Complainant is Approve Me, LLC, United States of America (“United States”), represented by Solace Law, United States.
Respondent is Shlomy Amsalem, Swift Development, Ltd, Israel, represented by Antoinette M. Tease, P.L.L.C., United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2021. On October 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 18, 2021, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2021. The Response was filed with the Center on November 8, 2021.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 16, 2021. 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 BackgroundComplainant is engaged in commerce through its website at “approveme.com”. Complainant’s business involves workflows approvals, procurement/document operations, electronic signature automation software, and contract templates for businesses including purchase order agreement templates. Complainant has over 50,000 domestic and international customers, among them HBO, the Phoenix Suns, the NBA, and Paypal. Millions of documents have been procured and processed using Complainant’s products and offerings since its commencement in 2013.
In addition to Complainant's Approval Signer software, purchase order agreement templates and document workflow automation software, Complainant has a SaaS (software as a service) platform at “www.approveme.com/approve-platform”. Complainant’s approval platform streamlines the procurement and approval process for companies, allowing them to integrate the tools they use to run their business into a bank-grade secure UETA/ESIGN compliant approval platform.
Complainant owns the following trademarks registered with the United States Patent and Trademark Office (“USPTO”):
U.S. Mark
Regis. No.
Regis. Date
First Use in Commerce
APPROVEME.COM
6384562
June 15, 2021
February 26, 2016
APPROVE ME
6431730
July 27, 2021
April 20, 2015
VERIFIED BY APPROVEME
6431730
June 15, 2021
November 7, 2014
APPROVE ME
4465148
January 14, 2014
April 11, 2013
The Domain Name was initially registered on March 3, 1996. Respondent (Swift Development, an Israeli company) purchased the Domain Name from the original registrant, Brian Cartmell, on July 12, 2020. In November 2020, Respondent changed its name to Approve.com Ltd. Respondent used the Domain Name from July 2020 until April 2021, when Respondent was acquired by Tipalti Solutions Ltd. The Domain Name is currently being used by Tipalti, lnc. (“Tipalti”), a wholly owned subsidiary of Tipalti Solutions, pursuant to an inter-company agreement between the companies. Tipalti is in the business of providing accounts payable automation, global payments and procurement solutions. Tipalti is using the Domain Name for its website at “www.approve.com” in connection with its “Tipalti Approve” procurement tool, which is a procurement tool used for streamlining purchase requests and issuing purchase orders. This tool is an evolution of the technology previously developed by Respondent before being acquired by Tipalti Solutions. Tipalti Approve is a stand-alone service and also a procurement tool within Tipalti's suite of services.
Respondent owns the following registered trademarks registered with the USPTO:
U.S. Mark
Regis. No.
Regis. Date
First Use in Commerce
APPROVE.COM
6457955
August 17 2021
July 15, 2020
APPROVE .COM
6572041
November 30, 2021
July 15, 2020
5. Parties’ Contentions A. Complainant(i) Identical or confusingly similar
Complainant states that the Domain Name is identical in majority part and confusingly similar to a trademark in which Complainant has rights.
Complainant submits that the consensus view is that the registration of a domain name before a Complainant acquires formal non-common law trademark rights in a name does not prevent a finding of identity or confusing similarity under the first element of the UDRP. Complainant asserts that its APPROVEME.COM mark was first used in commerce as early as July 5, 2013, the date which triggers common law trademark rights under United States federal law. Further, Complainant has held United States registered trademark rights in the APPROVEME and APPROVEME.COM marks since January 14, 2014 and June 15, 2021, respectively.
Complainant contends that not only is the Domain Name nearly identical to Complainant’s brand and registered rights, but it also produces a strong likelihood of confusion as to the source and/or sponsorship of the information currently contained on the website at “www.approve.com” due to the analogous service offerings. Complainant states that Respondent is a software company that offers purchase order agreements and corresponding services, thus reflecting a competition-based relationship between Complainant and Respondent in the category of purchase order SaaS service offerings.
Complainant submits that Respondent’s use of the Domain Name, which is nearly identical to Complainant's registered mark, transgresses upon Complainant’s registered marks in which Complainant has rights. According to Complainant, UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. Here, Complainant states there is highly confusing and similar use by Respondent in United States commerce. Further, Complainant asserts that it and Respondent are direct competitors engaging in United States and global commerce to obtain the same customer and business demographic based on their respective service offerings.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name due to the manner for which it is being used. Complainant states that Respondent, upon information and belief, has never been commonly known by the Domain Name until Respondent obtained the Domain Name from a domain name brokerage firm. Complainant claims that Respondent mainly markets and continues to market its service offerings as “Tipalti” or "Tipalti Approve".
