innovativemerchantsolution.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intuit Inc. v. NOLDC, Inc.

Case No. D2006-1217

1. The Parties

The Complainant is Intuit Inc. of Mountain View, California, United States of America, represented by Fenwick & West, LLP, United States of America.

The Respondent is NOLDC, Inc., of New Orleans, Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <innovativemerchantsolution.com> is registered with Intercosmos Media Group, doing business as directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2006. On September 21, 2006, the Center transmitted by email to Intercosmos Media Group (doing business as directNIC.com) a request for registrar verification in connection with the domain name at issue. On September 25, 2006, Intercosmos Media Group transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing contact details for the administrative, billing and technical contacts. 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 September 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 24, 2006.

Subsequently, on November 2, 2006, the Center notified the parties that the registrar had indicated the disputed domain name would expire on November 6, 2006, during the course of these proceedings. Later that same day, the registrar notified the Center that the domain name had been renewed by Respondent, and that the new expiration date is November 6, 2007.

The Center appointed Miriam Sapiro as the sole panelist in this matter on November 22, 2006. 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 Intuit, Inc., and its wholly-owned subsidiary, Innovative Merchant Solutions, LLC (IMS). Complainant’s products and services include traditional and Internet-based bank, credit and debit card processing, check processing and coverage, merchant management programs, and hardware and software for processing payment transactions.

Complainant owns trade and service marks related to its business of bankcard processing, which it has used since at least 1999. These marks include INNOVATIVE MERCHANT SOLUTIONS (No. 2,709,708) (April 22, 2003), INNOVATIVE MERCHANT SOLUTIONS (No. 2,709,936) (April 22, 2003) and IMS (No. 2,678,741) (Jan. 21, 2003). Complainant is also the registrant of <innovativemerchantsolutions.com> and domain names in other top-level domains that correspond to its registered marks.

Respondent is NOLDC, Inc, (hereinafter “NOLDC”) which maintains a website at <noldc.com> that indicates “NOLDC” stands for “New Orleans Leftover Data Centers, Inc.” The website states that NOLDC’s business consists of (i) data center sales and acquisitions and consulting; (ii) alternative identity; and (iii) domain escrow services. The NOLDC website describes its “alternative identity service” as “a way to offer identity concealment to everyday customers interested in keeping their information secret from possible SPAM senders, hackers, and other sinister individuals. Want to protect your privacy? If so this service is for you.” The fax number for this company and Respondent are identical.

The domain name <innovativemerchantsolution.com> registered by Respondent resolves to a website that contains links to dozens of entities offering payment processing services and the logo of directNIC.com, which is the name under which its registrar does business. This website also indicates it is “under construction.”

Respondent did not reply to the Complaint, although it renewed its registration of the disputed domain name after the Center notified both Parties that it was due to expire during these proceedings.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name registered and being used by Respondent is confusingly similar to trade and service marks in which Complainant has established rights through use and registration of INNOVATIVE MERCHANT SOLUTIONS and IMS in the United States of America. Complainant indicates that the only difference between its marks and Respondent’s registration of the disputed domain name is the absence of the plural “s” in the latter. Complainant also argues that Respondent has no rights or legitimate interests in the domain name because it has no trademark applications or registrations for the mark INNOVATIVE MERCHANT SOLUTION, it is not commonly known by that name, and it is not using the registration in connection with a bona fide offering of goods or services. Rather, Complainant claims that Respondent is using the domain name to divert users to its own website, which offers products and services that compete with those of Complainant. Accordingly, Complainant concludes that Respondent registered and is using the domain name <innovatemerchantsolution.com> in bad faith in order to attract users to its own website for commercial gain. Complainant also points to a past pattern of Respondent registering domain names that are confusingly similar to other parties’ marks.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to prevail:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Because Respondent failed to reply to the Complaint, in accordance with paragraphs 5(e) and 14 of the Rules, the Panel will base its decision on the Complaint and draw such inferences from Respondent’s failure to reply as it considers appropriate. See, e.g., Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939 (December 20, 2002).

A. Identical or Confusingly Similar

It is undisputed that Complainant is the holder of trade and service mark registrations for INNOVATIVE MERCHANT SOLUTIONS in the United States of America and is using those marks in commerce, see, e.g., INNOVATIVE MERCHANT SOLUTIONS (No. 2,709,708) (April 22, 2003). In addition, the Complainant owns related marks registered with the U.S. Patent and Trademark Office. Complainant’s rights in these marks arose before Respondent registered <innovativemerchantsolution.com> in November 2005.

Respondent’s registration of <innovativemerchantsolution.com> incorporates Complainant’s mark INNOVATIVE MERCHANT SOLUTIONS but omits the plural “s.” As a previous Panel noted in another dispute, the addition of “the single letter ‘s’, the plural ending of Complainant’s trademark, in the domain name <t-mobiles.com> is no distinctive feature.” See Deutsche Telekom AG v. Vision Computer S.L.,WIPO Case No. D2001-1240 (April 26, 2002). In another case with similar facts, the Panel concluded that <halcyonyarns.com> is “confusingly similar and identical to the Complainant’s trademark HALCYON YARN and the <halcyonyarn.com> domain name. The Respondent has taken the Complainant’s HALCYON YARN mark and the <halcyonyarn.com> domain name and merely added the common plural signifier ‘S’. The contested domain name is confusingly similar to a mark in which the Complainant has rights.” See Halcyon Yarn, Inc. v. Henry Chan, WIPO Case No. D2004-0336 (July 14, 2004). In the instant case, the contested domain name drops the common plural signifier “s,” which also is not a distinguishing feature. Accordingly, this Panel concludes that <innovativemerchantsolution.com> is confusingly similar, and nearly identical, to Complainant’s mark INNOVATIVE MERCHANT SOLUTIONS within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy describes three ways in which a Respondent may establish rights or legitimate interests in a disputed domain name. They are:

(i) before any notice of the dispute, [Respondent’s] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] 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.

