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Fort Knox National Company v. Ekaterina Phillipova [2004] GENDND 744 (15 June 2004)

1. The Parties

The Complainant is Fort Knox National Company, of Elizabethtown, Kentucky, United States of America, represented by Frost Brown Todd LLC, United States of America.

The Respondent is Ekaterina Phillipova, of Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <true-pay.com> is registered with Parava Networks, Inc. dba RegistrateYa.com & nAAme.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2004. On April 20, 2004, the Center transmitted by email to Parava Networks, Inc. dba RegistrateYa.com & nAAme.com a request for registrar verification in connection with the domain name at issue. On May 3, 2004, Parava Networks, Inc. dba RegistrateYa.com & nAAme.com 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 administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2004.

The Center appointed Daniel Peña as the sole panelist in this matter on June 2, 2004. 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

Complainant has used the service mark TRUEPAY in connection with electronic funds transfer services for electronic collections and disbursements since at least 1995.

Complainant secured a registration of the typed drawing of the TRUEPAY service mark in the United States in 1996, under U.S. Registration Number 1,993,564.

On or about August 29, 2003, Respondent registered the domain name <true-pay.com>. On March 17, 2004, the URL “www.true-pay.com” was redirected to a website purporting to offer services relating to on-line credit card authorization, payment, processing and transaction management.

5. Parties’ Contentions

A. Complainant

Complainant has established confusing similarity between Respondent’s domain name and a service mark in which Complainant has rights.

Complainant’s use and U.S. registration of its TRUEPAY service mark predates Respondent’s registration of the <true-pay.com> domain name.

Respondent is diverting Internet users to a website that competes with Complainant and its line of business.

To Complainant’s knowledge, Respondent has not been commonly known by TRUEPAY, TRUE-PAY or <true-pay.com> trademarks or domain name.

Respondent has adopted a domain name similar to Complainant’s to capitalize on Complainant’s good will and appear as a credible business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel considers that the domain name subject to these proceedings is confusingly similar to the Complainant’s trademarks as established in the first requirement of the Policy 4(a)(i).

From the point of view of the Panel, the fact of including a hyphen between the words true and pay does not make a sufficient difference between the domain name and the Complainant’s trademark. On the contrary, and considering the requirement that the disputed domain name and the trademark must be confusingly similar, this Panel believes that the expression true-pay is similar to the trademark TRUEPAY and, therefore, may confuse the public about the business origin, the quality of products or services, and about the owner of the domain name.

B. Rights or Legitimate Interests

The Complainant has shown evidence about his legitimate right over the expression ‘truepay’ in the US as a result of its trademark registration as well as its commercial and financial activity.

By not replying to the Complainant’s contentions, the Respondent has failed to show evidence to this Panel about his possible legitimate right to have and keep the title to the disputed domain name in the future.

C. Registered and Used in Bad Faith

The facts specified in paragraph C of the Complaint are considered as preliminary evidence of Respondent’s bad faith. For the purposes of this decision, the act of adding a hyphen to the others trademarks is considered an act of typo squatting committed by the Complainant.

According to the circumstances of this case from the point of view of the Panel, the intention of the Respondent was to prevent the Complainant from reflecting its trademark in a corresponding domain name in accordance to requirement 4(b)(ii) of the Policy.

It is also the opinion of the Panel that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Therefore, the conduct of Respondent is considered as fulfilling the statements provided by 4(b)(iv) of the Policy.

This interpretation is based not only on the fact of having added a hyphen but also in the different circumstances surrounding the case, which have not been contradicted by the Respondent given that he did not reply to the Complaint.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <true-pay.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist

Dated: June 15, 2004