The Complainant is HID Global Corporation of Austin, Texas, United States of America, represented by Cohausz & Florack, Germany.
The Respondent is Marco van Strien, Card Vision BV of Rockanje, The Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2015. On November 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 3, 2015.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on December 11, 2015. 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
The Complainant asserts in the Complaint that it is duly authorized to use the marks filed by its parent company Assa Abloy AB, which is the registered owner of Community trade mark EM 010502383 for FARGO, filed on December 16, 2011 and registered on June 27, 2012 for printers and the like in Class 42; of Community trade mark EM 011635299 for FARGO COMPATIBLE, filed on March 7, 2013 and registered on July 30, 2013 for printers and the like in Class 9; of US trade mark 1952850 for FARGO, filed on December 16, 1994 and registered on January 30, 1996 for color computer printers and identification card printers in Class 9; and for related trade marks in many countries.
The disputed domain name was registered on December 17, 2013. 5. Parties' Contentions A. Complainant
The Complainant is a subsidiary of Assa Abloy AB. It is active in the market for secure identity solutions. It sells physical access control solutions and secure issuance solutions that comprise cards, card readers, etc. The Complainant asserts that the public identifies the FARGO trade mark as emanating from one company only, namely the Complainant. According to the Complainant, FARGO is a well-known international trade mark associated with high quality security and design. The reselling of the Complainant's products and services and use of its trade mark is strictly regulated through license, distribution and reselling agreements.
According to the Complainant the word element of the disputed domain name, "fargo", is identical to the Compainant's FARGO trade mark, and the further element, "cardprinter", indicates no more than that the Respondent is apparently active on the card printer market. Further, the Complainant maintains that the disputed domain name is also confusingly similar to its FARGO trade mark, and conflicts with its domain names.
The Complainant asserts that the Respondent is not a licensee or a retailer or in any other way authorized to use the trade mark FARGO, including to incorporate it in a domain name. According to the Complainant, the Respondent does not own any right in any trade mark, service mark or any other sign such as a corporate name, trade name or shop sign corresponding to the word "fargo".
Further, according to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name but rather uses it to sell its own Evolis products, although its website's opening page also displays the Complainant's trade mark and the disputed domain name remains in the address bar. The Complainant asserts that the Respondent has not used, is not using and has not shown any intention of using the disputed domain name or a name corresponding to it in connection with a good faith offering of goods and services.
According to the Complainant all these elements may result in consumers mistakenly concluding that the Respondent is a licensee or retailer duly authorized by the Complainant.
Finally, the Complainant contends that the Respondent has registered and has been using the disputed domain name in bad faith, because the website to which the disputed domain name resolves offers goods for sale to Dutch and European customers preferably which are protected by the Community trademark registration FARGO of the Complainant. This is an indication for bad faith use of the disputed domain name, as, according to the Complainant, the Respondent wants to make a link to the mark of the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant is not the registered owner of the relevant trade marks. However, the Complainant asserts that it is a subsidiary of the registered owner Assa Abloy AB and also authorised to use the relevant trade marks. The Complainant also avers that the FARGO trade marks are exclusively associated with the Complainant by members of the public. In the circumstances, the rights of HID Global Corporation over the trade mark FARGO are sufficiently established for it to pursue this matter under the Policy as the Complainant. A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's FARGO trade mark. However, it incorporates that mark as its first and most prominent part, all the more so as it is separated from the term "cardprinter" by a dash. The additional term "cardprinter" is a generic term with a clear meaning in English. The addition of such a term is not of a kind to dispell a finding of confusing similarity to the Complainant's trade mark. In this case the term relates directly to the Complainant's business of supplying products including cards used for security purposes. Thus the false impression that the disputed domain name is associated with the Complainant is further enhanced, which supports a finding of confusing similarity between the disputed domain name and the Complainant's trade mark.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's FARGO trade mark. B. Rights or Legitimate Interests
The Complainant has not authorised or licensed the use of its FARGO trade mark by the Respondent in any way, nor their inclusion in a domain name. The Respondent is not an authorised reseller or dealer of the Complainant's products. Further, the Respondent is not known by the name "Fargo" or "Fargo-Cardprinter" and there is nothing before the Panel to indicate that it has carried on any legitimate business under that name or mark. The screen print attached to the Complaint shows that the website to which the disputed domain name resolved related to a business unconnected to the Complainant ("Cardvision") providing plastic cards, card printers and accessories. When the Panel accessed the relevant page on December 23, 2015 it resolved to a page offering domain name and web hosting services. Neither of these website practices are of a kind to vest the Respondent of rights or legitimate interests in the disputed domain name since they rely on the false impression of a connection with the Complainant to lure consumers to websites where unrelated goods or services are offered, presumably resulting in some advantage to the Respondent.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
It is manifest from the fact that the term "cardprinter" was incorporated in the disputed domain name by the Respondent that the latter was aware of the Complainant's trade mark and reputation at the time of the disputed domain name's registration. There is nothing before the Panel to indicate that at that time the Respondent had rights or legitimate interests in the disputed domain name, or was known by a name corresponding to it. The Respondent has at some point used the disputed domain name to lure consumers to its website, where goods and services were offered, by generating the false impression that it was connected to the Complainant. This is not an instance of good faith use of a domain name incorporating another party's trade mark. At a later stage the disputed domain name resolved to a webhosting service, which also amounts to a use in bad faith by the Respondent, who is attempting to turn consumer deception as to the legitimacy of the site presumably to its own financial advantage.
Therefore the Panel holds that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
WiIliam A. Van Caenegem
Sole Panelist
Date: December 23, 2015
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