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Generic Top Level Domain Name (gTLD) Decisions |
Internet Billing Company LLC v. Resource
Marketing
Claim Number: FA0204000112553
PARTIES
Complainant is Internet Billing Company LLC, Tamarac,
FL (“Complainant”). Respondent is Resource Marketing, Greensboro, NC
(“Respondent”) represented by Richard
Wilson.
The domain name at
issue is <ipay.biz>,
registered with Domain Bank, Inc.
The undersigned
certifies that he has acted independently and impartially and to the best of
his knowledge, has no known conflict
in serving as Panelist in this proceeding.
Judge Irving H.
Perluss (Retired) is the Panelist.
Complainant has standing
to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely
filed the required Intellectual
Property (IP) Claim Form with the Registry
Operator, NeuLevel. As an IP Claimant,
Complainant timely noted its intent to file a STOP Complaint against Respondent
with the Registry Operator, NeuLevel
and with the National Arbitration Forum
(the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on
April 26, 2002.
On May 9, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of May 29, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to Respondent
in compliance
with paragraph 2(a) of the Rules for the Start-up Trademark
Opposition Policy (the “STOP Rules”).
A timely Response
was received and determined to be complete on May 29, 2002.
On June 19, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge
Irving H. Perluss (Retired) as
the single Panelist.
Transfer of the
domain name from Respondent to Complainant.
A. Complainant
1. Complainant
has established prior rights to the disputed domain name, having used the name
in commerce continuously since June 5,
2001.
It has filed for the following trademarks in the United States:
(a) US Trademark Serial No. 76267253 for the
design mark “iPay Internet Billing Company” used in connection with billing and
collection
services for others, and business management services; providing a
database of information on a global computer network featuring
information on
on-line commerce for the goods and services of others in Class 35 and computer
and computer network consulting services
in Class 42, filed June 5, 2001.
(b) US Trademark Serial No. 76267254 for
<iPay.com> used in connection with billing and collection services for
others, and business
management services; providing a database of information
on a global computer network featuring information on on-line commerce for
the
goods and services of others in Class 35 and computer and computer network
consulting services in Class 42, filed June 5, 2001.
(c) US Trademark Serial No. 76267255 for
“iPay” used in connection with the billing and collection services for others,
and business management
services; providing a data base of information on a
global computer network featuring information on on-line commerce for the goods
and services of others in Class 35 and compute and computer network consulting
services in Class 42, filed June 5, 200.
2. Complainant registered the domain name
<iPay.com> on June 8, 2001, anticipating at that time that it would
associate this domain
with a new on-line wallet and payment system.
3. The domain name known as <ipay.biz> is essentially
identical to the trademarks registered by Complainant in the United States for
<iPay.com> (USPTO Serial No.
76267254 and “iPay” (USPTO Serial No.
7626755) and for the design mark “iPay Internet Billing Company (USPTO Serial
No. 76267253).
4. Because “iBill” operates and manages
on-line payment processing and collection services, it receives sensitive and
confidential credit
card, debit card and checking account information from
merchants and consumers. This sensitive
information is presently received through its corporate website at
<ibill.com>. The <iPay.com>
website will act as the primary portal of this on-line stored payment system or
“wallet,” inviting consumers
and merchants to use iBill’s “iPay” alternative
payment system for e-commerce purchases.
5. Complainant is extremely concerned
that, because <ipay.biz> is
identical to the marks being used for the “iPay” stored payment system, it
would be highly likely that confusion would interfere
with the iPay system and
prevent the security of the merchants and/or customers who rely on the iPay
system to maintain the secrecy
of their highly confidential financial
information.
6. Complainant currently handles hundreds
of millions of transactions on a global scale, having been viewed as fifth in a
ranking of
the most visited business-to-business websites by Forbes Magazine,
and anticipates that the iPay stored payment system will be extremely
popular
on an international scale. As such,
iBill has acquired iPay domain names in multiple countries, and has filed for
trademark protection internationally in anticipation
of the large volume of
consumer use.
7. Complaint has invested a substantial
amount of money into its “iPay” stored payment system, and has established
numerous strategic
alliances on an International level, required with the
network of banking and financial services companies, who have also planned
to
utilize the iPay transaction system.
The use of <ipay.biz>
by a non-iBill entity (being so similar to <iPay.com> and
<iPay.info> (would likely damage consumer and merchant confidence. The iPay portal reputation in the mind of
the consuming public is critical, because iPay offers consumer credit card
dispute resolution
services as part of its billing and collection service. Confusion would damage the iPay reputation,
tarnish its image, dilute the iPay name or blur it by another’s use of the same
or a similar
term or phrase, causing consumers to no longer trust iBill’s iPay
system, its dispute resolution services (resolving disputes between
a vendor of
goods and services and the credit card purchasing consumer) as well as the
value of the iPay marks and iBill’s business
in general.
