Heartland Payment Systems, Inc. v. Redwood Capital
Claim Number: FA1403001547419
Complainant: Heartland Payment Systems, Inc. of Princeton, New Jersey, United States of America.
Complainant Representative: Orrick, Herrington & Sutcliffe LLP of Irvine, California, United States of America.
Respondent: Redwood Capital of San francisco, California, US.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registries: Donuts Inc.
Registrars: 101domain, 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 Examiner in this proceeding.
Douglas M. Isenberg, as Examiner.
Complainant submitted: March 7, 2014
Commencement: March 7, 2014
Default Date: March 24, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The URS is in its earliest stages: As of the date on which this decision has been drafted, only ten URS decisions have been published, including only one (by this Examiner) in which the Complaint was denied, Virgin Enterprises Limited v. lawrence fain, NAF Claim No. 1545807 (<branson.guru>). Accordingly, as this Examiner wrote in the <branson.guru> decision, the Examiner here has provided findings and discussion above and beyond that which he would expect in URS decisions, especially once these proceedings presumably become more popular.
Complainant has provided the following explanatory text, in toto, in its Complaint (subject to the 500-word limit specified in paragraph 1.2.7 of the URS):
Heartland Payment Systems, Inc. (“Heartland”) submits this complaint seeking suspension of the domain name <heartland.ventures> based on Heartland’s ownership of the well-known and nationally-registered HEARTLAND trademark, which Heartland also registered with the Trademark Clearinghouse.
Heartland is a Fortune 1000 company that is one of the largest payment processors in the United States, providing payment processing and merchant business solutions to more than 275,000 business and educational locations nationwide. Heartland processes more than 11 million transactions per day and over $80 billion worth of transactions per year. It has been using the trademark HEARTLAND in connection with payment processing and related services since at least as early as 1998, and it owns numerous U.S. trademark registrations for HEARTLAND, HEARTLAND PAYMENT SYSTEMS, and HEARTLAND-formative marks for those services. See, e.g., U.S. Trademark Reg. Nos. 2,742,163; 3,941,413; 4,074,537; 4,074,538. Heartland maintains a presence on the Internet and operates a web site at <heartlandpaymentsystems.com>. Heartland also registered its mark HEARTLAND with the Trademark Clearinghouse.
According to the relevant WHOIS record, on February 5, 2014, Krist Jake (“Registrant”) registered the domain name <heartland.ventures>. Although Registrant should have been notified of Heartland’s HEARTLAND mark under the Clearinghouse’s Trademark Claims Service, Registrant ignored the warning and proceeded to register <heartland.ventures>. The web site at <heartland.ventures> is a parked page that resolves to the registrar’s web site. There are no legitimate services being offered on the page separate from what is offered on the registrar’s page. Registrant operates a web site at <kristjake.com> in which he claims to have “registered a handful or two of dotventures domains and a number of dotguru’s. The dot-ventures names either mirror domains I have in dot-com or seem like good speculations.” See http://kristjake.com/domains-2/ (emphasis added). The site also says that Registrant “has for sale many premium domain names.” See http://kristjake.com/domains-2/
Suspension of <heartland.ventures> is appropriate because Heartland meets the requirements of Section 1.2.6 of the URS Rules. First, the <heartland.ventures> domain name is confusingly similar to Heartland’s registered HEARTLAND mark. Second, Registrant has no legitimate rights or interest in the domain name, as evidenced by the fact that it simply directs to the registrar’s site. Third, the domain name was registered and is being used with a bad faith intent to profit. See URS Rules 1.2.6.3(a). The domain name was registered on February 5, 2014, more than 15 years after the HEARTLAND marks were first used and began to gain global notoriety. Registrant also received notice of the HEARTLAND Trademark Clearinghouse notice yet proceeded with his registration in the face of that notice without offering any legitimate services on the site. See IBM Corp. v. Antipov, URS Claim No. FA1402001542313 (Feb. 12. 2014) (finding knowledge of complainant’s mark based in part on Trademark Clearinghouse notice). Registrant’s use of <heartland.ventures> as a parked page with notice of Heartland’s HEARTLAND mark, and his self-professed registration of domains in the new gTLD space because they “seem like good speculations,” demonstrate bad faith. Accordingly, suspension is appropriate.
Respondent has not submitted a response to the Complaint or otherwise participated in this proceeding.
Despite the Respondent’s inaction, “[a]ll Default cases proceed to Examination for review on the merits of the claim.” URS, para. 6.3. And, in all URS proceedings, “[t]he burden of proof shall be clear and convincing evidence.” URS, para. 8.2. Accordingly, the Complainant must establish, by clear and convincing evidence, each of the following three elements:
1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; and
2. that the Registrant has no legitimate right or interest to the domain name; and
3. that the domain was registered and is being used in bad faith.
URS, paras. 1.2.6 and 8.1.
In other words, a complainant’s failure to establish any one of the above three elements by clear and convincing evidence must result in a decision rejecting the complainant’s requested relief. “If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding…” URS, para. 8.6.
As the URS itself states: “The URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.” URS, para. 8.5.
The record makes clear that “the Complainant holds a valid national or regional registration and that [it] is in current use,” and that the registration is identical to the second-level portion of the disputed domain name, as required by paragraph 1.2.6.1 of the URS. Accordingly, Complainant has satisfied the first element of the URS.
Although the above is sufficient with respect to the first element of the URS, the Examiner notes that the word “heartland” is a “dictionary word” that appears unrelated to the HEARTLAND trademark; the Merriam-Webster online dictionary defines it as “a central area of land” (<http://www.merriam-webster.com/dictionary/heartland>, visited March 27, 2014). The Examiner also notes that “Heartland” is the name of a well-known television series that appears unrelated to the HEARTLAND trademark. The Examiner considers this relevant to both the second and third elements of the URS.
Further, the only use of the disputed domain name that has been provided by Complainant is what appears to be a generic parking page provided by the Registrar, which includes the text “Featuring the future site for: www.heartland.ventures” along with some technical details and small display advertisements for services unrelated to the HEARTLAND trademark (such as those bearing the text “SSL Security” and “Email Hosting”).
Taken together, these issues – that is, failure to establish in the record that the relevant trademark is exclusively or most commonly associated with Complainant plus the absence of any evidence that the domain name is currently being used in a manner that is associated with that trademark – do not convince this Examiner by clear and convincing evidence that the Registrant has no legitimate right or interest to the domain name or that the domain was registered and is being used in bad faith. The Examiner is further unconvinced that a registrant’s speculation in domain names is, without more, sufficient under the URS to establish bad faith.
As this Examiner stated in Virgin Enterprises Limited v. lawrence fain, NAF Claim No. 1545807 (<branson.guru>), the URS process is a narrow one – with a very high burden of proof – and is “without prejudice to the Complainant… proceed[ing] with an action in [a] court of competent jurisdiction or under the UDRP,” URS, para. 8.5, where the record may be more fully developed and the factual and legal arguments not constrained by, among other things, the 500-word limit for URS complaints.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent: <heartland.ventures>.
Douglas M. Isenberg, Examiner
Dated: March 27, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page