WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VeriSign Inc. v. MerchantBankCard
Case No. D2007-0487
1. The Parties
The Complainant is VeriSign Inc., Mountain View, California, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.
The Respondent is MerchantBankCard, Temecula, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <verisignmerchantaccounts.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2007. On April 2, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 2, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2007. The Response was filed with the Center on May 3, 2007.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 22, 2007. The Panel subsequently extended the decision due date to June 12, 2007 due to exceptional circumstances. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of numerous trademark and service mark registrations for the word, and word and design, “VERISIGN”, in the United States of America and foreign countries. Registrations on the Principal Register of the United States Patent and Trademark Office (USPTO) include Registration No. 2,559,289, dated April 9, 2002, in International Class (IC) 42, covering, inter alia, identification systems for computers, claiming date of first use and use in commerce of May 9, 1995; Registration No. 2,302,350, dated December 21, 1999, in IC 9, covering “digital identity certification system used on computers”, claiming date of first use and first use in commerce of September 5, 1995; and Registration No. 2,758,215, dated September 2, 2003, in ICs 9, 16, 35, 36, 38, 40, 41 and 42, covering, inter alia, computer software in the field of cryptographic network security, claiming date of first use and first use in commerce of April 1995. (Complaint, Exhibit C). Complainant has also submitted a documentary summary of foreign trademark and service mark registrations, including dates and registration numbers. (Id., Exhibit D).
Complainant is the provider of various Internet-related services, including web-security, payment processing, and merchant authentication. Complainant spends in excess of $250 million per year to advertise the VERISIGN mark and its registered <verisign.com> domain name. (Complaint, paras. 13 & 20). Complainant’s trademark is well-known in the field of Internet payment processing and merchant authentication on the Internet.
According to the Registrar’s Verification report, Respondent is registrant of the disputed domain name, <verisignmerchantaccounts.com>. According to a Network Solutions Whois database report submitted by Complainant, the record of the disputed domain name was created on August 18, 2005.
At the time this proceeding was initiated by Complainant, Respondent used the disputed domain name to redirect Internet users to a website styled “www.VisaMCSupplies.com”. That website offered various products and services, including “Merchant Account Processing ‘Internet Gateway’” and “Merchant Account Processing ‘Retail’”. (Complaint, Exhibit F.) However, subsequent to initiation of this proceeding, and as shown in the WIPO Center’s administrative file record, the disputed domain name is presently associated with a website headed “mbc”, the home page of which offers “processing rates”, and which includes various subheadings and internal page links related to merchant accounts and Internet credit card processing.
By certified letter and email dated February 1, 2007, Complainant (through its counsel) advised Respondent that it was infringing on Complainant’s rights in its VERISIGN mark, that Respondent had no authorization to use that mark, and demanding that Respondent immediately cease and desist from its conduct. The certified letter was returned as undeliverable.
Following initiation of this proceeding, Respondent by email to Complainant and the Center, dated March 31, 2007, offered to sell the disputed domain name to Complainant for $22,000. (WIPO Center file record 1.1)
Respondent indicates that it is “a respectful 2 years old assosiate [sic] of Verisign and is a certified authorized value added reseller program” which allows it “to utilize Verisgn’s logo’s and advertize [sic] in various markets as a reseller of the Verisign Gateway Product Suites. If you do not already have a copy of said Verisign Agent Agreement please advise and one will be emailed to you”. (Response)
The Registration Agreement in effect between Respondent and Network Solutions LLC subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts rights in the VERISIGN trademark based on extensive use in commerce in the United States of America and other countries, as evidenced by registrations at the USPTO and trademark offices in other countries. Complainant alleges that the disputed domain name is confusingly similar to its trademark in that (1) it fully incorporates the trademark and (2) adds terms which Internet users would expect to be used in connection with Complainant and its products and services.
Complainant argues that its trademark is well-known in the United States of America and other countries. This reinforces that Respondent was seeking to take unfair advantage of its mark when it registered disputed domain name.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use Complainant’s trademark, and has not been commonly known by the disputed domain name. Respondent registered the disputed domain name with awareness of Complainant’s rights in its well-known trademark.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith within the meaning of Paragraph 4(b)(iv) of the Policy because it has, for commercial gain and with obvious knowledge of Complainant’s trademark, used the disputed domain name so as to cause Internet user confusion regarding Complainant’s status as source, sponsor or affiliate of Respondent’s website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.
Respondent argues that it is not in conflict with Complainant, but is actually its partner. Respondent contends that is contractually authorized to utilize Complainant’s trademark as a branded reseller.
