The Complainant is IPayment, Inc. of Westlake Village, California, United States of America, represented by Waller Lansden Dortch & Davis, LLP, United States of America.
The Respondent is Bluekube Technologies of Westlake Village, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 14, 2012. On November 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2012, 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 for the disputed domain name.
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 November 19, 2012. Due to a technical error in the electronic Notification of Complaint, the same was resent to the Parties on December 14, 2012, and the Response Due Date extended until January 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 7, 2013.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 14, 2013. 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, IPayment, Inc., is a United States of America company that has been operating credit and debit card processing services since 2001. The Complainant has registered its service mark, IPAYMENT, with the United States Patent and Trademark Office (“USPTO”) (i.e., Registration No. 2,836, 525, registered April 27, 2004; and Registration No. 3,733,920, registered January 5, 2010), and conducts business through a website found at its domain name.
The Respondent is the owner of the disputed domain name, , which was registered January 16, 2012. The Respondent has used the disputed domain name to solicit a purchase price bid from the Complainant of USD 60,000. 5. Parties’ Contentions A. Complainant
Since at least October 1, 2001, the Complainant has provided small merchants and others throughout the United States of America with financial services, primarily credit and debit card processing.
The Complainant has provided its service in connection with its IPAYMENT services mark. The Complainant has invested substantial time, money and effort in establishing goodwill in its mark, to the extent that the Complainant has created common law rights in the mark. The Complainant has also secured common law rights in its corresponding domain name, .
The Complainant has acquired registrations with the USPTO for the IPAYMENT service mark.
Without the permission of the Complainant, the Respondent registered the disputed domain name, , for use as a landing page that solicited a purchase offer from the Complainant in the amount of USD 60,000. Ostensibly, said solicitation followed a third-party purchase offer for the name.
In response to a cease-and-desist letter sent by the Complainant, the Respondent simply reiterated its request for a payment of USD 60,000 to acquire the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s IPAYMENT service mark, differing solely by the insignificant additions of an “s”, the acronym “inc” and the gTLD, “.com”. The similarity is enhanced by a reference to the Complainant placed on the Respondent’s website. The Respondent is engaged in typo squatting.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has been granted no permission to use the disputed domain name. There is no evidence that the Respondent has ever been commonly known as the disputed domain name. The Respondent is making no legitimate noncommercial or fair use of the disputed domain name.
The Respondent uses the disputed domain name to solicit offers for its sale and possibly to acquire information about the Complainant’s customers to pass on to the Complainant’s competitors for fees of USD 100 per customer, both of which uses fail to constitute bona fide offerings of goods or services.
The disputed domain name was registered and is being used in bad faith. The Respondent acquired the name for the primary purpose of selling it at a price far in excess of the Respondent’s out-of-pocket registration costs. Moreover, the Respondent uses the disputed domain name in an illegitimate attempt to collect sensitive information from Complainant’s customers and to divert such information, for commercial gain, to the Complainant’s competitors. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under Policy paragraphs 4(a)(i)-(iii), the Complainant may prevail in these proceedings and be awarded transfer of the disputed domain name, , provided that the Complainant can prove the following:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant’s presentation of evidence (Complaint, Annex G) that it owns valid USPTO registrations for the IPAYMENT service mark establishes the possession of rights sufficient to satisfy the requirements of paragraph 4(a)(i) of the Policy. See, The SANS Institute v. WhoisGuard,WIPO Case No. D2007-0426 (“Complainant has established rights in the SANS mark through registration with the USPTO.“); and Miller Products Company v. Marc Grozinger, NAF Claim No. FA823231 (“Rights in a trademark can be shown in several ways, including by way of a U.S. trademark registration.”).
The Panel agrees with the Complainant’s contention that the disputed domain name, , differs only minimally from the IPAYMENT mark. The additional “s”, which creates a plural of the word “payment”, is not a consequential distinction. So too, the addition of “inc”, which is the common abbreviation for “Incorporated” and which is part of the Complainant’s corporate name (“Ipayment, Inc.”) and is found in its domain name, does not serve to reduce, but actually serves to increase, confusion in the average Internet user’s mind as to whether or not the Complainant is connected to the disputed domain name. Finally, the inclusion of a mandatory gTLD, such as “.com”, is irrelevant in distinguishing the name from the mark. Thus, the Panel concludes that, taken as a whole, the disputed domain name is confusingly similar to the IPAYMENT service mark owned by the Complainant. See, DFDS A/S v. Milena Valenskaya,WIPO Case No. D2011-0941 (finding to be confusingly similar to the DFDS SEAWAYS mark); and Adknowledge, Inc. v. Adknowledge Inc / Izzy Guvez, NAF Claim No. FA1419270 (“Respondent’s domain name contains Complainant’s entire ADKNOWLEDGE mark and also contains a hyphen, the generic abbreviation ‘inc,’ and the generic top-level domain (‘gTLD’) ‘.com.’ The Panel determines that such additions do not remove the domain name from the realm of confusing similarity under Policy [paragraph] 4(a)(i).”).
