Chex Systems, Inc. v. Mark Heinrich
Claim Number: FA1409001578916
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Mark Heinrich (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chex.systems>, <chexinc.com>, <chexlisted.com>, <chextalk.com>, and <removechex.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2014; the National Arbitration Forum received payment on September 9, 2014.
On September 11, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <chex.systems>, <chexinc.com>, <chexlisted.com>, <chextalk.com>, and <removechex.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 September 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@chex.systems, postmaster@chexinc.com, postmaster@chexlisted.com, postmaster@chextalk.com, postmaster@removechex.com. Also on September 12, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant uses the CHEXSYSTEMS mark in connection with its consumer-reporting services.
2.Complainant has registered the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,173,774 registered Nov. 21, 2006).
3.The domain names are confusingly similar to the mark in that they use the “chex” portion of the mark and add generic terms.
4. Respondent has no rights or legitimate interests. First, Complainant claims that Respondent has never been commonly known by any of these disputed domain names. Further, Complainant argues that all of the domain names resolve to websites discussing CHEXSYSTEMS and purporting to offer Complainant’s services. See Compl., at Attached Ex. 5–9.
5.Respondent registered and is using the domain names in bad faith. The presence of multiple unauthorized and infringing domain names shows Respondent is on a pattern of bad faith registration which disrupts Complainant’s business and the provision of its legitimate CHEXSYSTEMS services and in a manner that creates a likelihood for confusion. Respondent also must have known of Complainant’s rights in the CHEXSYSTEMS mark when registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a prominent consumer-reporting service and provides related services.
2.Complainant has registered the CHEXSYSTEMS mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,173,774 registered Nov. 21, 2006).
3.The earliest registration of any of the disputed domain names was <chextalk.com> on December 10, 2012.
4. Respondent uses the disputed domain names variously to pass itself off as Complainant, to resolve to websites discussing and purporting to offer information on CHEXSYSTEMS and Complainant’s and related services and also to feature pay-per-click advertisements and content regarding various financial services.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant uses the CHEXSYSTEMS mark in connection with its consumer-reporting services. Complainant has registered the mark with the USPTO (e.g., Reg. No. 3,173,774 registered Nov. 21, 2006). The Panel concludes that this registration sufficiently shows Complainant’s Policy ¶ 4(a)(i) rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CHEXSYSTEMS mark. Complainant submits that the domain names are confusingly similar to the CHEXSYSTEMS mark in that they use the CHEX portion of the mark and add generic terms that do not distinguish the domain names from the trademark. The Panel notes that the <chex.systems>, <chexinc.com>, <chexlisted.com>, <chextalk.com>, and <removechex.com> all effectively use just part of the mark, “CHEX,” along with descriptive terms. In the case of <chex.systems>, Respondent clearly took advantage of the “.systems” new top-level domain to make a domain name that is effectively identical to the trademark. As to the other domain names, the Panel concludes that the domain names all fall within the confusing similarity intended under Policy ¶ 4(a)(i) as internet users would assume that they are official domain names of Complainant. See, e.g., Mead Johnson & Company, LLC v. noom kung, FA 1521731 (Nat. Arb. Forum Oct. 24, 2013) (holding that the addition of multiple terms, both generic and descriptive, do not negate a finding of confusing similarity); Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHEXSYSTEMS mark,
to use the CHEX part of it together with other generic words so that the internet user will assume that the domain names so created are official domain names of Complainant;
(b) The disputed domain names resolve to websites that Respondent uses to pass itself off as Complainant, discuss and purport to offer information on CHEXSYSTEMS and Complainant’s services and to feature pay-per-click advertisements and content regarding various financial services.
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant also submits that Respondent has never been commonly known by any of the disputed domain names. The Panel notes that the WHOIS lists “Mark Heinrich” as the registrant of record. In Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), the panel found that the respondent was not known by the domain names when there was no material to suggest such a theory. The Panel here likewise finds against Respondent as to Policy ¶ 4(c)(ii);
(e)Complainant argues that all of the domain names resolve to websites discussing CHEXSYSTEMS and purporting to offer Complainant’s services. See Compl., at Attached Ex. 5–9. The Panel takes note of these uses and conclude s that purporting to offer CHEXSYSTEMS and various hyperlink-sponsored content is not bona fide under Policy ¶ 4(c)(i), or legitimately fair or noncommercial under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); Gen. Mills, Inc. v. Zuccarini, FA 97050 (Nat. Arb. Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that the presence of multiple infringing domain names suggests Respondent is on a pattern of bad faith registration. The Panel finds that Respondent’s present holding of multiple disputed domain names serves as evidence of Policy ¶ 4(b)(ii) bad faith in this case. See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Second, Complainant argues that Respondent is disrupting Complainant’s legitimate CHEXSYSTEMS services by using the domain names in the manner described. The domain names are used primarily to suggest Respondent provides CHEXSYSTEMS services, whilst at times they resolve to hyperlink advertising content. See Compl., at Attached Exs. 5–9. The Panel concludes that the domain names interrupt Complainant’s business in such a competitive manner as to cause Policy ¶ 4(b)(iii) bad faith. See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Third, Complainant submits that Respondent’s use of the domain names creates a likelihood for confusion. As the Panel believes the evidence of the domain names’ use, as shown in Exhibits 5–9, creates a likelihood Internet users may mistake Complainant as the source or origin of the services and advertisements offered, the Panel finds Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Fourth, Complainant argues that Respondent had to have known of Complainant’s rights in the CHEXSYSTEMS mark when registering the domain names. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the CHEX portion of the CHEXSYSTEMS mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chex.systems>, <chexinc.com>, <chexlisted.com>, <chextalk.com>, and <removechex.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 8, 2014
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