Complainant asserts that the lack of a bona fide use of the Domain Name to market Respondent’s business makes clear that Respondent had knowledge of Complainant, a direct competitor. Complainant argues that based on this knowledge, and prior to the creation of Respondent's Tipalti Approve subsidiary, Respondent purchased and developed the Domain Name with the intention to piggyback off Complainant's user base by injecting confusion into Internet searches for Complainant's business to redirect consumers to Respondent's services. Complainant states this lack of legitimate interest is emphasized by Respondent’s intention behind its use of the Domain Name, which is to confuse consumers seeking Complainant's business under the APPROVEME.COM mark, especially as Respondent is known as Tipalti and has recently developed branding around the "Approve" name, including applying for trademarks and obtaining the Domain Name.
Complainant asserts that the Domain Name directs to a webpage titled "Tipalti Approve", with no reference to marketing illustrating Respondent operating distinctly as "Approve.com". According to Complainant, this is prima facie evidence of Respondent’s lack of intent to use the Domain Name for legitimate interests or a bona fide offering of goods or services, as it amounts to a redirection of Complainant’s consumers to Respondent’s site in violation of Complainant's rights. Here, Complainant claims Respondent is using the Domain Name to divert potential customers looking for Complainant to a webpage operating under the guise of "Approve". Complainant claims Respondent’s use of the Domain Name is focused equally on disrupting Complainant’s business while also gaining commercially by misleadingly diverting Complainant’s potential customers.
Complainant claims Respondent has also sought to legitimize the use of the Domain Name by applying for trademark rights with the USPTO.
- Respondent’s word mark APPROVE.COM is under Registration Number 6457955 in Class 42 (as is Complainant’s mark) with a service class description as: Software-as-a-Service (SaaS) services featuring software for use by organizations to manage procurement operations and workflows by automating the procurement processes including the invoice processing, contract renewals, procurement request workflows, payments, and vendor relations.Complainant states Respondent's first use anywhere and first use in United States commerce for this mark was July 15, 2020.
- Complainant's mark APPROVEME.COM is under Registration 6384562 in Class 42 with a service class description as: Software-as-a-Service (SaaS) services, namely, providing online non-downloadable computer software and temporary use of web-based computer software for use by organizations to manage procurement operations, electronic signature and workflows. Complainant's states its first use anywhere for this mark was August 31, 2008 and first use in United States commerce was February 26, 2016.
Based upon the chronology of the trademark registrations, Complainant asserts that it has been operating under APPROVEME.COM, which is highly similar to the Domain Name, for over a decade before Respondent sought trademark registration and purchased the Domain Name. By the time Respondent developed the strategy to operate as Tipalti Approve and purchased the Domain Name from a domain name broker, Complainant had already been engaging in the same business since 2008. Complainant submits that Respondent’s use of the Domain Name, which is highly similar to Complainant's mark, is intended to derive advantage from user confusion and diverting Internet users to Respondent, a direct competitor of Complainant. Complainant contends this type of deceptive use does not confer legitimate rights on Respondent.
Consequently, Complainant concludes that Respondent’s unauthorized use of the Domain Name, which is confusingly similar to Complainant's rights, does not confer any right or legitimate interest in the Domain Name based on its manner of use.
(iii) Registered and used in bad faith
Complainant claims the overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Here, Complainant asserts that Respondent registered and is using the Domain Name in bad faith for commercial gain.
Complainant states that the Policy declares evidence of bad faith to be if a party has registered a website primarily for the purpose of disrupting the business of a competitor. Respondent is a direct competitor of Complainant whereby Respondent and Complainant engage in the same business with the same customer pool. The consumer and business services offered by Complainant and Respondent are identical as is the pool of potential customers who search by the same keywords to locate the same service offerings. The fact that Respondent is known as Tipalti and markets as Tipalti Approve within the confines of the Domain Name illustrates the opportunistic manner for which the use of the Domain Name is engaged. Complainant maintains that Respondent has gone to great lengths to create a new marketing cover to harness the goodwill of Complainant's consumer base and to confuse customers looking for Complainant. Respondent’s development of a Tipalti off-shoot subsidiary name and associated intellectual property that is highly similar and almost identical to Complainant's longstanding business in the same industry illustrates the bad faith intention behind the registration of the Domain Name.