Respondent states that Complainant will benefit financially from Respondent’s efforts to promote Complainant’s trademark. Respondent argues that Complainant could have registered the disputed domain name “on the open market”, but failed to do that.
Responded offers to sell the disputed domain name to Complainant for $22,000.
Respondent requests the Panel to reject Complainant’s demand for transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Complainant and Respondent have each filed submissions. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark and service mark VERISIGN based on use in commerce in the United States of America and other countries, and on registration at the USPTO and in other countries (see Factual Background, supra). Respondent has not disputed Complainant’s rights in the trademark.
The Panel finds that Complainant has rights in the trademark VERISIGN. The Panel also finds based on the evidence submitted by Complainant with regard to the large number of countries in which the trademark has been registered, its substantial expenditure of advertising funds in promoting the mark, and other factors, that the trademark VERISIGN is well-known in connection with Internet-related payment processing, security and related authentication services.
The disputed domain name fully incorporates Complainant’s trademark, and adds the term “merchantaccounts.com”. The phrase “merchant accounts” is one that Internet users would expect to be associated with Complainant’s mark. By adding those terms to Complainant’s trademark, Respondent has done nothing to reduce a likelihood of Internet user confusion as compared with using the mark standing alone. Based on the visual impression, sound and meaning of the disputed domain name, the Panel finds that it is confusingly similar to Complainant’s trademark.
Complainant has demonstrated rights in the VERISIGN trademark, and that the disputed domain name <verisignmerchantaccounts.com> is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Respondent has asserted that it is authorized by contract with Complainant to use Complainant’s trademark in the disputed domain name. Complainant has expressly rejected this assertion. Respondent has failed to provide any supporting evidence of contractual terms authorizing its use of Complainant’s trademark in a domain name.
Respondent included in an e-mail an offer to send along the relevant contract if the Center did not have such contract in its possession. It is not clear why Respondent considered that the Center might be a repository for Complainant’s contracts. The Complaint, sent to Respondent both by the Center and by Complainant, made apparent that Complainant denied authorizing Respondent to use its trademark in a domain name. Moreover, by letter and e-mail dated February 1, 2007,1 Complainant made clear to Respondent that Complainant did not consider Respondent authorized to use its trademark in the disputed domain name. Respondent was on notice that in order to refute Complainant’s denial of authorization, it would be necessary to provide some affirmative evidence of its alleged contractual authorization. The Panel does not consider it necessary or appropriate at this stage to separately request a copy of the alleged contract or its terms from Respondent.
Respondent has also argued that its use of the disputed domain name is beneficial to Complainant. However, Complainant is not required to suffer the Respondent’s unauthorized use of its mark even if Respondent’s use might result in some financial benefit to Complainant. Even if it were true that Complainant would financially benefit from Respondent’s use of its mark in the disputed domain name, that fact of itself would not establish rights or legitimate interests for Respondent.
Complainant has established that Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating [the respondent] registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name (Policy, paragraph 4(b)(i)); and “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on your website or location” (id., paragraph 4(b)(iv)) .
Respondent has used the disputed domain name, which is confusingly similar to Complainant’s well-known mark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. Respondent’s website, addressed by the disputed domain name (incorporating Complainant’s trademark), offers services that would be expected from Complainant, and includes no indication (or disclaimer suggesting) that it is not sponsored by Complainant.2 Such action constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Subsequent to initiation of this processing, Respondent offered to sell the disputed domain name to Complainant for an amount substantially in excess of its out-of-pocket costs directly connected with the name. On one hand, this offer might be characterized as a “settlement offer”, and as such might not be considered to evidence registration with intent to sell. On the other hand, this offer was not framed as a settlement offer. It was framed as a straightforward offer by an owner of rights to sell those rights. Because the Panel on independent grounds (see paragraph immediately preceding) determined that Respondent registered and used the disputed domain name in bad faith, it need not determine whether the offer to sell also constitutes bad faith.
Complainant has demonstrated that Respondent registered and used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <verisignmerchantaccouts.com>, be transferred to the Complainant.
Frederick M. Abbott
Dated: June 12, 2007
1 Complainant's letter to Respondent was sent to the address indicated in Respondent’s record of registration for the disputed domain name, and returned by the post office. There is no evidence indicating that Complainant e-mail was similarly returned.
2 This is not to suggest that a disclaimer would preclude a finding of bad faith here, but rather to indicate that the likelihood of Internet user confusion on these facts is manifest.