WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Heartland Payment Systems v. Purple Bucquet Case No. D2010-0722 1. The Parties
The Complainant is Heartland Payment Systems of New Jersey, United States of America represented by Orrick, Herrington & Sutcliffe, LLP of United States of America.
The Respondent is Purple Bucquet of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2010. On May 6, 2010, the Center transmitted by email to Power Brand Center LLC a request for registrar verification in connection with the disputed domain name. On May 11, 2010, Power Brand Center LLC. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2010.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 9, 2010. 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 is a New York Stock Exchange listed, publicly traded Delaware Corporation in the United States of America. It uses the mark HEARTLAND PAYMENT SYSTEMS for its transaction processing services, and owns the following registered marks:
- Mark: HEARTLAND PAYMENT SYSTEMS
- Registration No. 2,742, 163
- Serial No. 75/374,633
- Registration date: July 29, 2003
- Filing Date: October 16, 1997
- Status Registered – Incontestable
- Mark: HEARTLAND PAYMENT SYSTEMS THE HIGHEST STANDARDS THE MOST TRUSTED TRASACTIONS & Design
- Registration No. 3,578,453
- Serial No. 77/241,827
- Registration date: February 24, 2009
- Filing Date: July 7, 2007
- Status Registered
- Mark: HEARTLAND PAYMENT SYSTEMS THE HIGHEST STANDARDS & Design
- Registration No. 3,315,693
- Serial No. 77/044,321
- Registration date: October 23, 2007
- Filing Date: November 15, 2006
- Status Registered 5. Parties' Contentions A. Complainant
The Complainant states it has been in the business of payment transaction processing since 1997. It processes payment transactions for merchants and business owners, credit cards, debit cards, prepaid cards, pay- roll processing and offers check payment solutions to more than 250,000 business locations in the United States. It claims it is the fifth largest payment processor in United States of America, ninth largest in the world and processes eleven million transactions a day and eighty billion a year for merchants and businesses. It alleges its revenues exceeded USD one billion for the year 2009. (However, no documents are filed to support these figures).
The Complainant states it has received wide coverage in the news and media and its Chief Executive Officer (CEO) was interviewed by Los Angeles Times in December 2008, NYSE Magazine in August 2008, CNBC in January 2008 and New York Times in September 2007. The Complainant states that it has been using the HEARTLAND PAYMENT SYSTEMS mark in interstate commerce since December 1998 and has spent considerable amounts in advertisement and has common law rights due to its continuous use and advertisement of its mark.
The Complainant registered the domain name in April 17, 2000. The disputed domain name was registered March 28, 2006, which is six years after the Complainant's domain name was registered, eight years after Complainant started using its mark and nine years after the Complainant filed its United States application.
The Complainant states the disputed domain name is confusingly similar to its mark, as there is only a minor misspelling by adding the letter “s” in the disputed domain name. Users will be misled to thinking it belongs to the Complainant, given the manner of Respondent's use of placing links of competitors. The cease and desist letter sent to the privacy shield and to the registrant yielded no response.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name, as it has not licensed its mark to the Respondent. The Complainant believes the Respondent has no registrations for “Heartland Payments Systems” or is commonly known by the name. The Respondent is not using the disputed domain name for a bona fide offering of goods or services as he has placed links on his website that compete with the Complainant's business.
The Complainant states the Respondent had prior notice of the Complainant's registered marks, has offered the disputed domain name for sale, diverts users and has disregarded the Complainant's letters. The Complainant argues that, for all these reasons the Respondent has registered and used the disputed domain name in bad faith and requests for its transfer. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Policy stipulates that the Complainant has to establish three elements under paragraph 4(a).
(i) The disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element requires the Complainant to prove that the domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.
The Complainant has provided documents showing ownership of its registered trademark rights in the HEARTLAND PAYMENT SYSTEMS mark, which the Panel finds is sufficient proof of its rights in the mark.
The disputed domain name only differs from the Complainant's mark by one letter “s” that has been added between the word payment and systems. In cyber space, adding, deleting or interchanging just one letter of a domain name can create an entirely new domain name. In trademark law, for assessing confusing similarity, the main emphasis is on the overall impression to consumers and users. Adding, deleting or interchanging of words or letters in a trademark is viewed from the perspective of whether an unsuspecting consumer or user could be deceived by the variant of the mark.
In the Panel's view, adding the letter “s” to the word “payment” in the disputed domain name does not render it significantly different from the Complainant's mark. An unsuspecting consumer would find the disputed domain name visually and phonetically similar and almost identical to the Complainant's mark.
The Panel finds the disputed domain name is confusingly similar to the Complainant's trademark HEARTLAND PAYMENT SYSTEMS. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name.
The Complainant has argued that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not licensed or authorized to use its mark or is commonly known by the disputed domain name. The Respondent does not use it in connection with a bona fide offering of goods or service, as the Respondent uses his website to display the following links:
“Payroll Services”, “Online Transactions”, “Online Payments”, “Bill Payment Systems”, “Internet Payroll”.
The Respondent has not filed a response to refute the Complainant's contentions in these proceedings or to show that he is making bona fide offering of goods or services using the disputed domain name, or that he is commonly known by the disputed domain names or making legitimate non-commercial fair use of the domain names within the meaning of paragraphs 4(c) of the Policy.
The Panel accepts the Complainant's submissions and finds that the Complainant has made a prima facie case of the Respondent's lack of rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and used in bad faith by the Respondent.
The Panel notes the print out of the WhoIs record indicates the domain name is for sale. The website linked to the disputed domain name has links which divert Internet users to service providers competing with the Complainant.
In the Panel's opinion, the most likely explanation for the Respondent's registration and use of the disputed domain name is to capitalize on the likely confusion with the Complainant's mark. As noted, the Complainant has used the mark for eight years prior to the registration of the disputed domain name and the Panel finds it difficult to believe that the disputed domain name is registered for any purpose other than for the trademark value of the Complainant's mark, which is recognized as bad faith use under paragraph 4(a)(iv) of the Policy. See F. Hoffmann-La Roche AG v. Sergey Popov,WIPO Case No.D2009-0983. (Bad faith was found where the domain name was registered and used with the intention of unfairly exploiting the goodwill of the trademark for the respondent's own advantage of attracting Internet customers to its website.)
The Panel finds the Complainant has successfully established that the disputed domain name was registered and is being used 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 domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: June 22, 2010
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