8. Respondent has registered the domain
name in bad faith, primarily for the purpose of selling the domain name for
substantially more
than it paid for it.
B. Respondent
1. Respondent
Resource Marketing is an Internet-based company which specializes in marketing
products on the Internet. Resource
Marketing uses multiple domain names to offer multiple products and
services. Some of the products and
services offered are business-to-business services and computer products.
2. Respondent
Resource Marketing created a division called Domains Invest in 2001 to
specialize in helping Resource Marketing find and
acquire domains based on the
needs of Resource Marketing. Resource
Marketing notified Domains Invest in February, 2002, of its need for a domain
to use for a domain to set up an on-line portal
for consumers to order products
directly from manufacturers. As a
result, Domains Invest found <ipay.biz>
as an appropriate available domain and notified Resource Marketing of its
findings. Upon notification, Resource
Marketing registered the <ipay.biz>
on March 27, 2002.
3. Resource
Marketing never registers domains with the intent to sell. <Ipay.biz>
was registered by Resource Marketing with full knowledge of the rules and laws
set by ICANN, the committee which governs <.biz>
domains. Resource Marketing registered <ipay.biz> to create a web portal
for consumers to find products they can order directly through the Internet.
4. There
is no evidence that the disputed domain name has been advertised for sale or is
being posted for sale.
5. Respondent
has designed software for the disputed domain name to enable consumers to find
products they can order directly through
the Internet. Respondent has identified hundreds of
companies that accept on-line orders for their products. Customers can order products directly from
these companies. Respondent believes
that with the growth of the Internet ordering products directly from the
manufacturer is becoming more and more
popular. These companies offer commissioned based pay for customers so
that Respondent refers to their business websites. The portal is currently being developed.
6. The
goods and services listed as to be offered by Complainant under its trademark
“iPay” are in no way similar to the products that
will be offered by Respondent
at <ipay.biz>. Respondent makes a special effort not to
infringe on trademark owners’ rights.
Respondent was fully aware of the trademarks for “iPay” and
<ipay.com> owned by the Complainant.
7. Respondent
plans to display a disclaimer at <ipay.biz>
which states, “This site is not affiliated with the Internet Billing Company.”
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint
on the basis of the statements and documents submitted
in accordance with the
Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of
the STOP Policy requires that the Complainant must prove each of the following
three elements to obtain an order
that a domain name should be transferred:
(1) the domain
name is identical to a trademark or service mark in which the Complainant has
rights; and
(2) the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3) the domain
name has been registered or is being used in bad faith.
Due to the common
authority of the ICANN policy governing both the Uniform Domain Name Dispute
Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel will exercise
its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP
proceedings, a STOP Complaint may only be filed when the domain name in dispute
is identical to a trademark or service
mark for which a Complainant has
registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed
domain name that is identical to a trademark or service mark in which
a
Complainant asserts rights. The
existence of the “.biz” generic top-level domain (gTLD) in the disputed domain
name is not a factor for purposes of determining
that a disputed domain name is
not identical to the mark in which the Complainant asserts rights.
STOP
Policy ¶4(a)(i)
Complainant has
filed for United States trademarks utilizing the “iPay” mark on June 5,
2001. It has used the marks in commerce
since June 15, 2001.
Accordingly, the
Panel finds that Complainant does have rights to the marks. The Panel further finds and concludes that
Complainant’s marks and the disputed domain name are identical.
STOP
Policy ¶4(a)(ii)
STOP
Policy ¶4(c) functions similarly to UDRP ¶4(c) in providing ways for a Respondent
to demonstrate its rights or legitimate interests
in a domain name.
Under
STOP Policy ¶4(c), the Respondent may demonstrate its rights or interests by
proving:
i. The Respondent is the owner or
beneficiary of a trade or service mark that is identical to the domain name; or
ii. Before any notice to the Respondent of
the dispute, its use of, 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; or
iii. The Respondent (as an individual,
business, or other organization) has been commonly known by the domain name,
even though it has
acquired no trademark or service mark rights.
Respondent
has submitted no evidence to establish that it falls within ¶4(a)(i) or
¶4(c)(iii), and the Panel finds and concludes that
Respondent has not so
demonstrated.
With
respect to ¶4(c)(ii), Respondent candidly admits that at the time of
registration of the disputed domain name “Resource Marketing
was fully aware of
the trademarks for ‘ipay’ and ‘ipay.com’ owned by the Complainant. . . .”
