Pushpay IP Limited v. Travis Dulaney / Wildcard Consulting Inc.
Claim Number: FA1709001749300
Complainant is Pushpay IP Limited (“Complainant”), represented by David L. May of Nixon Peabody LLP, District of Columbia, USA. Respondent is Travis Dulaney / Wildcard Consulting Inc. (“Respondent”), represented by James Keys of The Keys Law Firm, PLLC, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pushpayments.com>, registered with GoDaddy.com, LLC.
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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2017; the Forum received payment on September 15, 2017.
On September 18, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pushpayments.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2017 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@pushpayments.com. Also on September 22, 2017, 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 October 16, 2017.
On October 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bart Van Besien as Panelist.
On October 23, 2017, an Additional Submission was received from the Complainant. On 30 October 2017, an Additional Submission was received from the Respondent. Both Additional Submissions were received in a timely manner.
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.
A. Complainant
Complainant, Pushpay IP Limited, uses its PUSHPAY mark(s) on or in connection with financial affairs, card operated financial services, financial payment services, financial transaction services, online payment services, computerized financial services, and payment processing related services since at least 2013. Complainant has memorialized its rights in or to the PUSHPAY mark(s) through registration with the European Union Office for Harmonization in the Internal Market (“OHIM”), currently the European Union Intellectual Property Office (“EUIPO”) (Reg. No. 012819447, registered Oct. 27, 2014), and with the trademark authorities of a number of other countries. See Compl., Attached Ex. C. Respondent’s domain name <pushpayments.com> (registered Sept. 24, 2015) is confusingly similar to the PUSHPAY marks of Complainant because it merely adds the suffix “ments” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent has no rights or legitimate interests in or to <pushpayments.com>. Respondent is not commonly known by the domain name, and has not been authorized to use the PUSHPAY mark(s). Further, Respondent offers products and services in the field of payment processing in direct competition with Complainant and its services. See Compl., Attached Ex. L. Such use does not amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <pushpayments.com> in bad faith. Respondent has used the domain name in connection with payment processing services which is confusingly similar to the services offered by Complainant and serves as a disruption of Complainant’s business under Policy ¶ 4(b)(iii). This use also confuses Internet users as to source, sponsorship, affiliation, or endorsement of the website for Respondent’s commercial gain and therefore is proscribed by Policy ¶ 4(b)(iv). Lastly, Respondent registered and used the domain name with actual or constructive knowledge—which is bad faith when looking through a nonexclusive lens of Policy ¶ 4(a)(iii).
B. Respondent
Complainant does not have rights in the term “PUSH PAYMENTS” and as such the domain name is not confusingly similar to a mark in which Complainant has rights. The domain name is longer and contains more syllables than Complainant’s PUSHPAY mark. Moreover, the phrase “push payments” is generic as determined by the United States Patent and Trademark Office (“USPTO”). See Resp., Attached Annex 1, pp.3–4 (USPTO office action dated May 11, 2017) and Attached Annex 6, pp.3–4 (USPTO office action dated April 19, 2017).
Complainant fails to disprove Respondent’s rights or legitimate interests. Respondent has developed and is introducing an improved real-time payment processing service as an instantaneous transfer alternative to the traditional Automated Clearing House (“ACH”) or wire transfer payment system by and through the terms (“PUSH PAYMENTS”) of the domain name. See Resp., Attached Annex 2 (press release which predates notice of this dispute). Respondent’s business operations are precisely the sort of bona fide offering of goods or services contemplated by the Policy.
Respondent did not register or use the domain name in bad faith. Respondent uses a domain name with a descriptive phrase that describes the services Respondent offers. The domain name promotes Respondent’s business and is not intended as a disruption, nor is it intended to confuse Internet users under Policy ¶¶ 4(b)(iii) or (iv). See Resp., Attached Annex 7 (screenshots of Respondent’s website); see also Resp., Attached Annex 8 (web profile of Respondent’s business); see also Resp., Attached Annex 9 (<banknews.com> announcement of a product line offered by Respondent).
Complainant, in bringing this dispute, is engaged in reverse domain name hijacking.