Complainant alleges that the Domain Name was acquired with the bad-faith intention of building a competing approval platform to Complainant's already existing and highly popular brand, ApproveMe.com, and harnessing the goodwill of Complainant's long-standing brand by use of the Domain Name. Importantly, the Domain Name is so similar to Complainant's brand and registered rights that in April 2019, the previous owner of the Domain Name attempted to sell it to Complainant for the exorbitant price of USD 500,000. Ultimately, the Domain Name was sold to Respondent after Complainant rejected that offer and Respondent launched a product that is almost identical to Complainant's product offerings under an almost identical name using an almost identical Domain Name.
Complainant's ApproveMe.com SaaS Approval Platform operates with the same manner and intention as the Respondent’s SaaS platform. For example, the end-user creates a new approval request, the platform searches the vendor database for approval recipients if the recipient does not exist the user will manually add the new approval recipient, the user will also upload the procurement documents and the platform combines all documents into a single “package” that will be sent to the recipient for final approval. The recipient receives an approval request notification email, and the recipient can approve or reject the request. If approved the platform generates a bank grade, legally binding audit trail/signature certificate.
Complainant states it is important to note that Respondent's recently acquired trademark for word mark APPROVE.COM is in Class 42 for: "Software-as-a-Service (SaaS) services featuring software for use by organizations to manage procurement operations and workflows by automating the procurement processes including the invoice processing, contract renewals, procurement request workflows, payments, and vendor relations." This trademark class description illustrates the intent of Respondent's use of the Domain Name as compared to Complainant's trademark, trademark classifications and business model. Respondent is a direct competitor of Complainant and is using the Domain Name in bad faith to divert Complainant's customers to Respondent’s competing service offerings.
Complainant states that Respondent's mark has an indicated first use date in United States commerce of July 15, 2020. According to Complainant, the fact that Respondent has claimed first use from this date indicates Respondent was aware of Complainant and Complainant's business operations, which have been at play since 2008. Importantly, Complainant asserts its prior registered rights and long-standing common law rights have chronological priority, regardless of Respondent's intellectual property.
Complainant states that by way of UDRP policy and interpretation of the element of bad faith, the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. Furthermore, in determining whether bad faith exits, several panels have also looked at paragraph 2 of the UDRP, which states: “[b]y applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.” Complainant urges that several panels have interpreted this statement as an ongoing warranty that the domain name will not be used in bad faith.
Here, Complainant contends Respondent is using the Domain Name in bad faith and abusing the goodwill of Complainant's intellectual property to disrupt or gain advantage over Complainant’s business by directing the Domain Name to a website for Tipalti services. As a result, this continuing violation of another’s rights additionally establishes bad faith.
Complainant submits that Respondent purchased and implemented analogous services on the Domain Name prior to obtaining registered trademark rights. As a result, the purchase and use of the Domain Name was intentionally registered to attract, for commercial gain, Internet users searching for Complainant, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the site.
Complainant contends that despite Respondent's registered rights in the word mark APPROVE.COM, Complainant's trademark rights vested long before Respondent's rights, thus giving Complainant the legal authority to seek transfer of the Domain Name. Complainant states Respondent’s bad faith intent at registration, and it’s bad faith use of the Domain Name to disrupt and redirect Complainant’s business, all stand on solid independent ground. Combined, these examples present an overwhelming list of bad faith examples which taken as a whole, support a prima facie case of bad faith pursuant to Policy.
B. Respondent(i) Identical or confusingly similar
Respondent states that the most probative evidence of a lack of likelihood of confusion is that the USPTO allowed Complainant’s federal trademark registrations for the APPROVEME.COM word mark and the APPROVE ME logo mark to issue despite the fact that these applications were filed after the filing date of Respondent’s federal trademark applications for the APPROVE.COM marks. Conversely, Respondent’s two applications for the APPROVE.COM word mark and logo were approved by the USPTO without citing any conflicting marks, despite the fact that two of Complainant’s registrations had already issued.
(ii) Rights or legitimate interests
As stated on the home page of Respondent’s website, Respondent is in the business of providing accounts payable automation, global payments, and procurement solutions. Respondent states it is using the Domain Name in connection with its Tipalti Approve procurement tool. Respondent states it has never approached Complainant about the Domain Name, and it did not become aware of Complainant until Complainant obtained an extension of time to oppose Respondent’s federal trademark application for the APPROVE.COM mark.
