WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Secure Payment Systems, Inc. v. Jack Parrong Case No. D2009-1522 1. The Parties
The Complainant is Secure Payment Systems, Inc. of San Diego, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States.
The Respondent is Jack Parrong of Fort Lauderdale, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with SRSplus. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2009. On November 11, 2009, the Center transmitted by email to SRSplus a request for registrar verification in connection with the disputed domain name. On November 12, 2009, Network Solutions on behalf of SRSplus transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 7, 2009.
The Center appointed Michael A. Albert as the sole panelist in this matter on December 11, 2009. 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, Secure Payment Systems, Inc., is a Nevada corporation, having a principal place of business in San Diego, California. Respondent is Jack Parrong, domain name holder of the domain name.
Complainant is the owner of United States Trademark Registration No. 2,129,550 for the mark SECURE PAYMENT SYSTEMS (hereinafter referred to as “the Mark”) which was registered on January 13, 1998. The Mark is registered for use in connection with the “verification and warranty of checks, share drafts and offline electronic demand deposit account debits presented in exchange for goods and services” in Class 36. 5. Parties' Contentions A. Complainant
Complainant contends that Respondent is the owner of several related online pharmacies under the umbrella name Omaha Pharmacy which is currently operating under the name One-Seven Pharmacy and uses the domain name . When customers place their orders with One-Seven Pharmacy, they receive an email instructing them to contact the support team at sales@ if they have any problems with the order.
Complainant further contends that several of Respondent's customers have contacted Complainant claiming they have been defrauded by Respondent. Specifically, they claim that they have placed orders through Respondent's website, have had their credit cards charged, sometimes more than once, but have never received the ordered products.
Complainant further contends that Respondent is attempting to deflect attention away from its own unlawful operation by misleading consumers into thinking that their order is being processed by “Secure-Payment Systems,” which is apparently identified only to create the appearance of a legitimate payment processing entity affiliated with the online pharmacy and used to facilitate the processing of the online order.
Complainant further contends that the disputed domain name , which is owned and operated by Respondent, is identical or confusingly similar to the SECURE PAYMENT SYSTEMS mark, in which Complainant has rights.
Complainant further contends that Respondent has no rights or legitimate interests with respect to the disputed domain name. Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services prior to the filing of this Complaint. Respondent is not commonly known by its domain name because it is merely using the name to create the appearance of a legitimate order processing conduit for its online pharmacy.
Complainant further contends that Respondent registered and is using the disputed domain name in bad faith. Respondent misleads its own online customers by creating a likelihood of confusion with Complainant's mark. Because Respondent's name is apparently Jack Parrong, Respondent had no reason to register the disputed domain name except to mislead and confuse consumers as to the true name and identity of Respondent so that Respondent could continue running its unlawful online enterprise without detection. As evidence of confusion, Complainant notes that it has received numerous misdirected emails from angry customers who never received the order that they placed through the website “www.”.
Further, the telephone number provided on the WhoIs database for the disputed domain name had been disconnected. Similarly, the phone number and email listed on the webpage of Respondent's One-Seven Pharmacy website are also inactive. Finally, the disputed domain is password protected, and therefore prevents customers from entering the website. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Respondent provided no Response, and the deadline for so doing expired on December 6, 2009. Accordingly, Respondent is in default. Given Respondent's default, the Panel can infer that Complainant's allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The disputed domain name is . Complainant has registered the SECURE PAYMENT SYSTEMS mark. The only difference between the disputed domain name and the Mark is the inclusion of the generic top-level domain “.com” and a hyphen. The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “secure-paymentsystems”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561. Moreover, the use of a hyphen is insufficient to render the domain name different from the Complainant's mark. Columbia Sportswear Company v. Mahlon Keeler,WIPO Case No. D2000-0206 (finding identical to COLUMBIA SPORTSWEAR COMPANY).
For the all of the foregoing reasons, this Panel finds that the disputed domain name is confusingly similar to Complainant's Mark, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in the disputed domain name may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the disputed domain name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights to use the SECURE PAYMENT SYSTEMS mark. Complainant has alleged, and Respondent has not denied, that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the domain name, and is misleading customers for commercial gain.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the disputed domain name. Therefore, the Panel finds that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website.
Other types of bad faith may be found as well. For example, bad faith may be found from Respondent's use of false contact information. See Audi AG v. Hans Wolf,WIPO Case No. D2001-0148 (failure to update address with registrar indicated that respondent had “taken active steps to hide its true identity” and thus was a factor suggesting bad faith). In addition, bad faith may be found where respondent passively holds the disputed domain name. Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon,WIPO Case No. D2004-0245; DCI S.A. v. Link Commercial Corporation,WIPO Case No. D2000-1232; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Several of Complainant's undisputed factual allegations support a finding that Respondent registered and continues to use the disputed domain name in bad faith.
First, Respondent had no reason to register the disputed domain name except to mislead and confuse consumers as to the true name and identity of Respondent and the nature of its business. This enabled Respondent to continue running its allegedly unlawful online enterprise, for commercial gain, without detection. Moreover, Respondent's use of the disputed domain caused actual confusion among Respondent's defrauded customers, leading them to believe that Respondent and Complainant were affiliated, as evidenced by the angry customers of Respondent's One-Seven Pharmacy who actually contacted Complainant. Thus, Respondent's conduct falls within the illustration of bad faith identified in Policy paragraph 4(b)(iv).
Second, Respondent has either provided false contact information or has failed to update its contact information with the registrar. The telephone number for the disputed domain name that Respondent provided to the Registrar's WhoIs database has been disconnected. Similarly, the telephone number for Respondent's One-Seven Pharmacy was also not a working phone number. Such conduct also supports a finding of bad faith.
Third, Respondent's use of the disputed domain may amount to passive holding because it appears that the website is inaccessible due to password protection. However, even if the website were accessible such that Respondent's use of the domain name would not constitute passive use, this Panel finds that the previously discussed facts are sufficient to support a finding of bad faith.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the disputed domain name in bad faith. 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 disputed domain name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: December 28, 2009
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