Accordingly, the Panel finds that the Complainant has successfully demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
As the Respondent has not filed a Response to the Complaint, the Panel believes that it must regard as true any reasonable contentions made by the Complainant. See, Randstad General Partner (U.S.), LLC v. Domains For Sale For You,WIPO Case No. D2000-0051; and Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the [C]omplaint.”). Therefore, the Panel accepts the Complainant’s assertion that it has not granted permission for the Respondent to use the IPAYMENT mark for any purpose. Given that the Panel has also concluded that the disputed domain name is confusingly similar to that mark, the Panel ascertains that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the name. Thus, to prevail with respect to this element of the Policy, the Respondent must shoulder the burden of presenting evidence to contradict that case. See, Philip Morris USA Inc. v. yfmg,WIPO Case No. D2010-0058 (“Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.”); and G.D. Searle & Co. v. Martin Marketing, NAF Claim No. FA118277.
However, as noted above, the Respondent has presented no evidence. Moreover, having examined the record otherwise, the Panel declines to invoke any of the criteria cited in Policy paragraph 4(c) that might have benefitted the Respondent’s position. The Panel finds no reason to believe that the Respondent, Bluekube Technologies, has been commonly known as , which rules out application of paragraph 4(c)(ii). Furthermore, the Panel accepts the Complainant’s characterization of the Respondent’s website, found at the disputed domain name, as one which solicits a purchase bid from the Complainant while threatening to disclose customer “lead” information to the Complainant’s competitors. In the Panel’s estimation, such use is clearly inconsistent with “legitimate noncommercial or fair use” of the disputed domain name per Policy, paragraph 4(c)(iii) or with “a bona fide offering of goods or services” per Policy, paragraph 4(c)(i). See, for example, Playboy Enterprises International, Inc. v. Hector Rodriguez,WIPO Case No. D2000-1016 (“the Respondent's efforts in merely registering and stockpiling the contested domain names for subsequent sale without more, fails to constitute any bona fide offering of goods or services under each such domain name, or a legitimate non-commercial or fair use of each such name without any intent for either commercial gain or to misleadingly divert consumers or tarnish the trademark or service mark at issue.”); and Uitgerverij Crux v. w. Frederic Isler,WIPO Case No. D2000-0575 (“The Panel is also of the opinion that the Respondent has no legitimate right or interest under paragraph 4(c)(i), i.e. that by merely offering the Domain Names for sale the Respondent has failed to demonstrate the existence of the use of, or preparation to use, the Domain Name in connection with a bona fide offering of goods or services.”)
Consequently, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
From the record (Complaint, Annexes H and J) and the Complainant’s reasonable contentions, the Panel concludes that, among other devious uses of the disputed domain name, the Respondent has made a bald, unprompted request of the Complainant that it respond to a third-party “offer” by purchasing the name from the Respondent for USD 60,000. Of course, that amount would greatly exceed the Respondent’s legitimate out-of-pocket costs directly related to registering the disputed domain name, and the Panel cannot think of a more striking example of bad faith registration and use of a disputed domain name pursuant to the circumstance described in Policy paragraph 4(b)(i). See, Zweites Deutsches Fernsehen (ZDF) v. Franz Maier,WIPO Case No. D2000-1071 (“Obviously, the requested price of U[SD]$100,000 is by far higher than any out-of-pocket costs directly related to this Domain Name and this fact by itself is one of the indications mentioned in the Policy for bad faith.”); and Uitgerverij Crux, supra, (“Given that the evidence supports a finding that the Respondent offered the Domain Name for sale for US$50,000 to the Complainant, a sum which is obviously greatly in excess of any out-of-pocket expenses the Respondent may have been obliged to pay for registering the Domain Name, the Panel is of the opinion that paragraph 4(b)(i) of the ICANN Policy applies and the Respondent has registered and is using the Domain Name in bad faith.”).
Therefore, the Panel finds that the Complainant has proved 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.
Dennis A. Foster
Sole Panelist
Date: January 28, 2013
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