Respondent states that since it acquired the Domain Name, Respondent has used it in connection with a legitimate business offering. The Tipalti Approve service builds on technology developed by Respondent (Swift Development) and acquired by Tipalti Solutions in connection with its acquisition of Respondent in 2021. All of these events occurred prior to Tipalti Solutions receiving notice of the present dispute. Respondent, which is now known as Approve.com Ltd. and is a subsidiary of Tipalti Solutions, owns a United States trademark registration for the APPROVE.COM standard character mark. Respondent states this fact alone is sufficient to prove that Respondent has rights in and to the Domain Name. Not only did Complainant fail to oppose registration of this word mark, but Complainant also declined to oppose registration of the APPROVE.COM logo mark.
Respondent states that Tipalti is not using the Domain Name with the intent to divert consumers from Complainant or to tarnish the APPROVE ME trademark. Bar Winkler, the person who is in charge of the Tipalti Approve team (and who was the founder of Respondent Swift Development) has submitted a sworn declaration that he was not aware that Complainant existed until the Complaint was filed. Respondent states that in a Google search for “approve me procurement,” Complainant does not show up on the first three pages of search results.
(iii) Registered and used in bad faith
Respondent submits that, as stated in the sworn declaration of Brian Cartmell, the Domain Name was registered by Cartmell in 1996. In 2005-2006, Cartmell used the Domain Name in connection with a blog about personal finance issues. Cartmell sold the Domain Name to Respondent on July 12, 2020. Aside from the brief period of time in which Cartmell used the Domain Name for a blog, the Domain Name was used as a parking page. When Cartmell registered the Domain Name, he was unaware of Complainant or the APPROVE ME mark. Cartmell states that he first became aware of Complainant when he was notified of this UDRP proceeding, and that he never contacted Complainant.
Respondent submits that as stated in the sworn declaration of Bar Winkler, he founded Respondent (Swift Development) for the purpose of helping mid-market organizations streamline their procurement processes. When Respondent acquired the Domain Name in July 2020, Respondent used the Domain Name in connection with its business, which was focused on requisitions, approval flows, and purchase order issuance via Enterprise Resource Planning (EPR) integrations. Respondent changed its name to Approve.com Ltd. in November 2020. In April 2021, Approve.com was acquired by Tipalti Solutions and as a result of this transaction, Approve.com became a wholly-owned subsidiary of Tipalti Solutions. Winkler is currently employed Tipalti Solutions, where he is general manager of procurement. In this position, he is responsible for the team that is developing Tipalti Approve, which is a procurement tool used for streamlining purchase requests and issuing purchase orders, and is an evolution of the technology previously developed by Respondent Swift/Approve.com.
Respondent states that, as is clear from the above facts, the Domain Name was not registered in bad faith because Brian Cartmell was unaware of Complainant, he never contacted Complainant, and Complainant did not even come into existence until August 30, 2016. Furthermore, the claimed dates of first use for Complainant’s federal trademark applications are August 31, 2008 (Reg. No. 6384562 for the APPROVEME.COM word mark) and April 20, 2015 (Reg. No. 6431730 for a stylized version of the APPROVE ME mark).1 Thus, it would have been virtually impossible for Cartmell to have registered Domain Name with the bad faith intent of selling, renting, or otherwise transferring the Domain Name to Complainant, for the foregoing reasons. Similarly, Cartmell did not register the Domain Name with the bad faith intent of selling, renting, or otherwise transferring it to a competitor of Complainant because Complainant was not in existence when the Domain Name was registered.
Addressing the other bad faith factors, Respondent contends the Domain Name was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name because the Domain Name was registered twenty years before Complainant was formed and fourteen years before its claimed date of first use. For the same reasons, the Domain Name was not registered by Cartmell primarily to disrupt Complainant’s business because he was not aware of Complainant until the present proceeding was initiated.
Lastly, Respondent submits the Domain Name was not registered by Cartmell, nor has it been used by Respondent, in an intentional attempt to attract for commercial gain Internet users to Tipalti’s (or Respondent’s) website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Tipalti’s (or Respondent’s) website or of a product or service on Tipalti’s (or Respondent’s) website. Winkler, who was the founder of Respondent and is in charge of the Tipalti Approve service, has testified that he did not become aware of Complainant until the Complaint was filed. Moreover, Respondent states that neither the home page nor the features page of Complainant’s website has a single reference to “procurement,” “purchase,” or “requisitions,” among other terms relevant to Respondent’s Tipalti Approve service. Instead, the home page at “www.approveme.com” states that the company’s product offering is an “eSignature automation tool,” not a procurement tool. Both of Complainant’s most recent federal trademark registrations reference “procurement operations” in the description of services, but there are no references to “procurement” in the specimens submitted to the USPTO.
