Heartland Payment Systems, Inc. v. Whois Privacy Protection Service, Inc.; Kyle Ramsey
Claim Number: FA1403001547394
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: Whois Privacy Protection Service, Inc., of Kirkland, Washington, United States of America; Kyle Ramsey of Pacific Palisades, California, United States of America.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registry: Donuts Inc.
Registrar: Name.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 Examiner in this proceeding.
Douglas M. Isenberg, as Examiner.
Complainant submitted: March 7, 2014
Commencement: March 7, 2014
Default Date: March 24, 2014
On March 12, 2014, a representative of Whois Privacy Protection Service, Inc. (“WPPS”), sent an e-mail to the National Arbitration Forum (“NAF”) stating that it “is a privacy protection service used by domain registrants” and “is not the actual registrant of the Domain.” The WPPS representative asked: “please advise on how the caption may be amended to reflect the actual registrant of the Domain, rather than WPPS.” On the same date, the NAF domain dispute case coordinator replied: “Pursuant to URS 1.2.3 the Registrant is that which is listed on the WHOIS page. We will include your correspondence in the file, however no amendment of the case name may be made.” On March 14, 2014, a WPPS representative sent an e-mail to NAF stating that “the name and contact information for the underlying registrant of <heartland.holdings>” is Kyle Ramsey of Pacific Palisades, California, United States of America.
Having reviewed the communications records, the Examiner finds that the NAF 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.holdings> 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 7, 2014, a registrant using a privacy protection service registered <heartland.holdings>. Although the registrant should have been notified of Heartland’s HEARTLAND mark under the Clearinghouse’s Trademark Claims Service, the registrant ignored the warning and proceeded to register <heartland.holdings>. The web site at <heartland.holdings> is merely a revenue-generating pay-per-click advertising site with “Sponsored Listings” and “Related Links.” The “Related Links” column includes links for other Heartlandformative names, including “Heartland Payment.” A screen shot of this page, showing the link to “Heartland Payment,” is attached with this submission.
Suspension of <heartland.holdings> is appropriate because Heartland meets the requirements of Section 1.2.6 of the URS Rules. First, the <heartland.holdings> domain name is confusingly similar to Heartland’s registered HEARTLAND mark. Second, the registrant has no legitimate rights or interest in the domain name, as evidenced by its use of the site merely as a parked page with pay-per-click revenue-generating links and advertisements. Third, the domain name was registered and is being used in bad faith, specifically because the registrant is intentionally attempting to attract users for commercial gain. See URS Rules 22.214.171.124(d). The domain name was registered on February 7, 2014, more than 15 years after the HEARTLAND marks were first used and began to gain global notoriety. The registrant also received notice of the HEARTLAND Trademark Clearinghouse notice yet proceeded with its 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). The registrant’s use of <heartland.holdings> as a parked page, therefore, especially one with links to “Heartland Payment,” is creating a likelihood of confusion as to the source, sponsorship, or affiliation of the web site. See Facebook Inc. v. Radoslav, URS Claim No. FA1308001515825 (Sept. 27, 2013) (finding similar actions to be “further evidence of Respondent’s bad faith registration and use”). 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 126.96.36.199 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, monetized parking page that includes references to numerous “Related Links” that appear to bear no association with the HEARTLAND trademark (such as “Heartland College,” “Heartland Institute” and “Heartland Poker Tour”) and “Sponsored Listings” that also appear to bear no association with the HEARTLAND trademark (such as those titled “Watch TV Episodes Online” and “Free Printable Coupons”). Although the website also includes other links that are related to the HEARTLAND trademark (such as “Heartland Payment” and perhaps “Heartland Bank”), these are less prominent and appear to be incidental.
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 exclusively or strongly 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.
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 name be RETURNED to the control of Respondent: <heartland.holdings>.
Douglas M. Isenberg, Examiner
Dated: March 27, 2014
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