WBD Investment Limited v. Eashwer Kollata / HashCash Consultants
Claim Number: FA2011001919370
Complainant is WBD Investment Limited (“Complainant”), represented by Sean Ploen of Ploen Law Firm, PC, Minnesota, USA. Respondent is Eashwer Kollata / HashCash Consultants (“Respondent”), represented by ScarinciHallenbeck, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paybito.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Sandra J. Franklin, Antonina Pakharenko-Anderson, and Gerald M. Levine (Chair).
Complainant submitted a Complaint to the Forum electronically on November 3, 2020; the Forum received payment on November 3, 2020.
On November 4, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <paybito.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@paybito.com. Also on November 5, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 9, 2020.
On December 15, 2020, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Sandra J. Franklin, Antonina Pakharenko-Anderson, and Gerald M. Levine (Chair), as Panel.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, a company located in Belize City, Belize, offers electronic payment and currency transfer services. It provides minimal information about itself except that it markets its services to consumers in the U.S. market. It filed an application on an Intent to Use basis (ITU) for the mark PAYBIT with the U.S. Patent and Trademark Office on December 11, 2013 and received a certificate of registration on April 3, 2018. It states that it has used PAYBIT openly, widely and continuously since at least as early as October, 2017 (the certified date for the first use in commerce of the trademark).
Complainant asserts that it has “nation-wide constructive use as of [the date of the ITU application].” Complainant served Respondent with a cease and desist notice dated January 13, 2020.
B. Respondent
Respondent is similarly terse in providing information about itself. It claims that its website at www.paybito.com is a leading cryptocurrency asset trading platform operating in the U.S. and India. It has a business address in California with listed connections in major locations throughout the world including Mumbai and Kolkata, India. From a review of its website, Respondent appears to offer cryptocurrency exchange services which is either in competition with, similar to, or overlaps the services Complainant offers.
In support of its contentions, Respondent submits screenshots of its services as originally offered on the Internet as captured by the Internet Archive’s Wayback Machine dated January 4, 2018. (Response, Annex A). It alleges it acquired <paybito.com> in September 2016, but this is unverified since it does not annex a copy of the Whois record or provide other evidence of purchase on that date.
Respondent also submits current screenshots of the home and other pages from the <paybito.com> website to support its contentions of offering a cryptocurrency asset trading platform (Response, Annex B).
Preliminary Issue
The parties have called the Panel’s attention to certain actions taken by
the U.S. Patent and Trademark Office in rejecting a trademark application by
Respondent for PAYBITO. Respondent alleges that it has appealed the rejection
to the Trademark Trial and Appeal Board (TTAB).
According to Respondent “[t]he Examiner has not yet filed her brief with respect to this appeal.” It asserts further that “Resolution of Complainants argument in this UDRP action will depend on the resolution of this pending appeal.” Respondent concludes by contending that “[a]s Respondent’s rights are in the process of being determined by the TTAB, this dispute falls outside of the scope of the Policy, and should be dismissed.” In support of this argument, Respondent relies on a number of UDRP cases that have dismissed the administrative proceedings on these grounds.
UDRP
Rule 17(b) provides that “if, before the Panel’s decision is made, it becomes
unnecessary or impossible to continue the administrative proceeding for any
reason, the Panel shall terminate the administrative proceeding.“ On a full consideration
of the facts, the Panel sees no purpose served by terminating the Complaint.
In making this determination, it follows other Panels in taking jurisdiction of
alleged cybersquatting claims where the parties are also engaged in proceedings
before the TTAB. See Rejuve Clinics LLC. v, Merlin Kauffman, Rejuve Inc.,
D2019-2607 (WIPO February 6, 2020) (holding that “[s]uch trademark issues are
not ordinarily within the purview of UDRP proceedings, and the domain name dispute
between the Parties in this UDRP proceeding is at best ancillary in relation to
the ongoing TTAB litigation.” citing Quadrific Media Private Limited v.
Rajat Agarwal, D2017-2050 (WIPO August 31, 2017).
The
proceeding before the TTAB concerns a different subject matter, which is
unaffected by the outcome in this UDRP proceeding. Relevantly, the Panel in Rejuve
continued: “It appears that the Parties’ case will not come before the TTAB for
a hearing until May 2021, at the earliest. And, while the TTAB may
eventually rule on issues of trademark ownership and priority, the TTAB will
not address cybersquatting issues” (Emphasis added).
