Izea, Inc. d/b/a Payperpost,
Inc. v. Gombos Atila
Claim Number: FA0908001278010
PARTIES
Complainant is Izea, Inc. d/b/a
Payperpost, Inc. (“Complainant”),
represented by David A. Wheeler, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <payingpost.com>, registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 5, 2009; the
National Arbitration Forum received a hard copy of the Complaint on August 6, 2009.
On August 6, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <payingpost.com> 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 August 13, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 2, 2009 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@payingpost.com by
e-mail.
A timely Response was received and determined to be complete on August 24, 2009.
On August 28, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Izea, Inc. d/b/a Payperpost, Inc. claims to be the world leader in
sponsored conversations. Through its SocialSpark brand and <payperpost.com>
website, Complainant connects bloggers with advertisers. Payperpost.com is a
blog marketing service designed to economically create buzz via blog posts.
Complainant is the holder of
Complainant argues that Respondent registered the domain name <payingpost.com> and has
intentionally attempted to attract, for a commercial gain, Internet users to a
website by diverting Internet users searching for Complainant’s services.
Complainant contends that Respondent's domain name is confusingly
similar to Complainant’s registered mark and operating name. Complainant
further contends that Respondent has no rights or legitimate interests in the
domain name. Complainant contends that Respondent registered and is using
the domain name in bad faith.
B. Respondent
Respondent contends i) that the contested domain name is substantially different from complainant’s trademark “PAYPERPOST”, ii) that complainant does not prove that respondent has no rights or legitimate interest in the domain name. However, Respondent agrees that the domain name was registered in bad faith, but blames the development team it hired to write the content of its website for this. Finally, Respondent asks for the domain name to be transferred to the Complainant, but asks (if possible) to keep the permanent redirection to the domain name blogadvertisingstore.com.
FINDINGS
1. Complainant is the holder of the following
trademark registration:
U.S. Reg. No. 3,425,224– PAYPERPOST for dissemination
of advertising for others via the internet in class 35 (U.S. CLS. 100, 101 and
102), registered May 13, 2008.
2. Complainant first used its trademark on December
1, 2005. The trademark was first used in commerce on June 1, 2006.
3. Respondent registered the domain name <payingpost.com> on October 27, 2008.
At that time Complainant had already registered the trademark “PAYPERPOST” in
the
4. Respondent uses the domain name for a blog
marketing service.
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.
The Panel finds that Complainant has sufficiently established rights in
the PAYPERPOST mark under Policy ¶ 4(a)(i) through its registration of the mark
held with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
3,425,224 issued May 13, 2008). See Miller Brewing
Complainant asserts that the <payingpost.com> domain name is confusingly similar to its PAYPERPOST mark because neither the substitution of the word “PER” of the mark with the suffix “ing” nor the addition of the generic top-level domain (“gTLD”) “.com” adequately distinguishes the disputed domain name from Complainant’s PAYPERPOST mark. The Panel agrees with Complainant, and finds that the <payingpost.com> domain name is confusingly similar to Complainant’s PAYPERPOST mark under Policy ¶ 4(a)(i). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.
It is established case law that
it is sufficient for the Complainant to make a prima facie showing that
Respondent has no right or legitimate interest in the Domain Name in order to
shift the burden of proof to the Respondent.
See Champion Innovations, Ltd. v. Udo Dussling (45FHH),
D2005-1094 (WIPO Dec. 16, 2005) (championinnovation.com); see also
Respondent is listed in the
WHOIS information as “Gombos Atila.” According to the Panel, this evidence does
not indicate a relationship with the terms of the disputed domain name.
Therefore, it finds that Respondent is
not commonly known by the <payingpost.com> domain name under Policy ¶ 4(c)(ii). See Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record).
According to the Panel, Complainant
has established that the <payingpost.com> domain name resolves to a website that
contains copied and mimicked portions of Complainant’s website. By doing so, Respondent is attempting to pass
itself off as Complainant. According to the Panel, such use of the disputed
domain name is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See MO
Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent
lacked rights and legitimate interests in the disputed domain name when the
respondent copied the complainant’s websites in their entirety at the disputed
domain names); see also Kmart of
Complainant argues that Respondent has engaged in typosquatting. Typosquatting is generally defined as registering a domain name that capitalizes on the common typographical errors of Internet users when spelling a complainant’s mark. However the Panel is of the opinion that the domain name <payingpost.com> is confusingly similar to Complainant’s PAYPERPOST mark, the similarity does not lie in a typographical error according to the Panel and respondent did not engage in typosquatting.
Complainant asserts that Respondent by copying Complainant’s content and placing it on the website resolving from the <payingpost.com> domain name is disrupting Complainant’s business. The Panel agrees and finds that such a disruption constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant contends that Respondent’s website resolving from the <payingpost.com> domain name that contains Complainant’s website content constitutes bad faith registration and use, giving the impression that Complainant is affiliated with the commercial website resolving from the disputed domain name. The Panel finds that Respondent’s conduct constitutes an attempt to pass itself off as Complainant. The Panel finds that such an attempt constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Respondent has not
made any arguments under this section of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <payingpost.com> domain name be TRANSFERRED
from Respondent to Complainant.
Flip Petillion, Panelist
Dated: 25 September 2009
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