The Complainant is iPayment, Inc. of Westlake Village, California, United States of America (the “United States” and the “U.S.”), represented by Waller Lansden Dortch & Davis, LLP, United States.
The Respondent is Domain Hostmaster, Customer ID: 83314393006017, Whois Privacy Services Pty Ltd, of Fortitude Valley, Queensland, Australia / Kwangpyo Kim, Mediablue Inc of Gwang-ju, Republic of Korea, represented by ESQ PC, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2015. On June 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 22, 2015.
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” 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 June 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response July 14, 2015. The Response was filed with the Center July 14, 2015.
The Center appointed Christopher J. Pibus, The Hon Neil Brown Q.C., and Sandra A. Sellers as panelists in this matter on August 6, 2015. The Panel finds that it was properly constituted. Each member of 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 has provided credit-card and debit-card payment processing services under the IPAYMENT trademark since October 1, 2001. The Complainant provides its services to approximately 150,000 small business merchants located throughout the United States. The Complainant’s charge volume for the first 9 months of 2014 was USD16.9 billion. The Complainant has invested substantial expense and effort to promote its services under the IPAYMENT trademark to its market.
The Complainant claims to own three trademark registrations for the IPAYMENT trademark, listed below:
U.S. registration no. 2,836,525 for IPAYMENT and Design dated April 27, 2004;
U.S. registration no. 3,733,920 for IPAYMENT and Design dated January 5, 2010; and
U.S. registration no. 4,509,361 for IPAYMENT dated April 8, 2014.
The Complainant owns the domain name and has operated a website in association with the provision of credit-card and debit-card payment processing since August 15, 2001.
The disputed domain name was originally created on March 7, 1997, and was subsequently owned by the Complainant, but not renewed. The disputed domain name was acquired by the Respondent at auction on or about June 12, 2015. At the time the Complaint was filed, the disputed domain name reverted to a website which offered the disputed domain name for resale, and contained links to third party websites. 5. Parties’ Contentions A. Complainant Confusingly Similar
The Complainant claims that it owns three trademark registrations for IPAYMENT, which are listed in paragraph 4 above.
The Complainant further contends that the disputed domain name is nearly identical to the Complainant’s IPAYMENT trademark except for the addition of the letter “s”. This single letter variation does not sufficiently alter the disputed domain name to avoid confusion. In fact, the Complainant also claims that the Respondent’s use of the disputed domain name “is intentionally designed to cause deception” through the practice of typosquatting. Rights and Legitimate Interests
The Complainant submits that the Respondent does not have any legitimate rights or interests in the disputed domain name. The Respondent is not commonly known by the name ”ipayments”, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the disputed domain name in a bona fide offering of goods and services. The disputed domain name reverts to a website that provides links to third party websites through pay-per-click advertising. This is not a bona fide offering of goods and services. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because (i) it is “inconceivable” that Respondent was not aware of the Complainant’s trademark rights in IPAYMENT when the Respondent registered the confusingly similar domain name; (ii) the Respondent registered and is using a confusingly similar domain name to interfere with the business of the Complainant by diverting Internet users seeking the Complainant’s website and directing them to the Respondent’s website through the practice of typosquatting; (iii) the Respondent has registered or acquired the disputed domain name “primarily for the purpose of selling the Domain name” to the Complainant; and (iv) the Respondent registered and is holding the disputed domain name to prevent the Complainant from registering it. B. Respondent
The Respondent submits he holds a legitimate interest in the disputed domain name, based on his business practices and on all the circumstances of its acquisition. The Respondent reveals that the disputed domain name was previously owned by the Complainant until April 2015, a fact that was not disclosed by the Complainant. The Complainant did not renew the disputed domain name and the domain was offered for sale by auction. The Respondent has purchased other “i” prefixed domain names, such as ; and . The letter “i” commonly refers to the “Internet” and the Respondent submits that the use of the prefix “i” in combination with the generic word “payments” was part of a reasonable business strategy for a domain name owner.
The Respondent further contends that he resides in the Republic of Korea, not the United States of America, and had no knowledge of the Complainant, the Complainant’s website, its trade name, or its trademark.
The Respondent did not intend to sell the disputed domain name to the Complainant and did not intend to disrupt the Complainant’s business or confuse its customers. The Respondent draws particular attention to the fact that the disputed domain name was purchased at auction, after it was abandoned by the Complainant, and submits that the “expiration of a domain name raises the presumption that any trademark rights in such domain name have been abandoned”.
The Respondent also submits that the disputed domain is hosted by a company called P, which provides pay-per-click advertising links that are automatically generated based on the contextual meaning of the terms and keywords contained in the disputed domain name. The Respondent did not select the links with the intent to profit from the Complainant’s trademark. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in IPAYMENT. However, the Panel notes that U.S. Trademark Registration No. 2,836,525 was cancelled on November, 28, 2014, leaving only 2 of the asserted marks in good standing. The Complainant’s arguments were not well-served by including a cancelled registration as a foundation for asserted rights.
