Bill Me Later Inc. v.
Claim Number: FA0810001227347
Complainant is Bill Me Later Inc. (“Complainant”), represented by Nathan
J. Prepelka, of The Webb Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bilmelater.com> and <billmelatermerchants.com> (hereafter the “Domain Names”, registered with Compana, 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.
Christopher Gibson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2008.
On October 3, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <bilmelater.com> and <billmelatermerchants.com> Domain Names are registered with Compana, LLC and that the Respondent is the current registrant of the names. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 October 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 4, 2008 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 firstname.lastname@example.org, email@example.com by e-mail.
A timely Response was received and determined to be complete on November 4, 2008.
On November 12, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
Complainant’s contentions are summarized in this section. Complainant asserts rights in its BILL ME
LATER trademark (Reg. No. 2,583,715 issued June 18, 2002), which was registered
with the United States Patent and Trademark Office (“USPTO”) and other
governmental trademark authorities worldwide.
Complainant has used the BILL ME LATER word mark continuously since April
1, 2001 and its trademark registrations are now incontestable under
Complainant asserts that the <bilmelater.com> and <billmelatermerchants.com> Domain Names are confusingly similar to Complainant’s marks, in that the Domain Names include Complainant’s mark while omitting a letter from the mark (i.e. “l” from “bill” which can considered a form of typosquatting), or adding the generic term “merchants.”
Complainant asserts the Respondent does not have any rights or legitimate interests in the Domain Names. Complainant argues that Respondent was not and is not commonly known by either of the Domain Names. The WHOIS information lists the registrant as “Texas International Property Associates- NA NA.” Moreover, Complainant claims that the Domain Names resolve to websites (link farms) that feature third-party advertisements, some of which compete with Complainant’s services provided under its marks. Complainant also contends that Respondent materially benefits from this endeavor through the receipt of “click-through” referral fees.
Complainant contends that the Domain Names were registered and are being used in bad faith. Complainant maintains that Respondent has actual or constructive knowledge of the Complainant’s marks, and that Respondent’s use of the marks in the confusingly similar Domain Names was intentionally designed to garner commercial gain through a likelihood of confusion as to Complainant’s source or endorsement of the Domain Names. Complainant asserts that Respondent is a well-known cybersquatter that has exhibited a pattern of registering domain names that are in conflict with trademarks owned by third-parties, particularly (as in this case) for use in “link farms”.
Respondent has agreed to the relief requested by the Complainant and specifies that it will, upon order of the Panel, transfer the Domain Names to the Complainant. Respondent states that this is not an admission to the three elements of 4(a) of the Policy, but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
Complainant has used its well-known trademark, BILL ME LATER, in connection with the provision of credit services (i.e., providing revolving credit account and payment services to many thousands of consumers) and owns a valid USPTO trademark registration for its mark (and certain registration in other countries).
Respondent is the owner of the Domain Names and consents that they be transferred to the Complainant.
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.
Complainant has established rights in its well-known
trademark BILL ME LATER, which the Respondent does not contest. The Respondent does not admit or contest the
Complainant’s assertions that Respondent has no rights or legitimate interests
in the Domain Names and that they were registered and being used in bad faith. Instead, Respondent has agreed to an immediate
transfer of the Domain Names to Complainant. As a result, there is no
need for the Panel, in rendering its decision, to engage in a full analysis to
determine compliance with all of the elements required under the Policy.
Thus, in the interest of judicial economy, the Panel concludes that the Domain Names
should be transferred. See Cartoon Network LP, LLLP
v. Morgan, D2005-1132 (WIPO Jan. 5, 2006); see also Citigroup
Respondent has consented that the Domain Names <bilmelater.com> and <billmelatermerchants.com> be transferred to Complainant.
Accordingly, it is Ordered that the <bilmelater.com> and <billmelatermerchants.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: November 26, 2008
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