Chex Systems, Inc. v. FATIH GULGONUL
Claim Number: FA1508001633765
Complainant is Chex Systems, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is FATIH GULGONUL (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chexsystemssolutions.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.
Darryl C. Wilson, 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, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chexsystemssolutions.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 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 e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and postmaster@chexsystemssolutions.com. Also on August 19, 2015, 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 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 National Arbitration Forum appointed Darryl C. Wilson, 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 has rights in the CHEXSYSTEMS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,173,774, registered November 21, 2006). Respondent’s disputed <chexsystemssolutions.com> domain name is confusingly similar to Complainant’s CHEXSYSTEMS mark. The disputed domain name includes the CHEXSYSTEMS mark in its entirety and merely adds the generic term “solutions” as well as the generic top-level domain (“gTLD”) “.com.” The addition of a generic term and a gTLD is not sufficient to distinguish the domain name from the CHEXSYSTEMS mark.
Respondent has no rights or legitimate interests in the disputed domain name. Nothing in the record, including WHOIS information, indicates Respondent is commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain name, to display pay-per-click advertisements for competing services and to pass itself off as Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the confusingly similar domain name, to advertise third-party financial services, demonstrates that Respondent is competing and disrupting Complainant’s business. Further, Respondent intentionally attracts, for commercial gain, users who mistakenly believe that Respondent’s domain is affiliated with or owned by Complainant. Lastly, it is clear that Respondent had knowledge of Complainant’s mark at the time the disputed <chexsystemssolutions.com> domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Chex Systems, Inc. of Minnesota, USA. Complainant is the owner of the domestic registration for the mark CHEXSYSTEMS which it has used continuously since at least as early as 1983 in connection with its provision of goods and services in the debit account verification and reporting business.
Respondent is Faith Gulgonul of London, UK. Respondent’s registrar’s address is listed as Arizona, USA. The Panel notes that the disputed domain name was created on or about June 6, 2005.
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 contends that its rights in the CHEXSYSTEMS mark have been established through registration of the mark with the USPTO (Reg. No. 3,173,774, registered November 21, 2006). Prior panels have found that registration of a mark with the USPTO establishes rights in the mark under Policy ¶4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has rights in the CHEXSYSTEMS mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <chexsystemssolutions.com> domain name is confusingly similar to Complainant’s CHEXSYSTEMS mark. Respondent’s disputed domain name differs from the CHEXSYSTEMS mark through the addition of the generic term “solutions” and the gTLD “.com.” Past panels have held that a respondent adding a generic term to a mark did not sufficiently differentiate the disputed domain name from the mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Similarly, panels have previously found that the presence of the gTLD “.com” is not relevant to an analysis of confusing similarity. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel here finds that Respondent’s disputed <chexsystemssolutions.com> is confusingly similar to the CHEXSYSTEMS mark for purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that nothing in the record, including WHOIS information, indicates Respondent is commonly known by the disputed domain name. Indeed, WHOIS information indicates that Respondent registered the disputed domain name using the name “FATIH GULGONUL,” which does not resemble the disputed domain name. WHOIS information, along with a lack of information to the contrary, has been used by previous panels to determine that a respondent is not commonly known by a disputed domain name. See 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). As Respondent has failed to provide any response to Complainant’s assertions the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s use of the disputed domain name, to resolve to a website hosting pay-per-click advertisements, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant provides evidence indicating Respondent host advertisements with such titles as, “Sun Trust Checking Account,” “Capital One Credit Cards,” and “Credit Karma.” Prior panels have held that using a confusingly similar domain name to operate a site hosting pay-per-click advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The Panel here finds that Respondent’s use of the <chexsystemssolutions.com> domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also claims that Respondent’s apparent attempt to pass itself off as Complainant indicates a lack of rights or legitimate interests in the disputed domain name. The website that resolves from the <chexsystemssolutions.com> domain name repeatedly uses the CHEXSYSTEMS mark and displays the sentence, “Chexsystems is a reporting agency that maintains a database of people which banks have sent them.” According to Complainant their Chex Systems business includes a consumer-reporting agency. Previous panels have held that a respondent passing itself off as a complainant is evidence of a lack of rights or legitimate interests in the domain name at issue. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel here finds that under Policy ¶ 4(a)(ii) the Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith. Complainant contends that Respondent’s use of the confusingly similar domain name, to advertise third-party financial services, demonstrates that Respondent is competing and disrupting Complainant’s business. The Panel notes again that Respondent host advertisements for products and services that compete with Complainant with such titles as, “Sun Trust Checking Account,” “Capital One Credit Cards,” and “Credit Karma.” Past panels have held that a respondent’s use of a confusingly similar domain to host third-party advertisements is evidence of bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel here finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶(b)(iii).
Further, Respondent intentionally attracts, for commercial gain, users who mistakenly believe that Respondent’s domain is affiliated with or owned by Complainant. In addition, Respondent’s bad faith is shown through Respondent’s attempt to pass itself off as Complainant. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent is deemed to have taken commercial advantage of the similarity between a disputed domain name and a complainant’s mark. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel here finds that Respondent is exploiting the similarity between the CHEXSYSTEMS mark and the disputed domain name, which further supports a finding of bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <chexsystemssolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 28, 2015
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