Generic Top Level Domain Name (gTLD) Decisions

The Complainant is SafeTPay, Inc., Hampton, GA, USA ("Complainant"). The Respondent is eConnect, Inc., San Pedro, CA, USA ("Respondent").

The domain name at issue is safetpay.com, registered with Network Solutions.

The undersigned panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Tyrus R. Atkinson, Jr. Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 23, 2000; The Forum received a hard copy of the Complaint on August 18, 2000.

On Aug 28, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name safetpay.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On August 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 19, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@safetpay.com by e-mail.

On September 28, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Tyrus R. Atkinson, Jr. as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant filed Articles of Incorporation with the Nevada Secretary of State on August 11, 1999, under the name SafeTPay.com, Inc.

The attorney who prepared the Articles of Incorporation sent copies of the Articles to both Complainant and Respondent.

On August 11, 1999, Harry Hargens, the sole officer of Complainant, reserved the name SAFETPAY.COM with Network Solutions, Inc.

In September, 1999, Richard Powell, acting as agent for Respondent, registered the domain name SAFETPAY.COM with Network Solutions, Inc., in his own name, to preserve rights in the domain name on behalf of Complainant after learning that the domain name was still available and not registered in the name of Complainant.

Powell informed Complainant that he would transfer ownership of the domain name to Complainant but Powell failed to do so and subsequently transferred the domain name to Respondent.

On September 21, 1999, an attorney, working as legal counsel for both Complainant and Respondent, forwarded a "Capital Contribution Agreement" between the parties herein to both Complainant and Respondent. The "Agreement" required Respondent to contribute capital to Complainant in exchange for stock in Complainant.

The "Capital Contribution Agreement" was executed by Complainant and Respondent on November 5, 1999.

On September 28, 1999, Thomas S. Hughes, President of Respondent, filed an intent to use federal trademark application for the mark SAFETPAY.

From September 1999 to January, 1999, customers of Complainant continued to access Complainant's website through the domain name SAFETPAY.COM. Sometime in January, Respondent caused a change in server identification information thereby redirecting traffic intended for Complainant to Respondent's own website. Respondent made this change shortly after being informed by Complainant that Respondent had breached the "Capital Contribution Agreement."

Complainant applied for a federal trademark for registration of the mark SAFETPAY.COM which was filed on November 10, 1999.

Complainant continues to use the trade name SAFETPAY.COM, INC. and the trademark SAFETPAY.COM.

The domain name SAFETPAY.COM is identical to the corporate trade name and common law trade name of Complainant.

Respondent usurped the domain name SAFETPAY.COM to prevent Complainant from representing itself with the matching domain name and to divert customers of Complainant to Respondent's website.

Respondent acted in bad faith since Respondent and its President knew of Complainant's prior rights at the time of registration. Respondent attempts to attract customers to its website by creating a likelihood of confusion with SAFETPAY.COM as to source, sponsor, affiliate or endorser. Respondent ownership of the domain name disrupts the business of Complainant.

B. Respondent

Complainant's contentions fail to include the involved history concerning Harry Hargens, the principal of Complainant, and the Respondent, including but not limited to the SAFETPAY concept and the SAFETYPAY.COM domain name.

Hargens was hired in 1999 by Respondent as a paid consultant in order to assist Respondent with the development and marketing of its electronic secure payment process. Respondent has common law and contractual rights to intellectual property that Hargens developed during his employment with Respondent as consultant.

The word SAFETYPAY was invented by Hughes, the President of Respondent.

In or about August, 1999, through the services of Respondent's outside counsel, a Nevada corporation named SafeTPay.com was formed with Hargens as sole officer. SafeTPay.com existed in name alone. It did not authorize or issue any actual shares at that time, and it was always the understanding between Hargens and Respondent and Hughes that to the extent SafeTPay.com ever authorized and issued shares, Respondent would be the controlling shareholder. This understanding between Hargens and Respondent was further memorialized in a written capitol contribution agreement, signed by Hargens and dated November 5, 1999.

Richard Powell was a employee of a corporation named Rogel Technologies which is a majority owned subsidiary of Respondent. Powell did not reserve the domain name SAFETPAY.COM for his own use.. His understanding and instructions were that Respondent would use SAFETPAY.COM for its business purposes. As a matter of convenience, the domain name was registered on behalf of R.G.Tecq., Inc. a separate corporation which furnishes a variety of important technical services to Respondent. R.G. Tecq., Inc. held the registration with the understanding that it was for the benefit of Respondent.

Hargens did not reserve the domain name SAFETPAY.COM in August of 1999. Hargens had no understanding of the technical rules and means for reserving a domain name.

R. G. Tecq, Inc. properly transferred the registration of the domain name to Respondent. It was done to confirm what has always been the understanding between Respondent and R. G. Tecq, Inc. that the domain name SAFETYPAY.COM is property held for the benefit of Respondent to be used for the benefit of Respondent's business plans.

The trademark application for the SAFETPAY mark by the President of Respondent was proper.

Hargens, the principal of Complainant, has attempted over the past year to misappropriate Respondent's rights to the domain name SAFETYPAY.COM, including as well to the SAFETYPAY mark and to proprietary technology developed by Respondent and Hughes.

Respondent is a Nevada corporation.

Respondent hired Harry Hargens as a consultant regarding the creation and management of a business unit focused on the processing of secure Internet transactions according to the "Recitals" in the "Capital Contribution Agreement" (hereafter "Agreement") identical copies of which were attached to both the Complaint and Response

Respondent's outside counsel prepared and filed articles of incorporation for SafeTPay.com, Inc. showing Hargens as the principal officer. Respondent's President, Hughes, was copied in the transmittal letter of the articles from the lawyer to Hargens. The corporation was formed as part of a business plan developed by Respondent for the processing of secure transactions. As part of this plan Respondent's outside counsel drafted the Agreement dated November 5, 1999. The "Recitals" therein state that the Agreement is entered into "to restructure this business unit as a separate corporation so to enable the business to be most effective..."

