Paymentus Corporation v. Zhi Chao Yang
Claim Number: FA2006001899379
Complainant is Paymentus Corporation (“Complainant”), represented by Stephen M Vaughn of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ipn2paymentus.com>, registered with West263 International Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2020; the Forum received payment on June 8, 2020.
On June 8, 2020, West263 International Limited confirmed by e-mail to the Forum that the <ipn2paymentus.com> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 June 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2020 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@ipn2paymentus.com. Also on June 11, 2020, 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 July 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
Complainant is a provider of electronic bill presentment and payment services. Complainant has rights in the PAYMENTUS trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,099,998, registered Dec. 13, 2016). Respondent’s <ipn2paymentus.com> domain name is identical or confusingly similar to Complainant’s trademark as the primary element of the domain name is Complainant's PAYMENTUS trademark.
Respondent lacks rights or legitimate interests in the <ipn2paymentus.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to generate revenue form pay-per-click links.
Respondent registered and uses the <ipn2paymentus.com> domain name in bad faith. Respondent uses the disputed domain name to host pay-per-click links. Respondent registered the disputed domain name with constructive or actual knowledge of Complainant's trademark rights. Respondent engages in typosquatting by registering a domain name similar to Complainant's own domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registration:
No. 5,099,998 PAYMENTUS (word), registered December 13, 2016 for services in class 36.
Tthe disputed domain name <ipn2paymentus.com> was registered on April 5, 2020.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Language of Proceeding
The Complainant has requested the language of the Proceeding to be English, even if the Respondent is based in China. The Complainant has claimed that Respondent is capable of understanding English, as the website associated with the disputed domain name is entirely in English, and the said website also includes a detailed and technical privacy policy written entirely in English.
Based on this, and Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
The Complainant asserts rights in the PAYMENTUS trademark based on registration with the USPTO (Reg. No. 5,099,998, registered Dec. 13, 2016). Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel find that Complainant has established rights in the PAYMENTUS trademark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <ipn2paymentus.com> domain name is identical or confusingly similar to Complainant’s trademark as the primary element of the domain name is Complainant's PAYMENTUS trademark. While not argued by Complainant, the disputed domain name adds the term "ipn2" and the ".com" generic top-level domain to Complainant's trademark. The addition of generic or descriptive terms and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). In this case, “ipn2” only indicates that there is an Instant Payment Notification (IPN) message service added to Complainant’s services. Further, the “inp2” part is used by the Complainant in the Complainant’s domain address: <ipn2.paymentus.com>.
The Panel therefore find that the <ipn2paymentus.com> domain name is confusingly similar to the Complainant’s PAYMENTUS trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant argues that Respondent lacks rights or legitimate interests in the <ipn2paymentus.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the trademark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Zhi Chao Yang,” and there is no other evidence to suggest that Respondent was authorized to use the PAYMENTUS trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <ipn2paymentus.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to generate revenue form pay-per-click links. The use of a domain name to display pay-per-click hyperlinks may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides screenshots of the resolving webpage which displays advertising links. The Panel therefore find that Respondent is not using the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent registered and uses the <ipn2paymentus.com> domain name in bad faith as Respondent uses the disputed domain name to host pay-per-click links. Use of a domain name to display pay-per-click links can show bad faith per Policy ¶¶ 4(b)(iii) and (iv). See For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As noted above, Complainant provides screenshots of the resolving webpage which displays the said advertising links. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant asserts that Respondent registered and uses the <ipn2paymentus.com> domain name in bad faith as Respondent registered the disputed domain name with constructive or actual knowledge of Complainant's trademark rights. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Complainant contends that Respondent's <ipn2paymentus.com> domain name mimics Complainant's <ipn2.paymentus.com> domain name and this shows that Respondent had knowledge of Complainant's rights in the trademark at registration. The Panel finds it indeed possible or even likely that Respondent had actual knowledge of the PAYMENTUS mark at the time of registration of the disputed domain name, thus constituting bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent registered and uses the <ipn2paymentus.com> domain name in bad faith as Respondent engages in typosquatting by registering a domain name similar to Complainant's own domain name. Typosquatting via a domain name can be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Priceline.com, Inc. v. Ryan G Foo / PPA Media Services, FA 135598 (Forum Aug. 18, 2016) (holding that registration of a domain name consisting of a slight misspelling of the complainant’s mark and affiliation of that domain name with the complainant’s affiliate program constituted bad faith per Policy ¶ 4(a)(iii)). Complainant argues that the disputed domain name removes the "." from Complainant's <ipn2.paymentus.com> domain name and this constitutes typosquatting. The Panel agree, and find that Respondent registered and uses the disputed domain name in bad faith per 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 <ipn2paymentus.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 9, 2020
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