In arguing that the Domain Name was registered in bad faith, Complainant asserts that the Tipalti “launched a product that is almost identical to the Complainant’s product offering(s).” However, Respondent contends that Complainant has not submitted any testimony to support this allegation. As noted in the Winkler declaration on behalf of Respondent, the Tipalti Approve service is a continuation of the technology that Winkler developed years earlier at Respondent Swift Development in Israel. In short, Respondent submits there is insufficient evidence on the record for the Panel to support Complainant’s assertion.
Respondent states that Complainant has also submitted evidence of an inquiry from a domain name broker to Complainant in 2019 concerning the Domain Name. This inquiry was not made by Brian Cartmell (former owner of the Domain Name), and there is no evidence in the record as to whether Cartmell was aware that this particular inquiry had been made. In fact, it is contrary to Cartmell’s sworn testimony that he did not become aware of Complainant until this year.
Respondent observes that Complainant references Respondent’s federal trademark filings; however, Respondent submits that the fact it filed federal trademark applications for its APPROVE.COM marks (both standard character and stylized marks) is not evidence of bad faith. To the contrary, Respondent claims the federal trademark for the APPROVE.COM word mark was issued on August 17, 2021, after the trademark examining attorney found no conflicts with any other marks. Complainant did not oppose registration of this mark. Similarly, the USPTO approved for publication Respondent’s application to register its APPROVE.COM logo mark. Complainant requested and obtained an extension of time to oppose registration of this mark but did not file a Notice of Opposition before the extension period expired. Complainant, on the other hand, did not file its federal trademark applications for the APPROVEME.COM word mark and the APPROVE ME logo until August 2020 – a month after Respondent filed its applications. In addition, Respondent states that Complainant’s procurement web page (“www.approveme.com/approve-platform/”) has not been logged once on the Internet Archive Wayback Machine. In sum, Respondent contends that Complainant’s argument is convoluted, and the evidence does not support a finding that Cartmell registered the Domain Name in bad faith or that Respondent or Tipalti used the Domain Name with any bad faith intent.
6. Discussion and FindingsIn order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(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) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that Complainant has demonstrated rights in its APPROVE ME and APPROVEME.COM trademarks, both through registration and use. The Panel does not find in the record sufficient evidence to establish Complainant’s asserted common law rights in APPROVE ME as an unregistered mark from as early as 2008 or 2013, both dates referenced by Complainant and/or listed in its trademarks; this requires substantial evidence on a range of factors such as historical sales, advertising, and media recognition (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3).
The Panel observes that first element of the UDRP “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See id., section 1.7. Further, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Id., section 1.8. As usual, the gTLD “.com” is disregarded as a standard registration requirement. See section 1.11.2.
Here, the Panel observes that Complainant’s APPROVE ME marks contain a combination of the terms “approve” and “me”, while the Domain Name contains the term “approve”. Despite the descriptive nature of this common element in Complainant’s marks and the Domain Name, and although the Domain Name omits the term “me”, the Panel finds a side-by-side comparison suggests confusing similarity.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsRegarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name”.
Here, Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name due to the manner in which Respondent has used it is. In particular, Complainant alleges that Respondent purchased and developed the Domain Name with the intention of piggybacking off Complainant's APPROVEME.COM mark by injecting confusion into Internet searches for Complainant's business to redirect consumers to Respondent's services, especially as Respondent is known as Tipalti and has only recently developed branding around the "Approve" name. Complainant contends Respondent’s use of the Domain Name, which is highly similar to Complainant's mark, is thus intended to derive advantage from user confusion and divert Internet users to Respondent, a competitor of Complainant, and that this use does not confer rights or legitimate interests on Respondent.
