Fidelity National Information Services, Inc. v. Private Whois Service a/k/a John Blanton
Claim Number: FA1104001381771
Complainant is Fidelity National Information Services, Inc. (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Private Whois Service a/k/a John Blanton (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ezcardinfocom.com>, <ezcardinfous.com>, <ezcardinfous.net>, and <wwwezcardinfocom.com>, registered with Internet.bs Corp.
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 National Arbitration Forum electronically on April 5, 2011; the National Arbitration Forum received payment on April 5, 2011.
On April 6, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <ezcardinfocom.com>, <ezcardinfous.com>, <ezcardinfous.net>, and <wwwezcardinfocom.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 April 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2011 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@ezcardinfocom.com, postmaster@ezcardinfous.com, postmaster@ezcardinfous.net, and postmaster@wwwezcardinfocom.com. Also on April 7, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 makes the following assertions:
1. Respondent’s <ezcardinfocom.com>, <ezcardinfous.com>, <ezcardinfous.net>, and <wwwezcardinfocom.com> domain names are confusingly similar to Complainant’s EZCARDINFO.COM mark.
2. Respondent does not have any rights or legitimate interests in the <ezcardinfocom.com>, <ezcardinfous.com>, <ezcardinfous.net>, or <wwwezcardinfocom.com> domain names.
3. Respondent registered and used the <ezcardinfocom.com>, <ezcardinfous.com>, <ezcardinfous.net>, and <wwwezcardinfocom.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fidelity National Information Services, Inc., is a technology provider to those clients in the financial services industry. Complainant offers the EZCARDINFO.COM mark and its domain name and website to banks and financial institutions, who in turn, use it to offer their customers a one-stop-shop for online account services.
Respondent, Private Whois Service a/k/a John Blanton, registered the disputed domain names not before January 25, 2010. The disputed domain names resolve to websites featuring pay-per-click links, some of which compete with Complainant’s business. The disputed domains also display what purports to be reviews of Complainant’s business, but instead provide nonsensical information and also redirect Internet users, through links, back to Respondent’s own websites.
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."
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.”).
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.
Complainant has not registered the EZCARDINFO.COM mark with a federal trademark authority, but previous panels have deemed this as unnecessary under Policy ¶ 4(a)(i). Earlier panels have asserted that governmental trademark registration is not required so long as a complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark in question. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). The Panel finds accordingly.
Complainant uses the EZCARDINFO.COM mark in association with its offering of online account services. Complainant began using the mark when it registered the <ezcardinfo.com> domain name in 2001. Since that time, Complainant has spent large amounts of money on advertisement and promotion of its services and currently, hundreds of thousands of cardholders are registered in Complainant’s program. Thus, according to Policy ¶ 4(a)(i), the Panel finds that Complainant has provided sufficient evidence to establish its common law rights in the EZCARDINFO.COM mark by showing its continuous and extensive commercial use of the mark. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
Complainant contends that Respondent’s <ezcardinfocom.com>, <ezcardinfous.com>, <ezcardinfous.net>, and <wwwezcardinfocom.com> domain names are confusingly similar to Complainant’s EZCARDINFO.COM mark. The disputed domain names all contain Complainant’s EZCARDINFO.COM entire mark, each adds a mistyping of Complainant’s domain name: one by adding “com;” two by adding “us;” and the final by adding “www” and “com.” Each then adds a generic top-level domain (“gTLD”): three adding “.com” and one adding “.net.” Previous panels have determined that pursuant to Policy ¶ 4(a)(i), the addition of a common mistyping and a gTLD is insufficient to distinguish a disputed domain name from a complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in any of the <ezcardinfocom.com>, <ezcardinfous.com>, <ezcardinfous.net>, and <wwwezcardinfocom.com> domain names. Previous panels determine that once a complainant makes a prima facie case in support of its allegations, the burden of proof shifts to the respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant has made a prima facie case. Because Respondent has failed to respond to the complaint, the Panel may infer that Respondent does not have rights or legitimate in any of the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will examine the record to determine whether or not the Respondent has rights or legitimate interests in the disputed domain names as pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent has not been authorized to use the EZCARDINFO.COM mark, nor has Respondent set forth any evidence to show that it has been commonly known by the disputed domain names. Further, the WHOIS information identifies the registrant of the domain names as “Private Whois Service a/k/a John Blanton.” Absent any other information to indicate that Respondent is commonly known by the disputed domain names, the Panel finds that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain name to display third-party, click-through links which are in competition with Complainant’s business. The Panel finds that such competing use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent prominently displays Complainant’s mark throughout the disputed domain names. It also features what appear to be reviews of Complainant’s product, however, said reviews are really only nonsensical sentences with links back to Respondent’s own websites. Complainant argues that this use is an attempt by Respondent to pass itself off as Complainant. The Panel finds that this does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use 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).”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant makes the argument that Respondent’s registration of four domain names containing Complainant’s mark is evidence of a pattern bad faith registration and use. The Panel agrees under a Policy ¶ 4(a)(ii) analysis. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Respondent uses the disputed domain name to display pay-per-click links which resolve to competitors of Complainant. The Panel finds this to be a disruption of Complainant’s business and evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent uses the disputed domain names to confuse Internet users who are likely searching for Complainant’s official website, and in turn, misunderstand a relationship between the two. The Panel infers that Respondent likely profits from this creation of confusion by the generation of click-through fees and finds this to constitute bad faith and registration 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).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant alleges that Respondent attempts to pass itself off as Complainant on the website resolving from the disputed domain names. The Panel finds this is further evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Respondent displays a disclaimer at the disputed domain names which states:
This is a website just for review about ezcardinfo which is provided by ezcardinfo. We have no connection, no relationship with ezcardinfo.com. If you have any questions, please visit the official website Ezcardinfo login page.
In spite of this, previous panels have found that a disclaimer does not mitigate a respondent’s offense because Internet users are likely to become confused as to an affiliation between a complainant and a respondent long before they have a chance to read a respondent’s disclaimer. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ezcardinfocom.com>, <ezcardinfous.com>, <ezcardinfous.net>, and <wwwezcardinfocom.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 16, 2011
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