Integrated Payment Systems. Inc. v. integratedpaymentsystems.com c/o Whois Identity Shield
Case No. D2006-1214
1. The Parties
The Complainant is Integrated Payment Systems Inc., Greenwood Village, Colorado, United States of America, represented by Sutherland Asbill & Brennan, LLP, United States of America.
The Respondent is integratedpaymentsystems.com c/o Whois Identity Shield, Vancover, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <integratedpaymentsystems.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2006. On September 22, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On September 29, 2006, Nameview Inc. transmitted by email to the Center its verification response confirming the registration of the domain name and providing the contact details for the administrative, billing, and technical contact, but not confirming that the Respondent is listed as the registrant. There was no reply to further communications with the Registrar by the Centre. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2006.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on November 2, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, Integrated Payment Systems, is the owner of the US registered service mark for the words INTEGRATED PAYMENT SYSTEMS (US Reg No. 2156048) (Complaint, Annex 4). This was registered on May 12, 1998, in respect of “money order and check processing services” in class 36, with a first use in commerce in 1990.
The Respondent is the registrant, administrative contact and technical contact for the domain name <integratedpaymentsystems.com>. This was first registered on November 20, 2001, updated on June 21, 2005 and expires on November 20, 2006, (WHOIS printout, Annex 1 to Complaint).
5. Parties’ Contentions
A. Complainant
The Complainant, Integrated Payment Systems, is a “leading provider of payment solutions for business and consumers worldwide”. As noted above, it has the US registration of a service mark for the words INTEGRATED PAYMENT SYSTEMS (US Reg. No 2156048) (Complaint, Annex 4) with respect to “money order and check processing services” in class 36, with a first use in commerce in 1990.
The Complainant alleges further that it has made extensive and continuous use of the mark INTEGRATED PAYMENT SYSTEMS in relation to its services and has promoted it as the indicator of the origin of its services through trade shows, press releases, and websites, and through the website of its parent, First Data Corporation (printouts at Annexes 5-7 of the Complaint of the websites “www.fdcips.com”, “www.firstpayment-web.com” and “www.officialcheck.com” respectively). It is not clear from the Complaint whether this use has been principally in the United Stated of America or in other jurisdictions as well, although it is to be assumed that these websites are accessible by persons outside that country.
The Complainant alleges is the Respondent’s domain name <integratedpaymentsystems.com> is confusingly similar to its mark within par 4(a)(i) of the Policy, arguing that, for this purpose, the addition of the suffix “.com” is to be disregarded.
The Complainant alleges further that the Respondent has no rights or legitimate interest in the domain name within the meaning of par 4(a)(ii) of the Policy, arguing that none of the grounds that might satisfy this requirement under par 4(c) are present. In particular, the Complainant argues that there is no use of the domain name in connection with a bona fide offering of goods, in that the domain name resolves into a “directory site” with links to many other sites for various kinds of financial transactions. The Complainant suggests that the “only conceivable purpose” that the Respondent can have in using the Complainant’s mark in its domain name is to trade on the goodwill in that name and “thereby to divert and redirect Internet users to Respondent’s directory site for which the Respondent likely receives ‘per-pay-click’ revenue”.
The Complainant argues further that the Respondent is not commonly known by the name <integratedpaymentsystems.com> and that the Respondent’s name does not appear anywhere on the website; in addition, it argues that there is nothing in the use of the domain name by the Respondent to suggest that this is a “legitimate non-commercial or fair use”.
Finally, the Complainant argues that the Respondent’s registration and use of the domain name has been, and is, in bad faith, within the meaning of the Policy. In particular, the Complainant appears to argue that, in view of the wide use of the Complainant’s mark in trade and its three years of registration as a US service mark before the Respondent’s registration of the domain name, the Respondent must be taken to have been aware of the mark and would not have registered it unless it intended to trade on the valuable goodwill and prior and exclusive rights held by the Complainant. In other words, there was constructive knowledge on the part of the Respondent at the time of registration which establishes its bad faith in registering the domain name.
