EMVCO, LLC c/o Visa Holdings v. Josh Brant
Claim Number: FA1512001653470
Complainant is EMVCO, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, United States. Respondent is Josh Brant (“Respondent”), North Carolina, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <nabemv.com>, <heartlandemv.com>, <fdemv.com>, <allegianceemv.com>, <tsysemv.com>, <emvconverge.com>, <allemv.net>, and <allemv.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2015; the Forum received payment on December 23, 2015.
On Dec 22, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nabemv.com>, <heartlandemv.com>, <fdemv.com>, <allegianceemv.com>, <tsysemv.com>, <emvconverge.com>, <allemv.net>, and <allemv.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 December 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2016 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@nabemv.com, postmaster@heartlandemv.com, postmaster@fdemv.com, postmaster@allegianceemv.com, postmaster@tsysemv.com, postmaster@emvconverge.com, postmaster@allemv.net, and postmaster@allemv.com. Also on December 28, 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 January 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant uses its EMV mark in connection with secure payment transactions. Complainant has registered the EMV mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,233,769, registered April 24, 2007), which demonstrates Complainant’s rights in its mark. The Panel is directed to Attached Exhibit D for a copy of Complainant’s USPTO registration. The disputed domains are confusingly similar to Complainant’s mark as they contain the EMV mark in its entirety and merely add the descriptive words “heart,” “land,” “allegiance,” “converge,” and “all,” add the acronyms “NAB,” “FD,” and “TSYS,” all of which stand for payment-related companies and services in the marketplace, and add the generic top-level domain (“gTLD”) suffixes “.com” and “.net.”
2. Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent initially used its disputed domains to resolve to pay-per-click websites. As of the filing date of this complaint, the domains did not resolve to any active web content. The Panel is directed to Attached Exhibit F for screenshots of Respondent’s resolving webpages.
3. Respondent has registered and is using the disputed domain names in bad faith. First, Respondent’s initial use of the domains to derive revenue through pay-per-click websites violates Policy ¶ 4(b)(iv). Second, Respondent’s most recent failure to make any active use of the disputed domains constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Finally, because of Complainant’s long-term, widespread and prominent use of the EMV mark, it is inconceivable that Respondent registered the disputed domain names without actual knowledge of Complainant’s mark.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <nabemv.com>, <heartlandemv.com>, <fdemv.com>, <allegianceemv.com>, <tsysemv.com>, <emvconverge.com>, <allemv.net>, and <allemv.com> domain names are confusingly similar to Complainant’s EMV mark.
2. Respondent does not have any rights or legitimate interests in the <nabemv.com>, <heartlandemv.com>, <fdemv.com>, <allegianceemv.com>, <tsysemv.com>, <emvconverge.com>, <allemv.net>, and <allemv.com> domain names.
3. Respondent registered or used the <nabemv.com>, <heartlandemv.com>, <fdemv.com>, <allegianceemv.com>, <tsysemv.com>, <emvconverge.com>, <allemv.net>, and <allemv.com> domain names 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(f), 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 uses its EMV mark in connection with secure payment transactions. Complainant has registered the EMV mark with the USPTO (Reg. No. 3,233,769, registered April 24, 2007). Complainant argues that its USPTO registration demonstrates its rights in its mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the disputed domains are confusingly similar to Complainant’s mark as they contain the EMV mark in its entirety and merely add the descriptive words “heart,” “land,” “allegiance,” “converge,” and “all,” add the acronyms “NAB,” “FD,” and “TSYS,” all of which stand for payment-related companies and services in the marketplace, and add the gTLDs “.com” and “.net.” Previous panels have held that the addition of descriptive terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Previous panels have also found that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). As such, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s 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 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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).
Complainant contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent initially used its disputed domains to resolve to pay-per-click websites. As of the filing date of this complaint, Complainant asserts that the domains did not resolve to any active web content. The Panel notes that Complainant has failed to provide evidence of Respondent’s apparent use of its domains to operate pay-per-click websites. Previous panels have determined that a respondent’s failure to make any active use of a domain does not constitute 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). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant argues that Respondent’s initial use of the domains to derive revenue through pay-per-click websites violates Policy ¶ 4(b)(iv). Past panels have determined that a respondent’s use of disputed domain name to host a website that displays competing and/or non-competing hyperlinks constitutes bad faith registration and use under Policy ¶ 4(b)(iv). 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 accepts Complainant’s contention, and it also finds that Respondent registered and is using the domains in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s most recent failure to make any active use of the disputed domains constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Previous panels have held that a respondent’s failure to make any active use of a disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). As such, the Panel concludes that Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, because of Complainant’s long-term, widespread and prominent use of the EMV mark, Complainant alleges that it is inconceivable that Respondent registered the disputed domain names without actual knowledge of Complainant’s mark. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See 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). Accordingly, the Panel finds that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nabemv.com>, <heartlandemv.com>, <fdemv.com>, <allegianceemv.com>, <tsysemv.com>, <emvconverge.com>, <allemv.net>, and <allemv.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 4, 2016
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