In any event, the Panel is satisfied that the domain name is confusingly similar to the Complainant’s registered trademark IPAYMENT (U.S. Registration No. 4,509,361). The addition of the letter “s” does not distinguish the disputed domain name from the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Any discussion of putative rights or legitimate interests in the disputed domain name ought to begin with the circumstances under which the disputed domain name was acquired. The Complainant failed to provide any such context, although it must have known exactly what transpired. The Respondent has properly brought forward evidence that the disputed domain name was owned by the Complainant, and was acquired by the Respondent at auction after the Complainant’s registration had expired. In the absence of any explanation from the Complainant, the Panel can only conclude that the disputed domain name was actually abandoned by the Complainant.
These circumstances, combined with the evidence provided by the Respondent discussed below, cast a different light on the Respondent’s conduct than what has been alleged by the Complainant. The Respondent has provided important evidence on two points: (1) as a Korean resident, he states that he was not aware and had “no knowledge of Complainant, its website, its business name or trademark” when he purchased the disputed domain name at auction; and (2) he explains that his purchase was part of a legitimate business strategy to acquire “a desirable common word domain name”, evidenced by his prior registrations of similar domain names such as , , , , and .
The Complainant’s attempts to characterize the Respondent’s conduct and intentions as abusive are not borne out by the evidence. Given that the disputed domain name was abandoned by the Complainant, and sold through auction, it was inappropriate to claim that the Respondent was targeting the Complainant and deliberately engaging in predatory typosquatting. In the circumstances, the Respondent’s explanations carry more weight with the Panel than the Complainant’s accusations.
In the Panel’s view, for purposes of the analysis under the Policy, the Respondent has provided sufficient evidence to refute the Complainant’s case on the absence of legitimate interests.
Accordingly, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the reasons set out above, the Panel finds it unnecessary to make a finding with respect to bad faith. Reverse Domain Name Hijacking
In light of the non-disclosure issues described above, the Panel wishes to consider the issue of reverse domain name hijacking. Although Respondent has not specifically asked for this relief, the Panel is entitled to pursue this inquiry if circumstances warrant. The Rules provide (paragraph 15(e)):
“If after considering the submissions the Panel finds that the Complainant was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
Non-disclosure of material facts is among the circumstances cited by prior Panels as a basis for a finding of reverse domain name hijacking: G.A. Modefine S.A. v. A.R.-Mani,WIPO Case No. D2001-0537; Timbermate Products Pty Ltd. v. Barry Gork,WIPO Case No. D2013-1603; JJGC Industria E. Comercio de Materiais Dentarios S.A. v. Yun-Ki Kim,WIPO Case No. D2013-1838.
After reviewing all the evidence, the Panel has come to the conclusion that the Complainant has failed to disclose a number of material facts, including (1) its prior ownership and subsequent abandonment of the disputed domain name, (2) the eventual purchase of the domain name at auction by the Respondent; and 3) that the Complainant attempted to partially base its trademark rights on a cancelled registration. This non-disclosure has been compounded by the Complainant’s aggressive pleadings, which repeatedly characterize the Respondent’s conduct in a manner which is not consistent with the actual circumstances at hand.
The Panel identifies two specific examples where Complainant has made unfounded allegations which it ought not to have advanced in these proceedings: (1) intentional typosquatting; (2) holding the domain name “to prevent Complainants [sic] from registering it”.
With respect to typosquatting, the Complaint makes the following allegation: “it is clear that Respondent’s use of the disputed domain name is intentionally designed to cause deception, mistake and confusion among consumers seeking information with regard to the services of Complainant. The slight difference between the disputed domain name and Complainant’s IPAYMENT Mark, which fails to form a new term but merely creates a variant of Complainant’s domain name, strongly suggests that Respondent registered the disputed domain name in order to engage in ‘typosquatting’.”
These allegations ignore the fact that the Complainant itself had used the disputed domain name for a number of years and had then apparently taken a decision to abandon it. It is difficult to understand how the Complainant can make this objection when its own conduct – in allowing the disputed domain name to be put up for auction – has facilitated the acquisition of the disputed domain name by an unrelated party (the Respondent). If predatory typosquatting was to be alleged, then full background information ought to have been provided to the Panel about prior ownership and the decision to abandon the disputed domain name.
With respect to the allegation of intentional interference with the Complainant’s ability to register the disputed domain name itself, the allegation is as follows: “Given the considerable presence of Complainants [sic] in the credit card and debit card processing industry, it is evident that Respondent also registered and is holding the disputed domain name to prevent Complainants [sic] from registering it…”. However, the Complainant did previously register the disputed domain name, and was not prevented from doing so. Now it chose not to renew the registration. Consequently, the Respondent is not holding the disputed domain name to prevent the Complainant from registering it.
This allegation also rests on the premise that the Complainant itself has a genuine need or intention to register the disputed domain name. In fact, the evidence before the Panel now shows the opposite: namely that Complainant had actually owned and then subsequently abandoned the disputed domain name. The failure of the Complainant to disclose and explain its conduct is inexcusable. 7. Decision
For the foregoing reasons, the Complaint is denied, and the Panel makes a finding of reverse domain name hijacking.
Christopher J. Pibus
Presiding Panelist
The Hon Neil Brown Q.C.
Panelist
Sandra A. Sellers
Panelist
Date: September 2, 2015
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