The circumstances in this case are similar to the facts in other cases retained by UDRP Panels and for consistency this case should be treated no differently. See also Normani GmbH v. Privacy Administrator, Anonymize, Inc / Stanley Pace, D2020-2353 (WIPO November 3, 2020) (“The Panel notes that this dispute is properly within the scope of the Policy and that the Panel has jurisdiction to decide the dispute.”)
The subject domain name, <paybito.com> is confusingly similar to the trademark PAYBIT in which Complainant has rights.
The evidence of record is insufficient to determine that Respondent has rights or legitimate interests in <paybito.com>.
Complainant has not established that Respondent registered <paybito.com> in bad faith.
Accordingly, the Complaint is denied.
Paragraph 15(a) of the 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 Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant
correctly points out that <paybito.com> wholly incorporates its
registered mark with the addition of the “o” and is confusingly similar to it. Although
Respondent denies this contention it does so as a perfunctory response. Adding a letter to a complainant’s mark is generally
insufficient to avoid a finding of confusingly similar and in no way
distinguishes the domain name from the trademark. In making a
side-by-side comparison of the domain name and the mark, the Panel has no
hesitation is concluding that <paybito.com> is confusingly similar
to Complainant’s PAYBIT trademark. So established is the test for determining confusing
similarity that it would be superfluous and excessive to cite earlier UDRP
decisions on this issue. Accordingly, Complainant has established that the
subject domain name is confusingly similar to a mark in which it has a right.
Under the terms of the Policy, Complainant has the burden of establishing that Respondent lacks rights or legitimate interests in the domain name. It is well settled that Complainant need only offer a prima facie case, after which (should it succeed) the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name under one or more of the circumstances set forth in paragraph 4(c) of the Policy. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum November 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case to satisfy the Policy requirements.)
Implied in the Policy language and well settled by consensus, light though this burden is, it cannot be satisfied by a complainant making conclusory statements. The Panel accepts that Complainant has not authorized Respondent’s use of a domain name confusingly similar to its mark. It also accepts the unlikelihood of Respondent independently choosing “paybito” without having prior knowledge of Complainant’s trademark in PAYBIT.
While Complainant’s evidence on the issue of Respondent’s knowledge is markedly terse, the composition of <paybito.com> is so close to Complainant’s PAYBIT trademark as to almost qualify as being identical to it. Based on the improbability that a second party in the same niche field of business would independently come up with the same phrase as an earlier mark, the Panel is of the view that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in <paybito.com>. Accordingly, the burden shifts to the Respondent to show rights or legitimate interests in the disputed domain name.
The Panel notes that Respondent’s rebuttal to Complainant’s contentions is equally terse. Significantly, it does not deny awareness of Complainant before it acquired the disputed domain name. It alleges that it acquired <paybito.com> in September 2016 which, if true, would predate Complainant’s first use in commerce of PAYBIT (October 20, 2017). However, Respondent fails to submit a copy of the Whois record which it must surely have had to support this contention and absent such evidence there is no verifiable proof that the current registrant is the same registrant who held <paybito.com> in September 2016.
The date of the subject domain name’s acquisition in this dispute is undeniably a material factor since, if true, it predates Complainant’s first use date of October 20, 2017, and would bear upon how and when, and even if Respondent could have become aware of Complainant and its mark. However, assertions of a material fact by a party’s representative is unacceptable as evidence to establish the date of domain name acquisition. Therefore, the Panel finds that the earliest confirmed and verified date for Respondent’s holding and use of <paybito.com> is reflected on a copy of a screenshot of its website dated January 4, 2018, which postdates the launch of Complainant’s business.
Equally critical in determining whether Respondent has rights or legitimate interests is the state of its knowledge about Complainant and its mark. Both Complainant and Respondent offer similar, competing, or overlapping services in a niche field of business and therefore compete for customers. The Panel accepts that Respondent began marketing its services through <paybito.com> on January 4, 2018. It also accepts Complainant’s certification that it launched its services as early as October 20, 2017. The Panel notes that Complainant registered the <paybit.com> domain name in 2013, the same year as it filed its trademark application for PAYBIT.
