Bill Me Later Inc. v.
Claim Number: FA0810001227347
PARTIES
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.
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.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
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 postmaster@bilmelater.com,
postmaster@billmelatermerchants.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.
RELIEF SOUGHT
Complainant requests that the Domain Names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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”.
B. Respondent
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.
FINDINGS
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.
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.
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
Inc. v.
DECISION
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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