NETBILLING, Inc., v. NETBILLINGS INTERNET PAYMENT PROCESSING / NETBILLINGS.COM
Claim Number: FA1507001631022
Complainant is NETBILLING, Inc., (“Complainant”), represented by Mark B. Mizrahi of Wolf, Rifkin, Shapiro, Schulman & Rabkin, LLP, California, USA. Respondent is NETBILLINGS INTERNET PAYMENT PROCESSING / NETBILLINGS.COM (“Respondent”), Bulgaria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netbillings.com>, registered with eNom, 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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2015; the Forum received payment on July 28, 2015.
On July 29, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <netbillings.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@netbillings.com. Also on July 30, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 13, 2015.
On August 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant owns the NETBILLING mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,300,054, first used in commerce Jan. 1, 1998, filed Nov. 28, 2011, registered March 12, 2013). Complainant offers payment processing services, namely, credit card, debit card, and check transaction processing. The <netbillings.com> domain name is confusingly similar to the NETBILLING mark. The disputed domain name contains Complainant’s mark in its entirety, simply adds the letter “s,” and affixes the generic top-level domain (“gTLD”) “.com” to the domain name.
Netbilling, Inc., was one of the early entries into the on-line payment processing field, first providing such services to customers in 1998. Now, Netbilling has customers throughout the world, including, without limitation throughout the United States, in numerous EU-member countries, in Canada, and in many countries throughout the Far East. From its inception in 1998, it has been using the Netbilling service marks in connection with its payment processing services and has advertised its services in connection with its trademarks on its website and through various marketing pieces, business cards, letterhead, and other means customary to the trade.
In addition, Complainant owns the domain name <Netbilling.com> which was created on July 7, 1998. This domain operates and maintains Complainant's website; provides consumers with information regarding Complainant's products and services; and, provides a means for merchants to sign-up and access information.
Respondent does not possess rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not indicate that Respondent is or ever was commonly known by the disputed domain name. Further, Complainant has never granted Respondent permission to use the NETBILLING trademark. Respondent’s lack of rights or legitimate interests in the <netbillings.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is using the <netbillings.com> domain name to resolve to a website that offers credit card processing solutions to worldwide merchants – services that directly compete with Complainant’s services.
Respondent has engaged in bad faith registration and use of the <netbillings.com> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial benefit, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
Respondent’s Contentions
Respondent is in the middle of developing its business, and it will be a huge loss for Respondent if the domain name is transferred. Respondent has spent significant amounts of money promoting its business under the <netbillings.com> domain name. Respondent has no bad intentions by using the disputed domain name. Respondent is willing to place a disclaimer on its website to clear any customer confusion.
1 - The disputed domain name is identical and/or confusingly similar to a trademark or service mark in which Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name was registered and is being used in bad faith.
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."
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.
Complainant states that it owns the NETBILLING mark through its registration with the USPTO (e.g., Reg. No. 4,300,054, first used in commerce Jan. 1, 1998, filed Nov. 28, 2011, registered March 12, 2013). Complainant also owns the domain name <Netbilling.com>, created on July 7, 1998. Complainant contends that it offers payment processing services, namely, credit card, debit card, and check transaction processing.
The Panel finds that Respondent registered the <netbillings.com> domain name on August 2, 2003, which predates Complainant’s NETBILLING trademark, however it does not predate Complainant's registration of the domain name <Netbilling.com>. When a disputed domain name predates a registration and filing date of a trademark, Complainant may establish common law rights through evidence of prior use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). The Panel finds that Complainant has provided evidence of prior use dating back to 1998. The Panel finds that Complainant has established sufficient evidence of common law rights.
Complainant argues that the <netbillings.com> domain name is confusingly similar to the NETBILLING mark. The domain name contains Complainant’s mark in its entirety, simply adds the letter “s,” and affixes the gTLD “.com” to the domain name. Prior panels have found that simply adding a single character to an otherwise incorporated mark does nothing to distinguish the disputed domain name from the complainant’s registered trademark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Further, past panels have agreed that the addition of a gTLD does not serve to adequately distinguish the disputed domain name from the 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). This Panel determines that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). This panel finds that Complainant has made a prima facia case that Respondent lacks rights and legitimate interests in the disputed domain name.
In arguing lack of rights or legitimate interests, Complainant insists that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not indicate that Respondent is or ever was commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name refers to “NETBILLINGS INTERNET PAYMENT PROCESSING / NETBILLINGS.COM” as the registrant of record. Further, Complainant claims that it has never granted Respondent permission to use the NETBILLING trademark. The Panel sees that the WHOIS information for the disputed domain name does indicate that Respondent was known by the disputed domain name at the time of registration; however, past panels have found that a respondent does not have rights or legitimate interests in a disputed domain name despite the WHOIS information where there is other evidence to suggest that the respondent is not commonly known by the disputed domain name. See Skyline Displays, Inc. v. Hangzhou Skyi Display Equip. Co., FA 187706 (Nat. Arb. Forum Oct. 14, 2003) (“Despite the fact that Respondent lists itself as Hangzhou Skyi Display Equipment Co., Ltd. in its WHOIS contact information, there is no evidence presented to the Panel showing that Respondent is commonly known by the <skyidisplay.com> domain name prior to registering the domain name.”). The Panel finds that Respondent was not actually known by the <netbillings.com> domain name prior to registering the disputed domain name and therefore, Respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s lack of rights or legitimate interests in the <netbillings.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent is using the <netbillings.com> domain name to resolve to a website that offers credit card processing solutions to worldwide merchants – services that directly compete with Complainant’s services. Complainant claims that Respondent uses the disputed domain name to confuse and divert Internet users seeking Complainant’s website for Respondent’s commercial benefit. Prior panels have found a lack of rights or legitimate interests where a respondent diverts Internet users to a confusingly similar domain name for a respondent’s financial gain. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel finds that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) or (iii).
According to Complainant, Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant contends that the disputed domain name directs Internet users to a site that offers services in direct competition with those offered under Complainant’s mark. Complainant asserts, and past panels have agreed, that such behaviors harm Complainant’s business and constitute bad faith registration under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion). Therefore, this Panel finds bad faith registration under Policy ¶ 4(b)(iii).
Further, Complainant alleges that Respondent intentionally attracts, for commercial benefit, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Respondent’s disputed domain name offers credit card services that directly compete with Complainant’s services. Prior panels have found bad faith use where a respondent’s site confuses consumers as to the source, sponsorship, affiliation or endorsement of respondent’s website. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). This Panel agrees that Respondent’s use demonstrates that Respondent seeks commercial gain through the use of a confusingly similar domain name, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netbillings.com> domain name TRANSFERRED from Respondent to Complainant.
Daniel B, Banks, Jr., Panelist
Dated: August 23, 2015
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