There is no evidence in the record that Respondent NOLDC has been commonly known by the name of “Innovative Merchant Solution”, or that it is making legitimate noncommercial or fair use of the domain name. On the contrary, Respondent is using the domain name to resolve to a website with links to dozens of entities offering payment processing services that compete with Complainant’s business. As the Panel in Canadian Tire Corporation, Limited v. C.C.C., Kevin Lyan, WIPO Case No. D2006-1049 (Oct. 3, 2006) found in a dispute over the domain name <canadatire.net>:

the domain name in dispute “resolves to a website featuring numerous click-through opportunities for tire and other automotive products. Because Complainant also promotes and distributes automotive products, among other types of goods, the Panel concludes that Respondent is using the contested domain name in association with a website that competes directly with Complainant’s business interests. Furthermore, it is likely Respondent is receiving click-through fees each time an Internet User accesses the website at “www.canadatire.net” and clicks on any of the numerous options available. The use of another’s widely known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no legitimate right or interest in the <canadatire.net> domain name. Accordingly, the Panel concludes Respondent is not using the <canadatire.net> domain name in association with a bona fide offering of goods and service pursuant to the Policy, paragraph 4(c)(iii). See America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).

For these reasons, this Panel concludes that there is no evidence in the record suggesting that NOLDC was using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods or services. The Panel therefore finds no evidence that would support a finding that Respondent has any rights to, or legitimate interests in, the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” shall constitute evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [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 documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of [the Complainant]; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 the web site or location or of a product or service on [the] web site or location.

The Panel finds evidence of the registration and use of the domain name in bad faith under the fourth section of paragraph 4(b) of the Policy. As noted above, <innovativemerchantsolution.com> is being used to direct Internet traffic to a website with links to dozens of entities offering payment processing services. As the Panel in a similar case involving the very same Respondent found: NOLDC “appears to derive revenue from the click-through links and advertising on its web site,” see Ariat International, Inc. v. Domain Purchase, NOLDC, Inc.,WIPO Case No. D2006-0825 (August 29, 2006). In the instant case, several links (e.g., to “Innovative Merchant Solution,” “Merchant Solutions” and “Merchant”) even incorporate parts of Complainant’s marks. Just as in Ariat, the advertising links on the website located at <innovativemerchantsolution.com> are based on Complainant’s marks and products, but lead Internet users to goods and services that compete with Complainant’s products, from which Respondent appears to derive commercial gain. Because <innovativemerchantsolution.com> and several links on Respondent’s website are confusingly similar to Complainant’s marks, there is a clear likelihood of confusion as to the “source, sponsorship, affiliation, or endorsement” of the website and its links. Just as the Ariat panel concluded, NOLDC’s website here too is “designed to mislead Internet users so that Respondent may gain ‘click-through’ advertising revenue when Internet visitors visit the competitor web sites.”

Complainant need only establish one of the four elements listed in paragraph 4(b) of the Policy in order to demonstrate evidence of the registration and use of a domain name in bad faith. In this case, however, it is also noteworthy that Respondent has engaged in a pattern of registering domain names in order to prevent the owner of a mark from using them. In addition to the Ariat case discussed above, there are several other cases in which Panels have held that the domain names registered by NOLDC should be awarded to the Complainant. In Mimran Group, Inc., v. NOLDC, Inc., WIPO Case No. D2006-0590 (July 12, 2006) the Panel found that: “Nothing has been put before the Panel to justify either the registration or the continued use of the disputed domain name. The Panel notes that the disputed domain name is used to display sponsored links which lead not only to websites offering competing products to the Complainant’s products but also to links such as “Travel”, “Financial Planning”, and “Real Estate.” In view of the fact that this kind of activity most likely provides financial gain to the Respondent, the Panel finds that these circumstances indicate bad faith registration and use in accordance with paragraph 4(b)(iv) of the Policy (citing Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850).”

In Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890 (October 24, 2005), the Panel addressed 22 disputed domain names, 4 of which were registered by NOLDC. Complainant in that case produced a printout from a website at “www.noldc.com,” current as of August 13, 2005, that contained the following statement: “Our Alternative Identity service located at “www.alternativeidentity.com” is a way to offer identity concealment to everyday customers interested in keeping their information secret from possible SPAM senders, hackers, and other sinister individuals.” The site also stated: “We supply Organizational Contacts, Administrative Contacts, Technical Contacts, and/or Billing Contacts for telephone, mail and email for the WHOIS database.” Respondent has also been ordered to transfer its registration of domain names in several other cases, see, e.g., Accor v. Noldc Inc.,WIPO Case No. D2005-0016. (In all of these cases, the registrar selected by NOLDC is the same one as in the instant case - Intercosmos Media Group, doing business as directNIC.com.)

The Panel therefore finds more than sufficient evidence of the registration and use of the domain name in bad faith within the meaning of paragraph 4(b) of the Policy.

Accordingly, Complainant has demonstrated that each of the elements of paragraph 4(a) of the Policy is satisfied.

7. Decision

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 <innovativemerchantsolution.com> be transferred to Complainant.

Miriam Sapiro
Sole Panelist

Dated: December 6, 2006