WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paynova AB v. Akram Mehmood
Case No. D2003-1010
1. The Parties
The Complainant is Paynova AB, Stockholm, of Sweden, represented by Groth & Co KB, Sweden.
The Respondent is Akram Mehmood, PrimeBank Limited, Edinburgh, of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2003. On December 22, 2003, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue. On December 23, 2003, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 the Respondent of the Complaint, and the proceedings commenced on December 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on January 20, 2004.
The Center appointed Arne Ringnes as the sole panelist in this matter on January 29, 2004. 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.
Due to exceptional circumstances, the Panel�s decision was delayed by a few days.
4. Factual Background
The Complainant, the Swedish company Paynova AB, was registered in the Swedish company register on February 2, 2000. The Complainant offers secure payment services on the Internet by providing an electronic wallet that handles multi-currency payments, and the Complainant has signed agreements with more than 500 merchants and organizations from various countries in the world. The Complainant has used the trademark PAYNOVA since April 29, 2000. The details of the registered trademark are as follows:
Trademark: PAYNOVA
Country: Sweden
Registration no: 358 967
Application date: April 12, 2002
Registration Date: December 13, 2002
Class: 36
The domain name at issue was registered on July 10, 2003.
In accordance with Paragraph 4(i) of the Policy, the Complainant requests the Administrative Panel appointed in this administrative proceeding to issue a decision that be transferred to the Complainant.
5. Parties� Contentions
A. Complainant
The Complainant has used the mark PAYNOVA since April 29, 2000, not only as a trademark for its services but also as the company name. The disputed domain name incorporates the company�s trademark PAYNOVA in its entirety, and the spelling of the domain name is identical to the trademark.
The Respondent has no rights or legitimate interests in respect of the domain name . To the best of the Complainant�s knowledge, the Respondent is not an owner of any trademark, service mark, or equivocal with a name similar to that of the domain name in question. An e-mail from the Respondent to the Complainant also indicates an obvious lack of rights or legitimate interests in respect of the name PAYNOVA as of April 2003. The e-mail says that "[I]f payment is stoped for 06 months then we will make our own payment processing company in Sweden. Its quite easy for us to creat a company like paynova and recruit the professional to process the payments." This e-mail and the fact that the Respondent has not yet directed the domain name towards any website indicate that the Respondent has neither become commonly known by the domain name nor is making legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers.
The Respondent approached the Complainant during the spring of 2003 with the intention of using the Complainants secure payment services on the Internet, but the Complainant rejected the Respondent due to the fact that the banks involved did not approve of pyramid/multilevel marketing. The Respondent�s threat to create a company with a name identical to the Complainants trademark and company name indicates that the disputed domain name was registered primarily for disrupting the business of a competitor and in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Complainant also believes that by registering the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the respondent�s website by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation or endorsement of the Respondent�s website or of the services on the Respondent�s website. Due to the fact that the Respondent received and signed an agreement containing clauses on intellectual property rights, the Respondent must have been aware of the Complainant�s rights in the trademark PAYNOVA prior to registering the disputed domain name. Clause 9.1 in the received and signed agreement says that "[t]he Merchant is aware that all intellectual property rights to the Service are owned by Paynova. The Merchant must not, without the consent of Paynova, use trademarks, products, names or logotypes for the Service for any other purpose than to provide information that the Merchant accepts payments via Paynova Wallet."
The disputed domain is not pointing towards any website. However, according to case law, "using a domain name in bad faith" is not limited solely to positive actions, as inaction is regarded to be within the scope (see Telstra Corporation Ltd. vs. Nuclear Marshmellows, WIPO Case No. D2000-0003 and Strålfors AB v. P D S AB, WIPO Case No. D2000-0112).
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant shall prove that it has rights in the trademark PAYNOVA and that the domain name is identical or confusingly similar to the trademark.
The Panel finds that the trademark PAYNOVA is protected for the Complainant. The Complainant has submitted evidence that shows that PAYNOVA is a registered trademark for the Complainant in Sweden. Further, the trademark PAYNOVA is undoubtedly identical or confusingly similar to the domain name at issue, as the domain name incorporates the Complainant�s trademark in its entirety.
Accordingly, the Panel concludes that the first condition under the Rules is satisfied.
B. Rights or Legitimate Interests
It has been alleged by the Complainant that the Respondent has no rights or legitimate interest in respect of the domain name , and that to the best of the Complainant�s knowledge � the Respondent is not an owner of any trademark or equivocal similar to the disputed domain name.
There is no evidence in the case that refute the Complainant�s submissions, and the Panel concludes that the Complainant has proved also the second condition of the Rules.
C. Registered and Used in Bad Faith
The third and last question is whether the Complainant has proved that the domain name "has been registered and is being used in bad faith".
It is clear to the Panel that the domain was registered in bad faith. The Respondent was in contact with the Complainant during the spring of 2003 with the intention to use the Complainants payment services on the Internet, but the Respondent�s application was rejected by the Complainant. Thus the Respondent obviously had the knowledge of Complainant�s business at the time of registration of the disputed domain name in July 2003. The Respondent also knew, or should have been aware, that it could not legitimately use the domain name PAYNOVA. In this respect the Panel takes account of the agreement for Paynova Payments system that were presented to Respondent, which contains in Clause 9.1 a provision stating that all intellectual property rights to the Service are owned by Paynova.
It is less clear whether the domain name "is being used in bad faith". The disputed domain name does not resolve to a website, and there is no evidence of positive action being undertaken by the Respondent in relation to the domain name.
It has been stated in the decision in Telstra Corporation Ltd. vs Nuclear Marshmellows, WIPO Case No. D2000-0003, and confirmed in subsequent WIPO decisions (e.g. Perlier S.p.A. v. Ms. Darryl O'Donnell, WIPO Case No. D2003-0847), that "�the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith".
The Panel is, based on the circumstances in this particular case, of the opinion that the passive holding of the domain name by the Respondent amounts to acting in bad faith. As noted above, the Respondent has apparently never maintained a website presence for the disputed domain name, and has never made any legitimate use of the domain name. Further, the Respondent knew, or must have been aware of the trademark PAYNOVA at the time of registration of the disputed domain name. In this respect the Panel refers to the draft Agreement for Paynova Payments System, which was send to Respondent on April 25, 2003. This draft states in Article 9.1 inter alia that the Merchant is aware that all intellectual property rights to the Service are owned by Paynova. The Respondent had certain reservations to the draft and stated in this connection that "Its quite easy for us to creat(e) a company like paynova and recruit the professional to process the payments". Although the Panel does not find that the Respondent threaten to create a company "with a name identical to the Complainant�s trademark and company name", as submitted by the Complainant, the statement from the Respondent was in fact followed up with the registration of the disputed domain name. In fact it seems that the domain name was registered as a consequence of the fact that the Respondent was not accepted as a customer (in the service agreement referred to as "the Merchant") of Paynova�s services, as Respondent�s business was regarded as excluded business "�because of unacceptable method of sales (pyramid/multi-level � Marketing)" (see Annex F, mail dated May 28, 2003). Further, the Respondent has neither replied to Complainant�s correspondence to assert any legitimate interest in, or right to use, the domain name and the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name.
All circumstances taken into account, the Panel finds that the domain name was registered and is used by the Respondent in bad faith and considers the requirements of the third condition of the Rules to be fulfilled.
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 be transferred to the Complainant.
Arne Ringnes
Sole Panelist
Date: February 17, 2004
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