If Respondent had actual knowledge of Complainant it would have learned it by researching competitors in the same niche field as it prepared to launch its own business. However, other than its website, Complainant submits no evidence that would surely have brought attention of its business to Respondent, except that it served a cease and desist notice on Respondent two years after its launch of <paybito.com>. See Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Rebecca Nickerson / Rock City Harvest, FA2004001892080 (Forum June 26, 2020) (holding “[i]f Respondent was aware of Complainant’s HARVEST trademark when it adopted the HARVEST name for its business . . . , the Panel would have no difficulty concluding that Respondent’s adoption of the HARVEST name was not legitimate.”)
As already noted, Complainant’s contention that Respondent chose the disputed domain name intentionally to take advantage of its reputation, while not unlikely, is inconclusive on the question as to whether Respondent modeled its domain name on Complainant’s mark. The record is insufficient to establish that Complainant had achieved a wide reputation before or after October 20, 2017, or that Respondent chose the disputed domain name with knowledge of Complainant’s mark. The Panel is therefore unable to state with sufficient certainty that Respondent lacks rights or legitimate interests in <paybito.com>.
In view of the paucity of evidence from Complainant, and since the determination rests on whether Respondent’s choice of <paybito.com> was an abusive registration, the Panel makes no findings on the issue of rights or legitimate interests.
It is generally accepted under the Policy that for a bad faith registration (i) the Respondent must have been aware of the Complainant or its mark when it registered the disputed domain name; and (ii) the registration must in some way have been targeted at Complainant or its mark. See WIPO Overview 3.0, paragraph 3.2.2 for the consensus view on this issue.
Complainant essentially rests its case on the date it applied for registration of PAYBIT (December 11, 2013) and urges the Panel to find constructive notice retroactive to the application date. In support, it alleges that it “has used the trademark PAYBIT openly, widely, and continuously” but it is important to underline that this is only “since at least as early as October, 2017” and is not backed up with evidence.
For good reason, prior panels have rejected knowledge by constructive notice. The rationale for not applying the imputed knowledge doctrine is that “the essence of the complaint is an allegation of bad faith targeted at complainant,” The Way International Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003). The Panel in Swimways Corporation v. Richard Nugent, D2008-0786 (WIPO July 12, 2008) held that it is “notable that, even in those cases where the doctrine has been applied, there have been other circumstances indicating bad faith, including evidence that the relevant trade mark had been widely used beforehand . . . and was well-known, quite apart from the fact of registration.”
The question here is whether on or before October 20, 2017, Respondent became aware of Complainant and its mark and registered the almost identical <paybito.com> to take advantage of Complainant’s earlier entry into the niche market? While Respondent’s registration and use of a domain name confusingly similar to Complainant’s mark is not wholly improbable, something more than surmise is necessary to accept it as a fact. Complainant’s conclusory contentions alone do not establish a basis for drawing the inference it urges the Panel to make.
The reason for this lies in the paucity of evidence concerning Complainant’s reputation in the short period between its mark’s first use in commerce (October 20, 2017) and Respondent’s launch of its business (January 4, 2018). WIPO Overview 3.0 places constructive notice in the “knew or should have known” section: “Application of this concept may depend in part on the complainant’s reputation and the strength of or distinctiveness of its mark.”
Both the accrual of Complainant’s reputation as well as Respondent’s acquisition of the disputed domain name are critical to the Panel’s determination. The record shows that Complainant applied for registration of PAYBIT in 2013, but did not actually use the applied-for mark in commerce until October 20, 2017. If it accrued a reputation before that time it was Complainant’s burden to put that evidence in the record and, if its reputation postdated first use in commerce, to submit evidence of the extent of its reputation and how it was gained if not simply through the domain name portal. This evidence is missing from the record.
In defense of bad faith registration, Respondent contends in substance that it acquired <paybito.com> and launched its business prior to actual notice that Complainant had already begun offering similar services as early as October 20, 2017. That notice of first use did not come until Complainant’s filing of the SOU on March 7, 2018. Complainant offers no evidence of its reputation in the niche field to contradict Respondent’s rebuttal. The fact that it commenced its business three months earlier than Respondent launched its services is not sufficient to establish a reputation. See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (holding that “Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith”).
For these reasons, the Panel finds that the Complainant has failed to establish its burden under paragraph 4(a)(iii) of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <paybito.com> domain name REMAIN WITH Respondent.
Sandra J. Franklin, Antonina
Pakharenko-Anderson, and Gerald M. Levine (Chair)
Dated: December 28, 2020
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