C. Additional Submissions
In its Additional Submission, Complainant contends, with regard to the first prong of the Policy, that the disputed domain name need not be identical to its trademarks; that genericity is irrelevant to a finding of confusing similarity; that the disputed domain name is not sufficiently distinguishable from Complainant’s PUSHPAY marks; and that the disputed domain name is similar in sound, appearance and meaning to Complainant’s PUSHPAY marks.
With regard to the second prong of the Policy, Complainant argues in its Additional Submission that Complainant has in fact made a prima facie case showing that Respondent does not have rights or legitimate interests in the disputed domain name; and that Respondent has not met its burden of proof to show that it has rights or legitimate interests in the disputed domain name.
Finally, as regards the third prong of the Policy, Complainant contends that it has provided sufficient evidence of bad faith; that Respondent had actual knowledge of the PUSHPAY marks; that Respondent did not sufficiently prove that the disputed domain name is generic or descriptive; and that Respondent has made false or misleading statements before the USPTO and the Forum.
Respondent, in its own Additional Submission, brings up various arguments that the disputed domain name is not identical or confusingly similar to Complainant’s trademarks.
With regard to the second prong of the Policy, Respondent argues that it used and has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services prior to notice of the dispute. Respondent refers to a press release, dated five days prior to the first demand letter sent by Complainant (See Annex 2 of the Response). Respondent further elaborates on its argument that the terms “PUSH PAYMENTS” are descriptive for the services offered by Respondent.
Finally, as regards the third prong of the Policy, Respondent claims that there is no evidence of bad faith registration or bad faith use by Respondent. Respondent reiterates that the terms “PUSH PAYMENTS” are descriptive or generic for the credit transfer style payment services offered by Respondent.
Respondent registered the <pushpayments.com> domain name on September 24, 2015.
Complainant is the registered owner of various trademarks PUSHPAY, JUST PUSH PAY, and PUSH TO PAY. Several of these trademarks, including the EUIPO word trademark PUSHPAY, predate the registration date of the disputed domain name. Respondent does not claim that it holds trademark rights connected with the disputed domain name. Respondent tried to register the trademarks PUSH PAYMENTS and PUSH PAY PERFECT with the USPTO, but these applications did not result in successful trademark registrations.
Respondent filed an opposition with the USPTO against Complainant’s trademark application PUSHPAY. There is also a legal procedure pending before the US District Court of the Southern District of Florida whereby Complainant claims trademark infringement by Respondent and whereby Respondent asserted counterclaims for invalidity and unenforceability of Complainant’s trademark rights (with regard to Complainant’s offering of credit transfer payments under PUSHPAY, PUSH TO PAY, JUST PUST PAY, and JUST PUSH PAY (stylized)), and cancellation of its trademark registrations
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 claims it has rights in or to the PUSHPAY mark through registration as a word trademark with the OHIM (currently the EUIPO) (Reg. No. 012819447, registered Oct. 27, 2014) and other trademark offices. See Compl., Attached Ex. C. Registrations with the OHIM or EUIPO confer rights under Policy ¶ 4(a)(i). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (“Registration with the OHIM is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i).”). Given the trademark registrations for PUSHPAY provided by the Complainant, the Panel finds that the Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <pushpayments.com> (registered Sept. 24, 2015) is confusingly similar to the PUSHPAY mark because it merely adds the suffix “ments” and the gTLD “.com” to the fully incorporated mark. Adding a suffix to a mark may not distinguish a mark under the Policy. Cf. IMT Services Corporation v. Joel McLaughlin, FA 1283676 (Forum Oct. 28, 2009) (finding confusing similarity where, “The <insuringmytrip.com> domain name differs from Complainant’s INSURE MY TRIP mark by changing the tense of the first word to a present participle, omitting the spaces between the words, and adding the generic top-level domain (“gTLD”) “.com.”). The Panel agrees that Respondent, by merely adding the suffix “ments” and the gTLD “.com” to the Complainant’s PUSHPAY mark(s), has crafted a confusingly similar domain name under Policy ¶ 4(a)(i).
While Respondent contends that <pushpayments.com> is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
For the reasons mentioned above, the Panel decides that the disputed domain name is confusingly similar to Complainant’s registered trademark rights under Policy ¶ 4(a)(i).