Respondent, in response, has stated that both the original registrant of the Domain Name in 1996 (Cartmell), and Respondent when it purchased the Domain Name in July 2020, were unaware of Complainant and its marks at those pertinent times. Further, Respondent has used the Domain Name in connection with a legitimate business offering prior to the filing of the Complaint, as the Domain Name was used first by Respondent and then by Tipalti for its Tipalti Approve platform, which is a stand-alone service and the procurement tool within Tipalti’s suite of services. Respondent states that its Tipalti Approve service builds on technology developed by Respondent (the Israeli company, Swift Development), acquired by Tipalti Solutions in its acquisition of Respondent in 2021. Respondent states that all of these events occurred prior to Tipalti Solutions receiving notice of this dispute. Further, Respondent, which is now known as Approve.com Ltd. and is a subsidiary of Tipalti Solutions, owns two United States trademark registrations for its APPROVE.COM marks and Complainant, after requesting an extension of time before the USPTO to oppose registration of Respondent’s APPROVE.COM logo mark, failed to submit an opposition. Respondent contends these facts are sufficient to demonstrate that Respondent has rights or legitimate interests in the Domain Name.
In the interest of judicial economy, the Panel chooses to ground its Decision on the third element, bad faith, rather than reaching a conclusion on the issue of Respondent’s rights or legitimate interests under the Policy.
C. Registered and Used in Bad FaithThe third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, concerning registration of the Domain Name, despite Complainant’s allegation that Respondent was aware of Complainant and targeted its APPROVE ME marks and brand, Respondent has submitted the sworn declaration of Brian Cartmell, the original registrant of the Domain Name in 1996 (before Complainant existed), in which he stated that he had no knowledge of Complainant and never contacted Complainant to sell the Domain Name prior to this dispute. The Panel observes, however, that in line with WIPO Overview 3.0, section 3.8.1, “[i]rrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name”. Thus, it is only relevant to consider the sworn declaration of Bar Winkler, the founder of Respondent, an Israeli corporation, concerning the acquisition/purchase of the Domain Name in July 2020. Mr. Winkler has testified that he had no knowledge of Complainant at the time he acquired/purchased the Domain Name, and Respondent has stated that the earliest it became aware of Complainant was when Complainant filed a request before the USPTO for an extension of time to oppose Respondent’s federal trademark application for the APPROVE.COM logo mark, although Complainant did not subsequently file an opposition. These events all occurred after Respondent acquired/purchased the Domain Name. The Panel determines that in view of the following considerations, this is not a case in which Respondent “knew or should have known” that the Domain Name would be identical or confusingly similar to Complainant’s mark: (i) the sworn testimony of Mr. Winkler; (ii) the nature of the Domain Name itself corresponding to the descriptive word “approve”; (iii) Respondent, the acquirer/purchaser of the Domain Name in July 2020, being an Israeli company and before being acquired by Tipalti Solutions or pursuing trademark rights before the USPTO; and (iv) Complainant having submitted little evidence of the extent of the reputation, goodwill or distinctiveness of its APPROVE ME marks at the time (July 2020) when Respondent acquired the Domain Name.
Regarding use of the Domain Name, the Panel observes that this is a case in which both parties have legitimate business operations and both own federally registered trademarks in the United States. Complainant claims that Respondent’s use of the Domain Name is in bad faith and infringes on its rights in the APPROVE ME and APPROVEME.COM marks, while Respondent submits that that it has rights in its APPROVE.COM marks, and that Complainant failed to oppose the registration of Respondent’s marks when it could have done so, and that the use of the Domain Name has been in connection with Respondent’s legitimate business offerings and subsequently the Tipalti Approve offerings. Respondent has also sought to argue that its services differ from Complainant’s services and/or Complainant has not really offered services similar to those offered by Respondent, at least until recently.
The Panel determines that, apart from its finding of no bad faith registration of the Domain Name, these issues effectively involve alleged infringement of Complainant’s registered trademarks and the relevance of Respondent’s rights in its own registered trademarks and as such would be better settled in a court, where a complete record and detailed arguments under United States federal trademark law can be considered.
Accordingly, Complainant has failed to satisfy the third element of the Policy.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Date: January 17, 2022
1 Respondent contends it is not clear how Complainant can claim a date of first use that is eight years prior to the date on which Complainant’s company was formed. Complainant’s Reg. No. 4465148 (for the APPROVE ME word mark) in the name of Kevin Michael Gray d/b/a ApproveMe LLC has a claimed date of first use of April 11, 2013. Similarly, there is no reference to “procurement” in Reg. No. 4465148. The Complaint recites facts as to how the ApproveMe.com SaaS platform operates, but these facts are not presented in the form of any actual testimony, nor is any documentary evidence cited.