant’s VERIFONE mark. Complainant contends that Respondent has engaged in typosquatting by misspelling Complainant’s mark in the disputed domain names. The Panel agrees and concludes that Respondent’s engagement in typosquatting is further evidence that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain names resolve to websites featuring links to Complainant’s competitors in the payment technology industry. The confusingly similar disputed domain names likely attract Internet users that are attempting to access Complainant’s website. Those Internet users are unknowingly redirected to the websites of Complainant’s competitors. Therefore, the Panel finds that Respondent’s use of the confusingly similar disputed domain names constitutes a disruption of Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Where click through fees are likely, the Panel is permitted to make an inference that Respondent receives click-through fees from the use of the aforementioned hyperlinks. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and the resolving websites. Therefore, the Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel determined that Respondent engaged in typosquatting. This practice alone constitutes evidence to support findings of bad faith registration and use under Policy ¶ 4(a)(iii). See, e.g., Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that Complainant satisfied the elements of ICANN 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 <veriphone.biz>, <veriphone.info>, <veriphone.mobi>, and <veriphone.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 16, 2009.
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