It
follows, accordingly, that Respondent cannot assert that it made demonstrable
preparations to use the disputed domain name as required
“Before any notice to
Respondent of the dispute. . . .”
Respondent
knew or reasonably should have known that this present dispute was inevitable.
The
Panel, accordingly, so finds and concludes that Respondent does not have a
legitimate interest in or rights to the disputed domain
name.
STOP Policy ¶4(a)(iii)
Lastly,
it must be ascertained whether the bad faith requirement of STOP Policy
¶4(a)(iii) has been met. This is
clearly the case here. STOP Policy ¶4(b)
provides four non-exclusive examples of circumstances that, if proven, will
satisfy the bad faith requirement of
STOP Policy ¶4(a)(iii).
To
establish bad faith under the STOP Policy, a Complainant only need prove either registration or use of the domain name in bad faith, not both as the UDRP
requires.
STOP
claims differ from UDRP claims in one very significant and fundamental
way. Unlike the UDRP, under STOP when a
registrant (Respondent) registers a domain name for which an IP Claim was
previously filed, the
registrant is notified of the potential for trademark
infringement before being allowed to proceed with the registration. One Panel has recognized that registration
of a domain name despite such notice, in appropriate circumstances, could “almost
preclude
any possibility of registration in good faith of a domain name. . .
.” Gene Logic Inc. v. Bock, FA 103042
(Nat.Arb. Forum Mar. 4, 2002) (finding bad faith where Respondent registered
the <genelogic.biz> domain name “with
full knowledge that his intended
business use of this domain name was in direct conflict with a registered
trademark of a known competitor
in exactly the same filed of business”).
In
the Panel’s view, Complainant has gone much further and has established
Respondent’s bad faith registration under STOP Policy ¶4(b)(ii).
Under
UDRP ¶4(b)(ii), a Complainant may demonstrate Respondent’s bad faith by showing
that Respondent registered the domain name for
the purpose of preventing
Complainant from registering domain names that reflect its mark(s), provided
Respondent has engaged in
a pattern of such conduct. Under STOP Policy ¶4(b)(ii), the Complainant may similarly prove
bad faith by showing the Respondent registered the domain name for
the purpose
of preventing Complainant from registering domain names reflecting its
mark(s). However, under the STOP
provision, there is no “pattern” of conduct requirement. Thus, bad faith has been found under STOP
¶4(b)(ii) when only one domain name was at issue and no prior history of
trademark infringement
was established.
See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan.
23, 2002) (finding bad faith under STOP ¶4(b)(ii), noting that it was
reasonable to conclude Respondent
registered <peachtree.biz> with the
intent to prevent Complainant from reflecting its PEACHTREE mark in a
corresponding domain
name, given Respondent’s knowledge of Complainant’s mark
and Respondent’s lack of rights or interests in the mark).
But
here, the Panel finds substantive evidence and, thus, concludes that Respondent
has engaged in a pattern of conduct (even though
a “pattern” is not required)
for the purpose of preventing Complainant and others with registered trademarks
from registering domain
names that reflect their marks.
In
J.
B. Morgan v. Resource Marketing (WIPO Case No. D2000-0035, Mar. 23,
2000), where Respondent here was the Respondent there, the Panel stated:
“Respondent
responds without denying the allegations that it has registered other domain
names of financial institutions.
Accordingly, the Panel can draw adverse inferences. See paragraph 14(b) of the Rules; Mondich
and American Vintage Wine Biscuits, Inc., ICANN Case No. D2000-0004. Panel decisions have found that ownership of
numerous domain names which are the names or marks of well known business
entities suggests
an intent to profit from the activities of others. See,
Stella D’Oro Biscuit Co., Inc. v. The Patron Group, Inc., ICANN Case No.
D2000-0012, paragraph 5(b)(1) at 6; Nabisco Brands Co.
v. The Patron Group,
Inc., ICANN Case No. D2000-0032, paragraph 5(b)(1) at 6; and Parfums Christian
Dior v. 1 Network, Inc., ICANN
Case No. D2000-0022, paragraph 6(c) at 5-6. Therefore, the Panel finds that Respondent
has registered and used the domain name jpmorgan.org in bad faith.”
The
Panel finds and concludes that Respondent here registered the disputed domain
name in bad faith.
A
proposed disclaimer does not assist Respondent because of the initial interest
confusion.
DECISION
Based
on the above findings and conclusions, it is decided that the domain name <ipay.biz> registered by
Respondent Resource Marketing, shall be, and the same is transferred to
Complainant Internet Billing Company, LLC.
No further IP claims are pending against this domain name under the STOP
Policy.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: June 25, 2002
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