Helcim Inc. v. Helcim Payments / Jane Murphy
Claim Number: FA1812001821545
Complainant is Helcim Inc. (“Complainant”), Alberta. Respondent is Helcim Payments / Jane Murphy (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <helcimpayments.com>, registered with NameSilo, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2018; the Forum received payment on December 17, 2018.
On December 18, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <helcimpayments.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2019 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@helcimpayments.com. Also on December 21, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
1. Complainant is in the business of providing financial and payment processing services (including credit/debit card processing and associated hardware) to businesses, as well as web hosting and other online services. Complainant has rights in the HELCIM ONLINE TRANSACTION SOLUTIONS mark through its registration of the mark with the Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA750760, registered October 21, 2009). Complainant also has common law rights in the HELCIM mark. Respondent’s <helcimpayments.com>[i] domain name is identical or confusingly similar to Complainant’s marks as it merely adds the descriptive term “payments.”
2. Respondent has no rights or legitimate interests in the <helcimpayments.com> domain name. Respondent is not commonly known by the domain name, has no trademark rights in the HELCIM mark, and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent simply redirects users to Complainant’s own website.
3. Respondent registered and uses the <helcimpayments.com> domain name in bad faith. Respondent uses the domain name to redirect users to Complainant’s own website. Further, Respondent is capable of leveraging phishing attacks against Complainant’s vulnerable customers.
4. Additionally, given Respondent’s use of the domain name to redirect users to Complainant’s website, Respondent clearly had knowledge of Complainant’s rights in the HELCIM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the HELCIM mark. Respondent’s domain name is confusingly similar to Complainant’s HELCIM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <helcimpayments.com> domain name and that Respondent registered and uses the domain name 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.
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(f), 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 (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.”).
Complainant has rights in the HELCIM ONLINE TRANSACTION SOLUTIONS mark through its registration of the mark with the CIPO (e.g. Reg. No. TMA750760, registered October 21, 2009). Registration of a mark with the CIPO confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017). Accordingly, Complainant has established rights in the HELCIM ONLINE TRANSACTION SOLUTIONS mark for the purposes of Policy ¶ 4(a)(i).
Complainant also holds common law rights in the HELCIM mark. To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant has provided evidence it has spent considerable financial and other resources building a strong brand through advertising on various platforms. Complainant also operates the vast majority of its business through its website at <helcim.com> domain name. Complainant also states that its clients collectively processed $2.5 billion in transactions in 2017. The Panel holds that for the purposes of this proceeding, Complainant does hold common law rights in the HELCIM mark.
Next, Complainant argues that Respondent’s <helcimpayments.com> domain name is identical or confusingly similar to Complainant’s HELCIM mark as it merely adds the descriptive term “payments” and the “.com” generic top-level domain (“gTLD”). Similar changes in a domain name have failed to sufficiently distinguish the domain name from the mark of another for the purposes of Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel holds that the <helcimpayments.com> domain name is confusingly similar to the HELCIM mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <helcimpayments.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <helcimpayments.com> domain name. Specifically, Complainant alleges that Respondent is not commonly known by the domain name, has no trademark rights in the HELCIM mark, and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Helcim Payments / Jane Murphy” as the registrant. Accordingly, on this record, the Panel agrees that Respondent is not commonly known by the <helcimpayments.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant claims that Respondent uses the <helcimpayments.com> domain name to redirect users to Complainant’s own website. Using a confusingly similar domain name that resolves to a complainant’s own webpage fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Complainant provides evidence which shows that the “Location” of the <helcimpayments.com> domain name is at the <helcim.com/ca/> domain name. Complainant also provides evidence of its ownership of the <helcim.com/ca/> domain name in the form of a screenshot. Thus, the Panel holds that Respondent’s use of the domain name to redirect users to Complainant’s website provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has provided evidence that Respondent uses the <helcimpayments.com> domain name to redirect users to Complainant’s own website. Using a confusingly similar domain name to redirect users to a complainant’s own webpage can provide evidence of bad faith under the Policy. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Accordingly, the Panel holds that Respondent’s use of the <helcimpayments.com> domain name to redirect users to Complainant’s own website provides evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the HELCIM mark at the time of registering the <helcimpayments.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name shows bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel agrees that Respondent’s knowledge of Complainant’s rights can be inferred given Respondent’s use of the domain name to redirect users to Complainant’s website.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <helcimpayments.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 24, 2019
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