Chex Systems, Inc. v. Rony Daniel / Outdoor Living Inc
Claim Number: FA1508001633760
Complainant is Chex Systems, Inc. ("Complainant"), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Rony Daniel / Outdoor Living Inc ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexinfo.com>, registered with NameSilo, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2015; the Forum received payment on August 17, 2015.
On August 18, 2015, NameSilo, LLC confirmed by email to the Forum that the <chexinfo.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@chexinfo.com. Also on August 19, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 offers fee-based financial services to banks and other financial institutions, including access to its database of debit data, under the CHEXSYSTEMS mark. Complainant also offers free services to consumers under the mark, including reports of their records contained in Complainant's database. Complainant owns a U.S. trademark registration for CHEXSYSTEMS, issued in 2006 and reflecting a first-use date of 1983; Complainant also claims common-law rights in the mark.
Respondent registered the disputed domain name <chexinfo.com> in 2012. Complainant contends that the disputed domain name is confusingly similar to its CHEXSYSTEMS mark; that Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that Respondent is using the domain name for a website containing numerous references to Complainant's mark and services, information about prepaid cards and other services, and advertisements for financial services. Complainant alleges that this website competes with Complainant's own site offering information about its services, and gives Internet users the false impression that it is associated with or endorsed by Complainant. Complainant states that Respondent is not commonly known by the domain name, and has not been authorized to use Complainant's mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.").
The disputed domain name <chexinfo.com> includes the distinctive portion of Complainant's registered trademark CHEXSYSTEMS, adding only the generic term "info" and the ".com" top-level domain. These alterations are insufficient to distinguish the domain name from Complainant's mark for purposes of paragraph 4(a)(1) of the Policy. See, e.g., Chex Systems, Inc. v. Heinrich, FA 1578916 (Nat. Arb. Forum Oct. 8, 2014) (finding <chexlisted.com> and <chextalk.com> confusingly similar to CHEXSYSTEMS); Bank of America Corp. v. Conquest Business Ventures Inc., FA 464716 (Nat. Arb. Forum May 31, 2005) (finding <bankofamericainfo.com> confusingly similar to BANK OF AMERICA); Fair, Isaac & Co. v. Inocom, FA 97005 (Nat. Arb. Forum May 17, 2001) (finding <ficoinfo.com> confusingly similar to FICO). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates the distinctive portion of Complainant's registered mark; it was registered in the name of a privacy service, cloaking Respondent's identity; and its only apparent use has been for a commercial website consisting primarily of advertisements. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Homer TLC, Inc. v. Zilfiqar Ahmed / Super Ads Junction, FA 1605517 (Nat. Arb. Forum Mar. 17, 2015) (use of domain name containing trademark for purported informational website containing advertisements for competitors of trademark owner); Chex Systems, Inc. v. Heinrich, supra (use of domain name containing distinctive portion of trademark for website discussing trademark owner's services and containing advertisements for other financial services). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name referencing Complainant's mark and used it for a website designed to profit from confusion with Complainant. The Panel in Chex Systems, Inc. v. Heinrich found bad faith based upon conduct nearly identical to that present here, and this Panel agrees with the conclusion reached in that case. Respondent's conduct clearly demonstrates bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chexinfo.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 16, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page