DECISION

 

Fair Isaac Corporation v. Doan Van Quang

Claim Number: FA2310002068237

 

PARTIES

Complainant is Fair Isaac Corporation ("Complainant"), represented by Ted Koshiol of Fair Isaac Corporation, Minnesota, USA. Respondent is Doan Van Quang ("Respondent"), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tpbfico.com>, registered with P.A. Viet Nam Company Limited.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 27, 2023; Forum received payment on October 27, 2023.

 

On October 30, 2023, P.A. Viet Nam Company Limited confirmed by e-mail to Forum that the <tpbfico.com> domain name is registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the name. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company Limited 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 November 2, 2023, Forum served the English and Vietnamese Complaint and all Annexes, including an English and Vietnamese Written Notice of the Complaint, setting a deadline of November 22, 2023 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@tpbfico.com. Also on November 2, 2023, the English and Vietnamese 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, Forum transmitted to the parties a Notification of Respondent Default in English and Vietnamese.

 

On November 26, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:

 

"Pursuant to verification received from the Registrar, the Registration agreement is in Vietnamese. You have two options: 1. Translate the Complaint and Table of Contents into Vietnamese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English."  

 

Complainant elected to provide a translation of the Complaint into Vietnamese and, absent a response (formal or otherwise), the Panel determines that the proceedings should continue in English.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in FICO and submits that the domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. 

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith having targeted Complainant's trademark and business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

 

1.                      Complainant provides applied analytics services by reference to the trademark, FICO;

2.                      Complainant¹ owns, inter alia, United States Patent and Trademark Office ("USPTO") Reg. No. 2,273,432, registered August 31, 1999, for the mark, FICO; and

3.                      the disputed domain name was registered on March 23, 2020.

 

DISCUSSION

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.  

 

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of registration of the trademark with the USPTO, a national trademark authority.   

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com", can be disregarded see, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (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.").

 

The comparison thus reduces to that of the trademark and "tpbfico". Clearly, the terms are not identical and the critical issue in these proceedings is whether they are confusingly similar.

 

The Complaint states that "where … a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar", going on to qualify that broad statement with the rider that "the addition of a common or generic term to a trademark does nothing to reduce the domain name's confusing similarity."  

 

In support thereof, the Complaint cites the cases of Lowen Corp. v. Henry Chan, D2004-4030 (WIPO Aug. 5, 2004) finding the domain name <lowensigns.com> confusingly similar to LOWEN, and Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that the addition of the descriptive words "fashion" or "cosmetics" after the trademark DIOR or CHRISTIAN DIOR did not avoid confusing similarity to the trademark), and finally, Exxon Mobil Corporation v. mga enterprises limited, FA 1273445 (Forum Aug. 26, 2009) (finding <exxontravelclub.com> confusingly similar to complainant's EXXON mark).

 

The Panel has no concern with those decisions but questions how they assist Complainant.  It refers instead to CHRISTIAN DIOR COUTURE v. Kianna Dior Productions, D2009-0353 (WIPO May 2009) stating that:

 

"…the unqualified statement that confusing similarity exists if a disputed domain name completely incorporates the relevant trademark does not, without more, prove dispositive.  …  Added matter invites a contextual comparison on a case by case basis. … Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity."

 

Here, Complainant has offered no explanation as to how the added matter, namely the letters "tpb", should be understood. The insinuation is that they are somehow "generic" and should be discounted, but it is not intuitive to the Panel how that may be so, and limited allowed research by the Panel did not show that they are a commonly understood abbreviation of some kind.  The prior UDRP decisions cited in the Complaint therefore have little relevance.

 

The Panel has approached the comparison from first principles, taking account of those aspects of the Complaint which have, in principle, attracted sufficient attention to feature in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview").

The starting point is paragraph 1.7 of the WIPO Overview which asks: What is the test for identity or confusing similarity under the first element?  in answer to which it is said that:

 

"The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name.

This test typically involves a side-by-side comparison of the domain name and … the relevant trademark…"

 

Applying this test, comparison of FICO and tpbfico does not give rise to an immediate impression of confusing similarity.  Even when allowance is made for some of the concessional language in the WIPO Overview, such as "whether the mark is recognizable within the disputed domain name", the same passage goes on to state that "[i]ssues such as the strength of the complainant's mark … are decided under the second and third elements" (#1.7), a coded way of stating that reputation is not generally considered a determinative factor in the assessment of confusing similarity.

 

Much of the information in the Complaint about the use and public recognition of the trademark may support a claim of common law trademark entitlement (were that necessary), or form the basis for inferential findings about a legitimate interest in the domain name or bad faith registration of the domain name, but it should not skew the assessment of whether, on a "side-by-side comparison", the compared terms are confusingly similar.

 

The Complaint states that:

 

"It appears that Respondent is using the Domain Name for the sole purpose of driving Internet traffic to Respondent's website, trading on the goodwill associated with FICO and the FICO Marks, and offering confusingly similar and/or related goods and services in potential competition with FICO." 

 

The WIPO Overview states that "[t]he content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element" (#1.15). Nonetheless, it states that "in specific limited instances, while not a replacement as such for the typical side-by-side comparison", a panel may find affirmation of confusing similarity if the resolving website content trades off a complainant's reputation (#1.7; see also #1.5).

 

Complainant's evidence provides an English language translation from the resolving website (originally in Vietnamese).   It refers to "TPBFICO - Vietnam's leading bank for unsecured loans". These are not, as claimed, services of the same description as those provided by Complainant under the trademark. Moreover, what emerges from the evidence and from the Panel's limited enquiries is that, if bad faith exists, it is not vis-a-vis Complainant, but what seems to be a Vietnamese financial services provider, TPBank, not a party to these proceedings and not an entity on behalf of which the Panel would make findings under the Policy.

 

On balance, the Panel's assessment is that the evidence points away from an inference of intentional confusing similarity with Complainant's trademark.  In the result, the Panel finds tpbfico to be an element of no determinate meaning, which is also visually and otherwise quite different from the trademark. Accordingly, the Panel does not find the disputed domain name to be confusingly similar to the trademark.

 

The Panel so finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary); Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent's rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

Registration and Use in Bad Faith

No findings required.

 

DECISION

Having not established at least one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <tpbfico.com> domain name REMAIN WITH Respondent.

 

 

 

 

Debrett G. Lyons, Panelist

Dated: November 28, 2023