Respondent was to contribute software, computer hardware, physical assets, trademarks, trade names, copyrights, web addresses, and consulting agreements to the new corporation (which apparently had no assets of its own), herein the Complainant, in return for a majority of the stock in the new corporation. Hargens and three associates were to receive a minority stock interest. Respondent was to supply the capitalization for the new corporation in the amount of $500,000.00 in a series of installments. Even if Respondent never paid any part of the capitalization, Respondent would remain the majority shareholder in SafeTPay.com, Inc. ("Agreement", Paragraph 2(c) ).

The attempt by Hargens to register the domain name SAFETYPAY.COM was pursuant to the plan developed by Hargens and Hughes for the purpose of acquiring the domain name for use for the mutual benefit of Complainant and Respondent.

When the attempt to register the domain name failed, and this was discovered by Richard Powell, an employee of Rogel Technologies, a majority owned subsidiary of Respondent, Powell registered the domain name SAFETYPAY.COM . Powell did so according to an e-mail dated September 21, 1999 to "...make sure SafeTPay.com was registered before somebody else got it." This e-mail was addressed to Hargens. Powell reserved the domain name SAFETYPAY.COM for the benefit of Respondent and Complainant.

A dispute between the parties arose when Complainant informed Respondent that it breached the Agreement by failing to invest the capital contribution.

For the parties to gain relief under a number of the contentions contained in the Complaint and Response, it will be necessary to resort to a forum with jurisdiction to decide such issues. The only issues which can be decided in this case are the ones addressed in the following sections.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The URDP does not cover every possible violation of trademark rights. The statutes create rights and provide remedies which can only be vindicated by a court. See Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy is intended to resolve only a narrow class of cases of "abusive registrations" and does not extend to cases where a registered domain name is subject to a legitimate disputes, which are relegated to the courts).

Respondent does not dispute the fact that the domain name SAFETPAY.COM is identical or confusingly similar to Complainant's corporate name SafeTPay.com, Inc. and the name by which it does business, SAFETYPAY.COM. Complainant has proved this element.

Complainant's sole contention on this issue is that Respondent usurped the domain name to prevent Complainant from representing itself with the matching domain name and with intent to divert customers to its own competitive web-site.

This contention goes to the issue of bad faith, not to a lack of rights and legitimate interests on the part of Respondent.

Respondent, through the use of Hargens as consultant, developed a business plan for the use of the name SAFETYPAY in its business of secure Internet transactions. Whether Hughes of Respondent coined the name, as it is contended, or whether Hargens came up with the name, Respondent intended to use the name. Respondent was fully aware of the incorporation of Safetypay.com, Inc. and was provided a copy of the Articles of Incorporation. The incorporation was done by Respondent's outside counsel. Safetypay.com, Inc. was organized to be supplied with various materials and goods by Respondent and to be financed by Respondent. There is no evidence that any party other than Respondent was to fund the corporation. Respondent was to be the majority shareholder in Safety.pay.com, Inc. Hargens attempt to register the domain name SAFETYPAY.COM was pursuant to the business plan.

Under the Agreement drafted by Respondent's outside counsel and signed by the Complainant and Respondent, Respondent maintains an interest in SafeTPay.com, Inc.

In order to prevail, Complainant must show that Respondent has no rights or legitimate interests in respect of the domain name. Policy, Sec.4(a)(ii).

Respondent may rebut such showing by establishing that before any notice of the dispute, Respondent's use or, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services was made. Policy, Sec. 4(c)(i). Respondent has shown that it intended to use, and was preparing to use, the name SAFETYPAY.COM, through its majority ownership of Safetypay.com, Inc. in the business of secure Internet transactions. See SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); K2r Produkte AG v. Jeremie Trigano, D2000-0622 (WIPO Aug. 23, 2000) (finding that the Respondent had rights and legitimate interests in the domain name <k2r.com> where he registered the domain name for a website in connection with his mother’s store, "KIRK ET ROSIE RICH"); Genting Berhad v. Tan Kin Sin, FA 94735 (Nat. Arb. Forum June 28, 2000) (finding that the Respondent had legitimate interests in the domain name where the Respondent had made preparations to use the domain for his newly formed business).

Complainant has not shown that Respondent has no rights or legitimate interests in the domain name. Respondent has shown that it does have such rights and interests.

This issue must be decided for Respondent.

All three elements must be shown by Complainant to prevail. Since the element next above was not proved and is resolved in favor of Respondent, it is unnecessary to consider the bad faith issue. See Multi thématiques v. Matthew C. Harper, D2000-0695 (WIPO Sept. 28, 2000) (finding that the three conditions provided under Policy ¶ 4.a. must cumulatively be established by Complainant, and since Complainant fails on the first condition, one need not further examine whether Respondent has any rights or legitimate interests or whether the Respondent registered and used the domain names in bad faith).

However, it is noted that the evidence shows that the domain name was not initially registered in bad faith. Complainant was not at the time of registration, a competitor of Respondent. No pattern of conduct suggesting bad faith registration of domain names on part of Respondent has been shown. There has been no attempt to sell the domain name.

Complainant has failed to establish all of the three elements required in Rule 4(a) of the ICAAN Policy, therefore it is ordered that Complainant's demand that the domain name SAFETYPAY.COM be transferred from Respondent to Complainant be and is hereby denied.