JetPay, LLC v. JetyPayments
Claim Number: FA0911001294887
Complainant is JetPay, LLC (“Complainant”), represented by Thomas
A. Kulik, of Scheff & Stone, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jetypay.com>, registered with Godaddy.com, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2009.
On November 17, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jetypay.com> domain name is registered with Godaddy.com, Inc. and that 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 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 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@jetypay.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jetypay.com> domain name is confusingly similar to Complainant’s JETPAY mark.
2. Respondent does not have any rights or legitimate interests in the <jetypay.com> domain name.
3. Respondent registered and used the <jetypay.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, JetPay, LLC,
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the JETPAY mark (Reg. No. 3,672,449 issued August 25,
2009). Complainant has operated the
<jetpay.com> domain name since early June of 2000 in connection with its
offering of credit card and check authorization processing services.
Respondent, JetyPayments, registered the disputed domain name on December 7, 2007. The disputed domain name resolves to a website that sells products and services similar to those of Complainant.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 Complainant has established rights in the
JETPAY mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with
the USPTO (Reg. No. 3,672,449 issued August 25, 2009). See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding
that it is irrelevant whether the complainant has registered its trademark in
the country of the respondent’s residence).
Furthermore, Complainant
asserts it has common law rights in its JETPAY mark through its continous use
since 2000 and consequent secondary meaning.
Complainant has operated the <jetpay.com> domain name in
connection with its offering of credit card and check authorization processing
services. Complainant has spent money
advertising and promoting the goods and services sold under the JETPAY
mark. The Panel finds Complainant has
provided sufficient evidence of its continuous use and thus acquired secondary
meaning in the JETPAY mark to establish common law rights in the mark under
Policy ¶ 4(a)(i) dating back to 2000. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July
18, 2006) (finding that the complainant need not own a valid trademark
registration for the ZEE CINEMA mark in order to demonstrate its rights in the
mark under Policy ¶ 4(a)(i)); see also
Jerry
Damson, Inc. v.
Complainant argues that Respondent’s <jetypay.com> domain name is confusingly similar to Complainant’s
JETPAY mark pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed domain name merely adds an additional letter “y”
to Complainant’s mark and adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the
addition of a single letter creates a confusing similarity between the disputed
domain name and Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004)
(“The mere addition of a single letter
to the complainant’s mark does not remove the respondent’s domain names from
the realm of confusing similarity in relation to the complainant’s mark
pursuant to Policy ¶ 4(a)(i).”); see also
Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
the complainant’s marks). In addition,
the Panel finds that the addition of a gTLD is irrelevant in distinguishing a
disputed domain name from a registered mark.
See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation
of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis);
see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is neither commonly known by the disputed domain name, nor licensed to register domain names using the JETPAY mark. Respondent’s WHOIS information identifies Respondent as “JetyPayments.” Although Respondent appears to be commonly known by the disputed domain name from the WHOIS information, the Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent’s disputed domain name was registered on December
7, 2007 and resolves to a website that sells
products and services similar to those of Complainant. The Panel finds that Respondent’s use of the
disputed domain name is neither a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin,
FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus
R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a
confusingly similar domain name to advertise real estate services which
competed with the complainant’s business did not constitute 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 also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration of the <jetypay.com> domain name to link Internet users to a website offering products and services similar to those of Complainant constitutes a disruption of Complainant’s business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Respondent is using the disputed domain name to sell products and services that compete with those offered under Complainant’s JETPAY mark. The Panel finds Respondent’s use of the confusingly similar disputed domain name to intentionally attract Internet users and profit by creating a strong likelihood of confusion with Complainant’s JETPAY mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jetypay.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 6, 2010
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