The Complainant argues further that there has been bad faith in the use of the domain name, in view of its suspicion that the Respondent is using the domain name to attract users to a directory site from which it (the Respondent) “appears to be earning revenue for all ‘clicks’ from Internet visitors”. It also benefits commercially from advertising that users will see and “attempts to change the home page of the visitor’s browser”.
It is alleged that these activities all represent attempts to “free ride” on the goodwill of the Complainant’s mark and fall within paragraph 4(b)(iv) of the Policy.
Finally, the Complainant notes that the Respondent has used a “proxy” (the words “integrated payment systems.com” themselves) to disguise his/hers/its true identity, with the result that the WHOIS contact information is inaccurate. It is argued that this underlines the bad faith use requirement in paragraph 4(a)(iii).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that:
“…if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Respondent’s domain name:
“…is identical or confusingly similar to a trademark or service mark in which the complainant has rights”;
So far as the first part of this paragraph is concerned, there are the following differences between the domain name and the services mark that mean that they are not identical: the domain name comprises one word with the “.com” suffix, while the service mark consists of three separate words. However, these differences are only minor, and there is no doubt that the composite domain name is still confusingly similar to the services mark. The Panel also accepts the Complainant’s submission that the “.com” suffix to the end of the domain name is simply part of the Internet address and does not add “source-identifying significance”: see further Bang & Olufsen a/s v. Unasi Inc, WIPO Case No 2005-0728 (September 7, 2005) and Deutsche Welle v. DiamondWare Ltd., WIPO Case No D2000-1202 (January 2, 2001). The Complainant has therefore satisfied this aspect of paragraph 4(a)(i).
The second part of paragraph 4(a)(i) is also satisfied, in that the Complainant has proved its registration of the words “integrated payment systems” as a service mark under US law. It is unnecessary therefore to have regard to any further rights at general law that the Complainant may have in this mark as an unregistered mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(b) which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Essentially, these are matters for a Respondent to put forward for the Panel’s consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exist.
Thus, while the domain name resolves to a “directory site” (Complaint, Annex 8), the services listed here are of a very diverse kind, eg “health”, “insurance”, “cars”, “shopping”, “legal” and “entertainment”, and are not limited to financial payment services. These headings lead, in turn, to other websites, which presumably offer the particular services. Furthermore, there is no reference to “integrated payment systems” on the directory site which is headed “webfile.com”. While the Complaint does not give the date on which the printout in Annex 8 was obtained, the Panel has visited “webfile.com” and has retrieved the same directory site printout. It has also found that, at present, the words “integratedpaymentsystems.com” do not presently resolve to a website page at all. In view of this material, it is impossible for the Panel to conclude that the circumstance referred to in par 4(c)(i) exists.
In the same way, there is no evidence of any facts that would support the circumstances referred to in paragraph 4(c)(ii) or (iii). It is unnecessary, in this regard, for the Panel to form any view here on the allegation of the Complainant that the Respondent is earning revenue on a “per-click-pay” basis when Internet users access the “www.integratedpaymentsystems.com” website (which, in any event, does not presently appear to be possible). This allegation, in any event, is more relevant to the bad faith requirement in paragraph 4(a)(iii) and is discussed further below.
The absence of any Response from the Respondent addressing the matters referred to in paragraph 4(c) entitles the Panel to infer that none of these circumstances exist in the present case. Accordingly, the Panel is satisfied that the requirement of no rights or legitimate interests under paragraph 4(a)(ii) has been made out.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii), the Complainant must show that the domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith: Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine Paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under Paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw from such default such inferences, as it considers appropriate.
On the evidence before it, the Panel is not satisfied that the circumstances referred to in paragraph 4(b)(i) or (ii) arise. It is also impossible to ascertain whether the intention referred to in paragraph 4(b)(iii) exists. Likewise, it is not possible to infer, for the purposes of paragraph 4(b)(iv), as the Complainant argues, that the Respondent is gaining revenue from pay-click revenue that is earned from Internet users clicking on names on the directory site and being redirected to other sites – there is simply no evidence, one way or the other on this question.
