Paymentus Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2207002005373
Complainant is Paymentus Corporation (“Complainant”), represented by Stephen M. Vaughn of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <paymantus.com> and <paymwntus.com>, registered with GoDaddy.com, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2022; the Forum received payment on July 22, 2022.
On July 25, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <paymantus.com> and <paymwntus.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2022 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@paymantus.com, postmaster@paymwntus.com. Also on July 29, 2022, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant provides electronic bill payment services. Complainant has rights in the PAYMENTUS trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 5,099,998, registered Dec. 13, 2016). The <paymantus.com> and <paymwntus.com> domain names are confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark with slight misspellings and added the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <paymantus.com> and <paymwntus.com> domains because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s PAYMENTUS trademark. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domains resolve to a parked webpages.
Respondent has registered and uses the <paymantus.com> and <paymwntus.com> domain names in bad faith because Respondent registered and uses the disputed domain names to create bad faith attraction for commercial gain and to perpetuate a phishing scheme. In addition, Respondent engages in typosquatting and used a privacy service to shield its identity. Lastly, Respondent had knowledge of Complainant’s rights in the PAYMENTUS trademark prior to registering the disputed domains.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registration:
No. 5,099,998 PAYMENTUS (word), registered on December 13, 2016 for services in class 36.
The disputed domain name <paymantus.com> was registered on April 6, 2022, and the disputed domain name <paymwntus.com> was registered on May 20, 2022.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the PAYMENTUS trademark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Here, Complainant provides evidence of its registration with the USPTO for the PAYMENTUS mark (e.g., 5,099,998, registered Dec. 13, 2016). Therefore, the Panel find that Complainant has rights in the PAYMENTUS trademark under Policy ¶ 4(a)(i).
Complainant argues that the <paymantus.com> and <paymwntus.com> domain names are confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark with slight misspellings and added the “.com” gTLD. Domain names which incorporate the entire trademark, even with slight misspellings, are usually considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Here, Respondent has incorporated the entire PAYMENTUS trademark, with a slight misspelling - the letter “e” in the trademark is replaced with the letter “w” in one domain and the letter “a” in the other - and added the “.com” gTLD. As discussed, these changes may not create a sufficient distinction between the disputed domain names and Complainant’s trademark, as the common Internet user rarely study all details when surfing, but more consider the overall impression. Therefore, the Panel may that Respondent’s domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent does not have rights or legitimate interests in the <paymantus.com> and <paymwntus.com> domain names because Respondent is not commonly known by the disputed domain names and is not associated with Complainant or authorized to use Complainant’s PAYMENTUS trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s trademark may demonstrate that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by <paymantus.com> and <paymwntus.com> domain names and no information suggests that Complainant authorized Respondent to use the PAYMENTUS trademark. Rather, the Registrar lists the registrant of the domain as “Carolina Rodrigues/Fundacion Comercio Electronico.” Therefore, the Panel find that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <paymantus.com> and <paymwntus.com> domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain name resolves to a parked page. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, the disputed domains’ resolving webpages display links to third-party websites which appear to offer similar/competing services as those offered by Complainant. Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has registered and uses the disputed domain names in bad faith because it registered the domain names to create bad faith attraction for commercial gain. Registration and use of a disputed domain name which is confusingly similar to a complainant’s trademark, and using that domain name to host parked, pay-per-click links is evidence of bad faith per Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Here, as already noted, Respondent’s disputed domain names are not sufficiently distinct from Complainant’s PAYMENTUS trademark. The related/competing parked pay-per-click links on the disputed domain names’ resolving websites are further and clear evidence that Respondent is attempting to lure confused consumers to its domain names. Therefore, the Panel find that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Second, Complainant argues that Respondent has registered and uses the disputed domains in bad faith because it registered the domain names to perpetuate a phishing scheme. Phishing is the practice of tricking consumers into revealing sensitive information under false pretenses and a registrant’s use of phishing is evidence of bad faith per Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant argues that Respondent is likely using the disputed domain names to phish for consumers’ financial information. Considering the facts and arguments provided by the Complainant, the Panel agrees and find that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Third, Complainant contends that Respondent registered the <paymantus.com> and <paymwntus.com> domains in bad faith because Respondent had knowledge of Complainant’s rights in the PAYMENTUS trademark prior to registering the disputed domain names. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel find that Respondent had actual knowledge of Complainant's trademark and rights given the use made of the domains and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Fourth, Complainant argues that Respondent has registered and uses the disputed domains in bad faith because Respondent used a privacy service to shield its identity which can be evidence of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). The Panel agrees with Complainant’s conclusion, and find that Respondent has registered and uses the disputed domain names in bad faith.
Lastly, Respondent has registered and uses the disputed domains in bad faith because it engages in typosquatting. Typosquatting, or capitalizing on slight misspellings between the disputed domain name and a trademark or a Complainant’s actual domain name, may be evidence of bad faith under Policy ¶ 4(a)(iii) See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, Respondent has changed the letter “e” in the PAYMENTUS trademark to the letters “a” and “w” in the <paymantus.com> and <paymwntus.com> domains, respectively, taking advantage of internet users who may seek information about the Complainant and its legitimate business. Therefore, the Panel find that Respondent registered and uses the disputed domains in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paymantus.com> and <paymwntus.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 25, 2022
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