Internet Billing Company LLC v. Resource Marketing
Claim Number: FA0204000112553
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.
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.
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.
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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