Fair Isaac Corporation v. Benchmark Mortgage
Claim Number: FA1203001432619
Complainant is Fair Isaac Corporation (“Complainant”), represented by James S. Woodward of Fair Isaac Corporation, Minnesota, USA. Respondent is Benchmark Mortgage (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ficocompany.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2012; the National Arbitration Forum received payment on March 6, 2012.
On March 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ficocompany.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2012 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@ficocompany.com. Also on March 7, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
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" 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 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
1. Complainant, Fair Isaac Corporation, provides decision management solutions and works with businesses globally to provide software, consulting services, and credit scores, and has done business under the FICO mark since 1995.
2. Complainant has rights in the FICO mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,273,432 registered August 31, 1999).
3. Respondent, Benchmark Mortgage, registered the <ficocompany.com> domain name on April 5, 2007.
4. Respondent’s domain name resolves to a website that advertises services similar to Complainant’s services.
5. Respondent has constructive and actual knowledge of Complainant’s rights in the FICO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FICO mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,273,432 registered August 31, 1999). Respondent failed to submit a Response in this proceeding.
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(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.”).
Complainant claims to own the rights in its FICO mark through its registrations with the USPTO (e.g., Reg. No. 2,273,432 registered August 31, 1999). Holding a trademark registration with the USPTO is sufficient to demonstrate rights in the mark. Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006). The Panel concludes that Complainant has secured rights in the FICO mark under Policy ¶ 4(a)(i) by having registered the mark with the USPTO.
Complainant argues that by the affixing of the generic term “company,” and the generic top-level domain (“gTLD”) “.com,” Respondent’s <ficocompany.com> domain name is confusingly similar to the FICO mark. The Panel holds that adding only a generic term and a gTLD does not differentiate the disputed domain name from the FICO mark pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel therefore concludes that Respondent’s <ficocompany.com> domain name is confusingly similar to Complainant’s FICO mark according to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <ficocompany.com> domain name and that Respondent has no relationship or connection with FICO. Complainant contends that the WHOIS information identifies Respondent as “Benchmark Mortgage” and that no further evidence exists to suggest Respondent is known by the domain name. The Panel determines that, based on the WHOIS identifier, as well as the lack of other supporting evidence, Respondent is not commonly known by the disputed domain name and thus cannot claim any rights or legitimate interests in the name pursuant to Policy ¶ 4(c)(ii). See 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) ; see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent does not use the disputed domain name in a manner constituting a bona fide offering of goods or service or a legitimate noncommercial or fair use of the domain name because the resolving website diverts users to another website that offers purely commercial content. Complainant alleges that the resolving website contains information about credit enhancement and scoring, business solutions, and other services similar to those offered by Complainant. The Panel finds that by using a confusingly similar domain name to maintain a website that markets competing services, Respondent’s use of disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that the <ficocompany.com> domain name directs Internet traffic to a commercial website that offers services that compete with Complainant’s services, which Complainant argues constitutes bad faith registration and use. The panel in Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001), held that the respondent used the disputed domain name to offer services that targeted consumers in the complainant’s market, which was evidence of bad faith registration and use. In Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004), the panel found that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore concludes that Respondent’s use of the domain name to divert Complainant’s potential consumers to its own site to offer competing services amounts to bad faith registration and use under Policy ¶ 4(a)(iv).
Complainant asserts that Respondent had actual knowledge of its mark based on correspondence stating that Complainant has rights to the mark. The Panel determines that Respondent had actual notice of the FICO mark and that registration of the disputed domain name was in bad faith pursuant to Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that 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 <ficocompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 20, 2012
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