WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
e-pay Asia Limited v. The Domain Registry
Case No. D2007-0576
1. The Parties
Complainant is e-pay Asia Limited, Sydney, Australia, represented by Baker & McKenzie, Australia.
Complainant has named two Respondents: Domains by Proxy Inc. and The Domain Registry. Domains by Proxy Inc. is simply a privacy domain name registration service. The Registrar has confirmed that the registered owner of the Domain Name is The Domain Registry, Wilmington, Delaware, United States of America. Accordingly, the Panel will treat The Domain Registry as the sole Respondent.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2007. On April 17, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 17, 2007, Go Daddy Software 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 1, 2007. The Center verified that the Complaint together with the amendment to 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 May 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2007.
The Center appointed Clive L. Elliott as the sole panelist in this matter on June 15, 2007. 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 a provider of electronic top-up services for prepaid mobile users in South East Asia and conducts its business under the name “e-pay” in Australia, Malaysia, Indonesia, Pakistan and Thailand.
From about October 12, 2005 until about February 27, 2007, Complainant conducted its business using the Domain Name for marketing purposes and to provide information to its investors.
On about October 12, 2005, Complainant registered the Domain Name. Complainant was the “Registrant” and Jonathan Soon (“Mr. Soon”) the Administrative and Technical contact. Mr. Soon was until January 31, 2007 a director and secretary of Complainant. He had sole and exclusive administrative and technical control of the Domain Name on behalf of Complainant.
Upon Mr. Soon’s resignation, Complainant requested him to hand back control of the Domain Name. In particular, on March 6, 2007, Complainant’s solicitors, Baker & McKenzie wrote to Mr. Soon requesting that he return control of the Domain Name to Complainant.
On about February 27, 2007, Complainant became aware that the Domain Name had been parked free and its website content had been removed.
5. Parties’ Contentions
A. Complainant
Complainant asserts that Mr. Soon acted improperly in retaining control of the Domain Name and refusing to return it to Complainant and further that Complainant did not authorize that the registration of the Domain Name be transferred to Respondent.
Complainant asserts that it has rights in relation to the E-PAYASIA mark, as used by it in the course of trade (the “Mark”). Further, it states that a subsidiary of Complainant, E-pay (M) Sdn. Bhd. (a Malaysian company) holds the registered E-PAY device mark (the “Trademark”).
Complainant asserts that it has conducted its business using the Trademark since April 12, 2000, and the Mark since 2005 and has a substantial reputation in the market based on the Mark and the Trademark. It is contended that the Mark and the Trademark are distinctive identifiers that are associated with Complainant and its business.
Complainant states that there is no evidence of a bona fide offering of goods and services by Respondent in connection with the Domain Name prior to notice of this dispute and that there is no evidence that Respondent are known by the name “e-pay Asia” or any variation of that name.
Finally, it is contended that due to the unauthorized and potentially unlawful actions of other parties Complainant has ceased to be the named registrant of the Domain Name and that Respondent is now named as the registrant of the Domain Name, despite having no right or interest in the Domain Name.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Having considered the Complaint, the Panel finds that all requirements of paragraph 4(a) of the Policy are met.
A. Identical or Confusingly Similar
Complainant has clearly used the Domain Name and the Mark E-PAYASIA and secured registration of the Trademark E-PAY device.
There is justification for the assertion that Complainant’s Trademark is associated with and has become synonymous with it, at least in South East Asia. The Panel accepts that Complainant has traded under or in relation to Complainant’s Trademark and that it has the necessary rights in and to the said trademark.
The Domain Name is identical to the Mark and very similar to the Trademark. In any event, the Domain Name is confusingly similar to the Trademark because it incorporates in a material respect the Trademark and only adds a commonly used geographical term “Asia” and the generic top-level domain “.com”. On this basis, it is found that the Domain Name is identical or confusingly similar to Complainant's Trademark or parts thereof.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As has been noted previously, once a complainant makes a prima facie case the burden shifts to respondent to establish rights or legitimate interests in the disputed domain name; see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (finding that once complainant asserts that respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name). The Panel concludes that, on the basis of the Complaint, that a prima facie case is established under this ground.
Respondent has not lodged a Response. Accordingly, the Panel is reliant upon the evidence put forward by Complainant. The position appears to be that Complainant was the lawful owner of the Domain Name but due to the actions of its former employee and director Mr. Soon, that is no longer the case.
The sequence of events appears to be that Mr. Soon was employed by Complainant and was responsible for administrative matters in relation to the Domain Name. He resigned from Complainant but failed to make necessary arrangements for the hand over of the Domain Name, instead transferring it to a third party. Timing is a relevant consideration. According to the record, Complainant requested Mr. Soon to return the Domain Name. Instead, after such formal demand he transferred the Domain Name to Respondent. Respondent was then put on clear notice by Complainant. Neither Mr. Soon nor Respondent has responded to those allegations or to the Complaint.
The Panel is entitled to draw inferences from the known facts. One reasonable inference is that Respondent is aware of the circumstances in which the Domain Name was transferred but has chosen to shelter behind a cloak of anonymity in the hope that Complainant will not be able to retrieve the Domain Name.
The question is whether Respondent might have a right or legitimate interest in the Domain Name, given the circumstances in which it was transferred from Complainant and given also the fact that it is on notice of those circumstances. In the Panel’s view, Respondent does not have a right or legitimate interest to acquire or retain the Domain Name. In the absence of any explanation or argument to the contrary, the Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
It is now well-established as to what constitutes bad faith under the Policy. Given what appears to be the sufficient reputation and goodwill in Complainant’s Trademark, it is reasonable to infer that the Domain Name was transferred and acquired because of its value. Given the circumstances of this case and in the absence of any explanation from Respondent, the Panel finds that Respondent has not dealt with the Domain Name in good faith.
While not alleged as such by Complainant, the conduct of Mr. Soon and Respondent brings to mind “cyberflight”, a term used to describe a sham or questionable transfer or transaction which normally occurs after a complainant has indicated that a complaint is about to be launched.
In Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537, the Panel stated:
“In the Panel’s view, the transfer of the Disputed Domain Names by Respondent to various third parties after he had been notified of the Complaint, is indicative of cyberflight and further supports the Panel’s finding of the Respondent’s bad faith use and registration of the Disputed Domain Names. In the absence of a Response to the Complaint, the Panel considers it likely and infers that these third parties do not exist and that the transfers in question were effected for the purpose of disrupting and delaying these proceedings.”
It may well be that a respondent who has no knowledge of the circumstances of the transfer or acquisition of a domain name may be able to satisfy a panel that it has no knowledge of the situation and should not be treated effectively as a party to the conduct or privy to any disentitling knowledge. However, in the present situation, the Panel considers that even if the transfers and acquisitions of the Domain Name were not a sham, that it is quite possible that they were effected for the purpose of disrupting and/or delaying these proceedings. The Panel draws the inference that such conduct is indicative of bad faith.
Accordingly, this ground is established.
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 Complainant.
Clive L. Elliott
Sole Panelist
Dated: June 29, 2007
Full & Egal Universal Law Academy