TelPay Inc. v. Metrics Media
Claim Number: FA0710001100419
PARTIES
Complainant is TelPay Inc. (“Complainant”), represented by Alan
Beaton,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <telpay.mobi>, registered with GoDaddy.com,
Inc.
PANEL
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.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 22, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 26, 2007.
On October 22, 2007, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <telpay.mobi> domain name is
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On November 6, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 26, 2007 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@telpay.mobi by e-mail.
A Response was received and determined to be complete on November 27, 2007. However, the Response was late pursuant to
ICANN Rule 5.
On December 9, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant asserts that:
1. The domain name <telpay.mobi> registered by the Respondent is identical to Complainant’s
registered trademarks, and other of its domain names, such as, <telpay.ca>,
<telpay.com>, etc.
2. The Respondent should be considered as
having no rights or legitimate interests in the domain name because:
(a)
It has
offered it for sale to Complainant;
(b)
There
is no indication that it is used in support of a legitimate business;
(c)
It has
been used to provide a link to other bill payment services, some of which are
competitors of Complainant;
(d)
Complainant
provides a sensitive financial service which requires it to ensure that no other
party attempts to imitate it.
3. The domain name should be considered
registered and used in bad faith because:
(a)
It was
offered for sale to Complainant;
(b)
It was
registered when the domain became available even though there was no known
reason why it should have been requested by the Respondent;
(c)
It has
recently had a page of links to other businesses that are similar to Complainant,
also being financial services providers, in an apparent effort to make it
appear to have a use. Some of those
links would never be made by Complainant and could be harmful to Complainant
and the other Party.
B. Respondent
Respondent contends that:
1. The domain name is not
confusingly similar:
(a) as
applied to Respondent’s services,
(b) The words “TEL” and
PAY” of which the domain is comprised are two generic and commonly used words
or abbreviations, and means things other than the Complainant’s trademark,
(c) Various third parties
own domain names consisting of the words “TEL” and “PAY,”
(d) Complainant has not
established that it had rights in the trademark “TELPAY” standing alone, its
marks being design marks and containing a disclaimer of the words “TEL” and “PAY“
apart from the marks as a whole.
2. The Respondent has rights and
legitimate interests in the domain because:
(a) It was not registered
with the intention of selling it to the Complainant,
it was the Complainant who first contacted Respondent for the purpose of
purchasing the domain,
(b) While waiting for the
intend website to be developed and come online, the domain was resolved to a
generic search engine containing links to various other websites offering for
sale, or otherwise related to, various categories of products and services with
the resulting web page being automatically
optimized to provide contextually related advertising and other information and
thus any results are not due to the actions of Respondent.
3. The Respondent did not register
and is not using the domain in bad faith because:
(a) Registering and holding
a domain name for future development in regards to an existing business or a
project in development does not in itself constitute bad faith, but rather
demonstrates the reality of operating a business in today’s e-commerce
environment.
(b) That Respondent
register the domain for, and is developing a business called “Mobile Telephone
Payment Systems” with which customers can pay their mobile telephone bill, and
purchase prepaid mobile phones and phone cards, relative to which the public
would not in any way be confused, deceived or call to mind an association
between the business outlined for the domain name <telpay.mobi> and the Complainant’s trademarks.
(c) Complainant’s trademark
is not well-known, except maybe in Canada, and the Complainant did not provide
any documents showing the famous character of the trademark “TEL-PAY,” even in
Canada and the domain <telpay.mobi>
was selected with no knowledge of the Complainant or its activity, and the
Complainant has failed to provide proof to the contrary.
FINDINGS
The domain <telpay.mobi> is composed of generic terms in use in the same
combination by various parties, and Complainant has failed to establish a
reasonable likelihood that Respondent had any knowledge of its trademarks at
the time that the domain was registered. Complainant has also failed to establish that
the domain was registered for the purpose of resale and has provided no
evidence demonstrating a pattern of such activity on the part of Respondent.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 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.
Since it has been found that the domain was
not registered in bad faith, this element need not be addressed.
Since it has been found that the domain was
not registered in bad faith, this element need not be addressed.
Respondent contends that it
registered the disputed domain name for a client with the intention of
establishing a mobile telephone services website, and that it was not aware of
any rights that Complainant may have in the TELPAY mark. The Panel finds that Respondent has not
registered or used the <telpay.mobi>
domain name in bad faith since it finds that Complainant has not established
that Respondent has violated any of the factors listed in Policy ¶ 4(b) or
engaged in any other conduct that would constitute bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See
Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916
(WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to
sell the domain name for profit, has not engaged in a pattern of conduct
depriving others of the ability to obtain domain names corresponding to their
trademarks, is not a competitor of the complainant seeking to disrupt the
complainant's business, and is not using the domain name to divert Internet
users for commercial gain, lack of bona fide use on its own is
insufficient to establish bad faith); see also Starwood Hotels & Resorts
Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9,
2005) (finding that the complainant failed to establish that respondent
registered and used the disputed domain name in bad faith because mere
assertions of bad faith are insufficient for a complainant to establish Policy
¶ 4(a)(iii)).
Moreover, Respondent contends that
the <telpay.mobi> domain name
is comprised entirely of common terms that have many meanings apart from use in
Complainant’s TELPAY mark and are in use in domain names owned by various third
parties. Given that fact that
Respondent’s client, the real party in interest here, is located in Guyana and
Complainant has provided no evidence to indicate that its marks are known
outside of Canada, the Panel finds the fact that the <telpay.mobi> domain name is comprised entirely of common terms
and are in use in domain names owned by various third parties to indicate that
Respondent did not register and use the <telpay.mobi> domain name in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb.
Forum July 9, 2004) (holding that the respondent’s registration and use of the
<target.org> domain name was not in bad faith because the complainant’s
TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA
192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was
using the <highlife.com> domain name, a generic phrase, in connection
with a search engine, the respondent did not register and was not using the
disputed domain name in bad faith).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <telpay.mobi> domain name be RETAINED
by Respondent.
David S. Safran, Panelist
Dated: December 20, 2007
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