Chex Systems, Inc. v. Pham Dinh Nhut
Claim Number: FA1403001548788
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexsystems.org>, registered with April Sea Information Technology Corporation.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2014; the National Arbitration Forum received payment on March 14, 2014. The Complaint was received in both Vietnamese and English.
On March 19, 2014, April Sea Information Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <chexsystems.org> domain name is registered with April Sea Information Technology Corporation and that Respondent is the current registrant of the name. April Sea Information Technology Corporation has verified that Respondent is bound by the April Sea Information Technology Corporation 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 24, 2014, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of April 14, 2014 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@chexsystems.org. Also on March 24, 2014, the Vietnamese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm. Esq. 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 has rights in the CHEXSYSTEMS mark as it relates to its consumer-reporting agency and in connection with debit account verification and reporting services and related services and products in both the financial institution and with consumers.
a. Complainant and its predecessors have used the CHEXSYSTEMS mark since March 31, 1983.
b. Complainant owns registrations for the CHEXSYSTEMS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,173,774 filed December 5, 2005, registered November 21, 2006).
c. Complainant has common law rights in the CHEXSYSTEMS mark that date back to 1983.
d. Respondent’s <chexsystems.org> domain name is identical to Complainant’s CHEXSYSTEMS mark. Respondent’s domain name is comprised of complainant’s mark in its entirety with the addition of the generic top-level domain (“gTLD”) “.org.”
2. Respondent has no rights or legitimate interests in the <chexsystems.org> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Nothing in the WHOIS information for the disputed domain name, or anywhere else on the record, indicates that Respondent is commonly known by the disputed domain name.
ii. Complainant has not authorized Respondent to use its mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
i. Respondent’s disputed domain name resolves to a pay-per-click website
3. Respondent registered and is using the <chexsystems.org> domain name in bad faith.
a. Respondent has a bad faith pattern of registering domain names featuring other parties’ registered trademarks.
b. Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). Respondent’s use of the disputed domain name disrupts Complainant’s business by resolving to a website featuring links and advertisements that compete with Complainant.
c. Respondent uses the disputed domain name to intentionally attract Internet user to its website for commercial gain, by creating a likelihood of confusion with Complainant and its registered mark.
d. Respondent had knowledge of Complainant and its CHEXSYSTEMS mark when it registered the disputed domain name.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
2. The Panel notes that Respondent’s <chexsystems.org> domain name was registered on June 16, 2005.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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(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.”).
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Identical and/or Confusingly Similar
Complainant contends that it has rights in the CHEXSYSTEMS mark as it relates to its consumer-reporting agency and in connection with debit account verification and reporting services and related services and products in both the financial institution and with consumers. Complainant states that Complainant and its predecessors have used the CHEXSYSTEMS mark since March 31, 1983. Complainant provides evidence that it owns registrations for the CHEXSYSTEMS mark with the USPTO (Reg. No. 3,173,774 filed December 5, 2005, registered November 21, 2006). Panels have previously found that a complainant has rights in a mark where it provides evidence of a registration with a recognized trademark authority. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel also notes that in the past panels have commonly found that a complainant has rights in a registered mark dating back to the filing date. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). Further, the Panel sees that a complainant need not register a domain name in the location of respondent. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). The Panel therefore finds that Complainant has rights in the CHEXSYSTEMS mark dating back to December 5, 2005 in accordance with Policy ¶ 4(a)(i).