Respondent asserts that Complainant fails to disprove Respondent’s rights or legitimate interests. Respondent claims it has developed and is introducing an improved real-time payment processing service as an instantaneous transfer alternative to the traditional ACH or wire transfer payment system by and through the terms (“PUSH PAYMENTS”) of the domain name. See Resp., Attached Annex 2 (press release which predates notice of this dispute). Respondent argues that the terms “PUSH PAYMENTS” are descriptive for the services that it is offering. Respondent urges that its business operations are precisely the sort of bona fide offering of goods or services contemplated by the Policy. Where a domain name’s use directly corresponds with the terms comprising the domain name, rights and legitimate interests have flowed therefrom. See Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER, FA 1689461 (Forum Oct. 10, 2016) (“The records of the case show that the domain name acquired by Respondent is descriptive of the services it has offered online since the domain name registration date… Therefore, the Panel agrees that the circumstances of the instant case indicate that Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy ¶ 4(c)(i).”).
Respondent provided screenshots of Respondent’s website (see Resp., Attached Annex 7), a web profile of Respondent’s business (see Resp., Attached Annex 8), and a <banknews.com> announcement of a product line offered by Respondent (see Resp., Attached Annex 9). Accordingly, the Panel agrees that Respondent has supplied satisfactory support for its purported bona fide offering of goods or services under Policy ¶ 4(c)(i).
Respondent also argues that the terms “PUSH PAYMENTS” of the disputed domain name <pushpayments.com> are common and generic/descriptive for the services offered. Respondent argues that therefore, Complainant does not have an exclusive monopoly on the terms “PUSH PAYMENTS” on the Internet. The Panel notes that the Respondent has submitted evidence that the terms “PUSH PAYMENTS” are indeed generic for the services offered by the Respondent. The Panel refers in particular to Annex 1 to the Response, an action of the USPTO dated 11 May 2017 with regard to Respondent’s trademark application “PUSH PAYMENTS”. In this action, the USPTO refused registration of this application on the Supplemental Register because the applied-for mark “PUSH PAYMENTS” was generic and thus incapable of distinguishing the Respondent’s services. The USPTO mentioned in particular: “In this case, the application identifies the services as ‘Payment processing services in the field of credit transfer payments’, which adequately defines the genus at issue”.
Given the fact that the phrase “PUSH PAYMENTS” is considered, at least by the USPTO, as generic for the services offered by the Respondent, the Panel finds that Complainant has not offered sufficient evidence that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Therefore, the Panel decides that Complainant has not provided sufficient evidence that Respondent lacks rights or legitimate interests in respect of the disputed domain name under Policy ¶ 4(a)(ii).
The Panel further finds that Respondent did not register or use <pushpayments.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See also Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent argues that it did not register or use the domain name in bad faith. Respondent argues that it uses a domain name with a descriptive phrase that describes the services Respondent offers. Respondent contends the domain name promotes Respondent’s business and is not intended as a disruption, nor is it intended to confuse Internet users under Policy ¶¶ 4(b)(iii) or (iv). See Resp., Attached Annex 7 (screenshots of Respondent’s website); see also Resp., Attached Annex 8 (web profile of Respondent’s business); see also Resp., Attached Annex 9 (<banknews.com> announcement of a product line offered by Respondent). Competing use, when legitimate, is a bar to findings of bad faith. See Election Systems & Software, Inc. v. Stewart, FA 805224 (Forum Nov. 14, 2006) (Where the respondent registered the disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)); see also Mule Lighting, Inc. v. CPA, FA 95558 (Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business). From the evidence provided by the parties, the Panel agrees that Respondent’s use began before the initiation of this dispute.
Respondent contends that <pushpayments.com> is comprised entirely of common terms that have many meanings apart from use in Complainant’s PUSHPAY mark(s). Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of descriptive terms, and that the domain name currently in dispute contains such descriptive terms for the services offered by the Respondent. As a result, the Panel also finds that Respondent did not register or use <pushpayments.com> in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
REVERSE DOMAIN NAME HIJACKING
Even though the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent). The Panel finds that there is no evidence that Complainant has brought this domain name dispute in bad faith. The Panel refers in particular to the fact that Complainant prevailed on the first prong of the Policy. Therefore, the Panel finds that Complainant has not engaged in reverse domain name hijacking. See also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pushpayments.com> domain name REMAIN WITH Respondent.
Bart Van Besien, Panelist
Dated: November 2, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page