As noted above, the circumstances referred to in paragraph 4(b) are not exhaustive and the Complainant refers to two other circumstances that may point to bad faith registration and use of the domain name.
(i) The possibility that the registration occurred with “constructive knowledge” of the Complainant’s mark. This is not a factor that UDRP panels have usually found to justify a finding of bad faith, although the WIPO Overview of WIPO Panel Views on Selected UDRP Questions notes that this concept has been applied in a few cases where a complainant had a United States registered trademark and the respondent was also located in the United States of America. In such cases, the US doctrine of constructive notice may be held to be applicable: see, e.g., Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 and Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Nevertheless, there are also decisions where panels have been critical of the application of such a doctrine where the respondent comes from a non-US jurisdiction: see, for example, Alberto-Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757, where the Panel said, in relation to a US complainant and a UK respondent:
“The Complainant’s evidence of bad faith registration and use is exceedingly weak. I reject the idea that some sort of “constructive notice” is generated upon a trademark registration, and that this is sufficient to establish bad faith. To accept this idea is to accept that a trademark registration—without anything further—is enough to establish bad faith under the Policy. This is a ludicrous suggestion, and runs contrary to the clear intention of paragraph 4(a)(iii) which was intended to protect the interests of domain name holders who registered without bad faith. The evidence of advertising expenditures (some $1.5 million a year over multiple countries) does not indicate that the mark is particularly well known. Moreover, there is no indication of the amount spent on advertising in England. There is nothing to indicate that the Respondent was ever aware of the mark.”
Accordingly, while it may be true that the doctrine of constructive notice will have some application in cases where both parties are based in the United States of America, it is also notable that, even in those cases where the doctrine has been applied, there have been other circumstances indicating or confirming the presence of bad faith, including evidence that the relevant trademark had been widely used beforehand both in the United States of America and elsewhere, and was well known, quite apart from the fact of registration: see, for example, Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 and Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551.
In the present case, the Respondent has a non-US address (in Vancouver, British Columbia), and, in the absence of further evidence, cannot be presumed to have been aware of trademark registrations in another jurisdiction, such as the United States of America. There is no evidence of a corresponding registration in Canada or in any other jurisdiction. Neither, despite the allegations of widespread use prior to registration, is there any actual evidence provided of such usage as would provide a proper basis for inferring that the Respondent must have known of the existence of the Complainant’s mark at the time of registration of the domain name.
In consequence, the Complainant cannot succeed in showing registration and use of the domain name in bad faith on the basis of alleged constructive knowledge of the US trademark registration alone.
(ii) The only other specific matter that the Complainant refers to as providing a basis for inferring bad faith is the use of a “proxy” to disguise his/her/its true identity. In some instances, this has been a relevant factor, albeit of minor weight, along with others, in showing bad faith: see, for example, Grupo Televisa SA v. Autosya DTV2001-0007; CBS Broadcasting Inc v. Edward Enterprises, WIPO Case No. D2000-0242; and Lion Country Supply, Inc. v. J Katz, WIPO Case No. D2003-0106. However, it has never been given primacy in itself as a circumstance amounting to bad faith, in the absence of some further element of fraud or deception. In the present case, while a proxy is used, there is still an address given, and there is no evidence provided by the Complainant to indicate that this was false or that attempts had been made to contact the Respondent at that address and that these had failed. It is true that the Respondent has not filed a Response and has otherwise not acknowledged communications from the Center. However, given that the Complainant is seeking transfer of the domain name and has the onus of establishing the various requirements of paragraph 4(a), evidence of failed attempts by the Complainant prior to the filing of the Complainant to communicate with the Respondent would have been of assistance to the Panel in considering the question of bad faith.
In light of the above, the Panel is not satisfied that either of the above matters referred to by the Complainant establish the third requirement of paragraph 4(a), namely that the registration and use of the domain name was made in bad faith.
7. Decision
As each of the grounds specified in paragraph 4(a) of the Policy must be established, the Complaint is denied.
Staniforth Ricketson Sole Panelist
Dated: November 12, 2006
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