Telpay Inc. v. Yunsik Kim
Claim Number: FA0608000773074
Complainant is Telpay Inc. (“Complainant”), represented by Gerry Bayer, of Telpay Inc., 298 Garry St., Winnipeg, MB R3C 1H3, Canada. Respondent is Yunsik Kim (“Respondent”), Jugong apt 103-1204, Yeonsan-dong, Mokpo 530370, KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <telpay.com>, registered with Usefuldomains.net.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2006.
On August 17, 2006, Usefuldomains.net confirmed by e-mail to the National Arbitration Forum that the <telpay.com> domain name is registered with Usefuldomains.net and that Respondent is the current registrant of the name. Usefuldomains.net has verified that Respondent is bound by the Usefuldomains.net 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 August 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 2006 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@telpay.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <telpay.com> domain name is confusingly similar to Complainant’s TEL-PAY mark.
2. Respondent does not have any rights or legitimate interests in the <telpay.com> domain name.
3. Respondent registered and used the <telpay.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Telpay Inc., has operated as an independent business engaged in the offering of telephone bill payment services throughout Canada since at least as early as May 2001. Prior to 2001, Complainant was a department of Comcheq Services Inc., and subsequently a division of CTI-Comtel. Complainant currently processes over 19 million bills per year, involving more than 3,000 billers and over 250 financial institutions. In connection with its business, Complainant holds a trademark registration with the Canadian Intellectual Property Office for the TEL-PAY mark (Reg. No. TMA189042 issued March 2, 1973). Prior to its Complaint, Complainant had registered the <telpay.com> domain name for a three-year term beginning November 9, 2002 with Network Solutions. Complainant failed to re-register the disputed domain name after the expiration of its three-year term. Complainant also currently holds domain name registrations for several domain names incorporating its TEL-PAY mark, including the <telpay.ca> domain name.
Respondent, Yunsik Kim, registered the <telpay.com> domain name on April 4, 2006. Upon being contacted by Complainant regarding Complainant’s offer to purchase the disputed domain name registration, Respondent offered to sell the disputed domain name registration to Complainant for U.S. $15,000. No evidence has been submitted to the Panel indicating Respondent’s use of the disputed domain name.
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.
Complainant avers and submits evidence of a valid trademark registration for the TEL-PAY mark in Canada. Previous panels have held that Policy ¶ 4(a)(i) does not necessitate that the complainant hold a registered mark in the country in which the respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Rather, panels have consistently held that a complainant’s trademark registration sufficiently demonstrates the complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”). Therefore, consistent with the decisions of previous panels, the Panel in the instant case finds that Complainant’s trademark registration in Canada for the TEL-PAY mark establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Furthermore, the Panel finds that Respondent’s <telpay.com> domain name is confusingly similar to Complainant’s TEL-PAY mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name consists of Complainant’s mark in its entirety, with the omission of a hyphen and the addition of the gTLD “.com.” Prior panels have held that similar alterations to a mark do not negate the creation of confusing similarity under Policy ¶ 4(a)(i). In Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002), the panel stated, “[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.” Moreover, the panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), found that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Thus, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s TEL-PAY mark for purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights or legitimate interests with respect to the disputed domain name. Once Complainant sufficiently demonstrates a prima facie case, however, the burden then shifts to Respondent to demonstrate that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has demonstrated a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The evidence on record fails to indicate that Respondent is commonly known by the <telpay.com> domain name pursuant to Policy ¶ 4(c)(ii). The record is does not contain any evidence suggesting that Respondent is affiliated with Complainant, or is licensed or otherwise authorized by Complainant to use the TEL-PAY mark. Additionally, Respondent’s WHOIS information does not suggest that Respondent conducts business under the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <telpay.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, the Panel finds that the record is devoid of any evidence demonstrating Respondent’s use of the <telpay.com> domain name. Consequently, in light of Respondent’s failure to submit a response, the Panel finds that Respondent does not have rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(a)(ii). Specifically, Respondent does not demonstrate any use of the <telpay.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that upon being contacted by Complainant
regarding Complainant’s offer to purchase the disputed domain name
registration, Respondent offered to sell the disputed domain name registration
to Complainant for U.S. $15,000. As a
result, the Panel finds that Respondent’s offer to sell the <telpay.com>
domain name registration to Complainant in the present circumstances
sufficiently demonstrates that Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Neiman
Marcus Group, Inc. v. AchievementTec, Inc.,
FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith
under Policy ¶ 4(b)(i) where the respondent stated in communication with the
complainant that it would be ready to sell the <matmut.com> domain name
registration for $10,000).
Moreover, Complainant contends that it previously held the <telpay.com> domain name for a three-year term, but neglected to renew its registration for the disputed domain name. Therefore, in view of Complainant’s prior holding and use of the disputed domain name registration, the Panel finds that Respondent’s subsequent registration of the <telpay.com> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Red Nacional De Los Ferrocarriles Espanoles v. Ox90, D2001-0981 (WIPO Nov. 21, 2001) (“The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.”).
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 <telpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 29, 2006
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