The Panel notes that Respondent’s registration date for the disputed domain name is listed as June 16, 2005, which predates Complainant’s registration of the CHEXSYSTEMS mark. Complainant states that it has common law rights in the CHEXSYSTEMS mark that date back to its first use in commerce in1983. See Complainant’s Exhibit 4. Complainant claims that it has continuously used the CHEXSYSTEMS mark in commerce since that first use, and has established secondary meaning to the mark. The Panel notes that Complainant provides its Exhibit 3 describing Complainant’s business and the services it provides. Previous panels have concluded that a complainant has common law rights in a mark when it provides evidence of secondary meaning. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years). As the Panel finds that the evidence provided by Complainant is sufficient to demonstrate continuous use and association with Complainant, it concludes that Complainant has common law rights in the CHEXSYSTEMS mark dating back to its first use in commerce in 1983 pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <chexsystems.org> domain name is identical to Complainant’s CHEXSYSTEMS mark. Complainant explains that Respondent’s domain name is comprised of Complainant’s mark in its entirety with the addition of the gTLD “.org.” Panels have previously found that adding a gTLD to a registered mark does not differentiate it from a complainant’s registered mark. See Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark). The Panel concludes that Respondent’s disputed domain name is identical to Complainant’s CHEXSYSTEMS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant claims that Respondent has no rights or legitimate interests in the <chexsystems.org> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant argues that nothing in the WHOIS information for the disputed domain name, or anywhere else on the record, indicates that Respondent is commonly known by the disputed domain name. Additionally, Complainant states that it has not authorized Respondent to use its mark in any way. The Panel notes that the WHOIS information lists “Pham Dinh Nhut” as registrant of the disputed domain name. Panels have continuously found that a respondent is not commonly known by a disputed domain name where there is no evidence on the record or otherwise that respondent is commonly known by the disputed domain name. 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.”). The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by it under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant asserts that Respondent’s disputed domain name resolves to a pay-per-click website displaying links that some of which compete with Complainant’s business and some of which are unrelated to Complainant. The Panel notes Complainant’s Exhibit 6 displaying the website that resolves from Respondent’s disputed domain name. The Panel sees that some of the links include, “Chexsystems,” “Apply for a Credit Card,” “Credit Report,” “Online Banking,” “Payday Advance,” “Have Free Sex Tonight,” “Find Local Sexy Singles Near You,” “School Loan Consolidation,” and “Play Grand Theft Auto 5 For Free.” See Complainant’s Exhibit 6. Prior panels have found that using a confusingly similar domain name to resolve to a website featuring competing and noncompeting links from which a respondent presumably receives pay-per-click fees, does not transfer rights or legitimate interests in a disputed domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant asserts that Respondent registered and is using the <chexsystems.org> domain name in bad faith under Policy ¶ 4(b)(ii). Complainant explains that Respondent has a bad faith pattern of registering domain names featuring other parties registered trademarks. Complainant provides two prior UDRP cases where the Panel held that Respondent registered and was using a disputed domain name in bad faith. See TaxHawk v. Pham Dinh Nhut, FA 1431444 (Nat. Arb. Forum May 28, 2012); see also Charlotte-Mecklenburg Hosp. Auth. v. Pham Dinh Nhut, FA 1434556 (Nat. Arb. Forum May 28, 2012). Previous panels have found bad faith use and registration under Policy ¶ 4(b)(ii) where a respondent was involved in prior UDRP cases resulting in the transfer of respondent’s disputed domain name. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel concludes that Respondent has a bad faith pattern of registering and using disputed domain names under Policy ¶ 4(b)(ii), and thus the Panel may infer bad faith in the registration and use in the instant dispute.
Next, Complainant claims that Respondent registered and is using the <chexsystems.org> disputed domain name in bad faith under Policy ¶ 4(b)(iii). Respondent’s use of the disputed domain name disrupts Complainant’s business by resolving to a website featuring links and advertisements that compete with Complainant as discussed previously. See Complainant’s Exhibit 6. The Panel specifically notes the links that appear to compete with Complainant’s business, “Online Banking,” “Debt Management,” “Finance,” “Apply for a Credit Card,” and “Chexsystems.” Previous panels have concluded that it is bad faith use and registration to use a disputed domain name to resolve to a website displaying links that compete with a complainant’s business in a way which disrupts the complainant’s business. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that Respondent registered and is using the <chexsystems.org> domain name disruptively and in bad faith under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent uses the disputed domain name to intentionally attract Internet user to its website for commercial gain, by creating a likelihood of confusion with Complainant and its registered mark. Prior panels have concluded that using a disputed domain that is confusingly similar or identical to a complainant’s mark indicates bad faith if it is used to resolve to a website displaying pay-per-click links for respondent’s commercial benefit. See 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 concludes that Respondent registered and is using the <chexsystems.org> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also asserts that Respondent had knowledge of Complainant and its CHEXSYSTEMS mark when it registered the disputed domain name. Complainant states that it is unreasonable to think that Respondent did not have notice of Complainant or its registered mark because of the nature of Respondent’s identical domain name and the content on the resolving website. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chexsystems.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 26, 2014
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