Fidelity National Information Services, Inc. v. Forest Mead
Claim Number: FA1901001825022
Complainant is Fidelity National Information Services, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Forest Mead (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myfisglobal.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2019; the Forum received payment on January 14, 2019.
On January 15, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <myfisglobal.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 January 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2019 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@myfisglobal.com. Also on January 16, 2019, 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 February 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is a global leader in financial services technology, serving more than 20,000 clients in more than 130 countries, including financial institutions, merchants, retailers, and business customers. Complainant has rights in the FIS trademark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,714,946, registered Apr. 7, 2015). Respondent’s <myfisglobal.com> domain name is confusingly similar to Complainant’s trademark because Respondent merely adds the generic and/or descriptive terms “my” and “global” and the generic top-level domain (“gTLD”) “.com” to Complainant’s trademark.
Respondent lacks rights and legitimate interest in the <myfisglobal.com> domain name because Respondent is not commonly known by the disputed domain name nor is Respondent authorized to use the FIS trademark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent registered and uses the <myfisglobal.com> domain name in bad faith. The disputed domain name resolves to a parked webpage on which Respondent displays advertisements to third-party websites. Respondent also makes a general offer to sell the disputed domain name. Finally, Respondent registered a domain name that is virtually identical to Complainant’s <my.fis.global.com> and this constitutes typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the following U.S. trademark registrations:
No. 4,841,536 FIS (word), registered October 27, 2015 for goods and services in classes 9 and 36;
No. 4,981,141 FIS (word), registered June 21, 2016 for services in classes 35 and 41;
No. 4,956,058 FIS (word), registered May 10, 2016 for services in classes 38, 42 and 45; and
No. 4,714,946 FIS (fig.), registered April 7, 2015 for goods and services in classes 9, 35 and 36.
Respondent registered the <myfisglobal.com> domain name on January 18, 2018.
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 (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 asserts rights in the FIS trademark based on its registration with the USPTO (e.g. Reg. No. 4,714,946, registered Apr. 7, 2015). Registration of a trademark with the USPTO is sufficient to establish a complainant’s rights in the trademark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds that Complainant has rights in the FIS trademark.
Complainant contends Respondent’s <myfisglobal.com> domain name is confusingly similar to Complainant’s trademark because Respondent merely adds the generic and/or descriptive terms “my” and “global” as well as the gTLD “.com” to Complainant’s fully incorporated trademark. The addition of a generic and/or descriptive terms and a top-level domain do not distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
In this case, the Panel notes that <myfisglobal.com> not only incorporates Complainant’s trademark FIS, but is also created to be closely related to Complainant’s client portal <my.fisglobal.com>, meaning that the added descriptive parts of the disputed domain name clearly relates to Complainant’s services.
Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant’s argues Respondent lacks rights or legitimate interest in the <myfisglobal.com> domain name because Respondent is not commonly known by the disputed domain name nor is Respondent authorized to use Complainant’s FIS trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS information for the disputed domain name lists the registrant as “Forest Mead”, and there is no other evidence to suggest that Respondent was authorized to use the FIS trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant alleges Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <myfisglobal.com> domain name. Complainant argues Respondent previously used the disputed domain name to display a parked webpage on which Respondent displays advertisements to third-party websites. Using a disputed domain name to display unrelated third-party links can indicate a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides screenshots of the previous resolving webpages of the disputed domain name which displayed third-party links unrelated to Complainant. Thus, the Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under ¶ 4(c)(i) and (iii).
Complainant contends that Respondent currently fails to make active use of the <myfisglobal.com> domain name and this is evidence that Respondent lacks rights and legitimate interest in the disputed domain name. Failure to use a disputed domain name can support a finding that a respondent lacks rights or legitimate interest in a disputed domain name. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots wherein the disputed domain name resolves to a page displaying the language “Can’t reach this page.” Therefore, the Panel finds that Respondent lacks rights or legitimate interest in the disputed domain name.
Finally, Complainant argues that Respondent previously made an offer to sell the <myfisglobal.com> domain name and this demonstrates Respondent lacks rights and legitimate interest in the disputed domain name. A general offer to sell a disputed domain name can provide additional evidence that a respondent lacks rights or legitimate interest in a disputed domain name. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). The Panel notes that Complainant provides screenshots of the resolving webpages of <myfisglobal.com>, displaying a link stating “Would you like to buy this domain name?” which resolved to the registrar’s domain brokerage service. Therefore, the Panel finds that this provides additional evidence that Respondent lacks rights or legitimate interest in the disputed domain name.
Complainant contends that Respondent registered and uses the <myfisglobal.com> domain name in bad faith because Respondent previously offered the disputed domain name for sale. A general offer to sell a disputed domain name can support a finding of bad faith under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Additionally, Complainant alleges that Respondent registered and is using the <myfisglobal.com> domain name in bad faith by unfairly disrupting Complainant’s business. Even if not commercially competitive, disruption of a complainant’s business can support a finding of bad faith under Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Operating a website in opposition to a complainant fits the broad definition of Competitor under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Auliya ulfiyanto, FA 1682051 (Forum Aug. 17, 2016) (adopting a broad interpretation of “compete and disrupt” in Policy ¶ 4(b)(iii), and finding bad faith where the respondent was “operating a website whose activities are in opposition to Complainant”). Complainant argues that Respondent’s prior use of the disputed domain name was to disrupt Complainant’s business by diverting Internet users seeking Complainant’s business, thereby competing with Complainant for Internet traffic and interfering with Complainant’s ability to control use of its registered FIS trademark. The Panel agrees with Complainant, and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant further argues Respondent’s prior use of the <myfisglobal.com> domain name constitutes bad faith because Respondent attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its FIS trademark as to the source, affiliation, and/or endorsement of such website. Use of a disputed domain name confusingly similar to a complainant’s mark to direct Internet traffic to unrelated third-party websites in order to profit from click-through fees constitutes bad faith under Policy ¶ 4(b)(iv). See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to unrelated third-party websites in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel notes that Complainant provides screenshots of previous resolving webpages of the disputed domain name which display links to third-party sites unrelated to Complainant. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent fails to make active use of the <myfisglobal.com> domain name and this is evidence of bad faith. Failure to actively use a disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel is of the opinion that this present non-active use shall be seen in combination of the previous active and clearly bad faith use, and therefore finds that this combination adds to the conclusion that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant alleges Respondent had knowledge of Complainant’s rights in the trademark at the time Respondent registered the <myfisglobal.com> domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).
Here, as noted above, the disputed domain name is created to not only incorporate Complainant’s well-known trademark, but is an obvious reference to Complainant’s client portal <my.fisglobal.com>. This is a clear indication that Respondent had actual knowledge of the FIS trademark and related services at the time of registration of the disputed domain name, thus constituting bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myfisglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 20, 2019
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