SAFTPAY Inc. v. 3Pea International, Inc.
Claim Number: FA0802001154178
Complainant is SAFTPAY, Inc. (“Complainant”), represented by Matthew
H. Swyers, of The Swyers Law Firm PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <safetpay.com>, registered with DomainDiscover.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 2008 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@safetpay.com by e-mail.
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
On
On
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 <safetpay.com> domain name is identical to Complainant’s SAFETPAY mark.
2. Respondent does not have any rights or legitimate interests in the <safetpay.com> domain name.
3. Respondent registered and used the <safetpay.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
C. In its Additional Submission, Complainant objected to Respondent’s late response and denied that there had been any abandonment of its trademark SAFETPAY.
Complainant, Saftpay, Inc., operates
a business which offers electronic payment products and services. Complainant’s predecessor filed an
application to register its SAFETPAY mark with the United States Patent and
Trademark Office (“USPTO”) on September 28, 1999. The USPTO subsequently registered the mark on
Respondent registered its <safetpay.com>
domain name on
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 timely 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 has produced evidence of the registration and
assignment history of its SAFETPAY mark with the USPTO. When a Complainant holds a registered mark,
the effective date of rights in that mark date back to the application filing
date of the registered mark. Therefore,
the Panel finds Complainant has rights in its SAFETPAY mark pursuant to Policy
¶ 4(a)(i) dating back to at least September 28, 1999. See Expedia, Inc. v. Inertia 3D, FA
1118154 (Nat. Arb. Forum
Respondent’s <safetpay.com>
domain name fully incorporates Complainant’s SAFETPAY mark with the addition of
the generic top-level domain (“gTLD”) “.com.”
The addition of a gTLD is not considered relevant in evaluating whether
a disputed domain name is identical to Complainant’s mark because a gTLD is a
required element of every domain name.
Therefore, the Panel finds Respondent’s <safetpay.com> domain name is identical to Complainant’s
SAFETPAY mark pursuant to Policy ¶ 4(a)(i). See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).
The Panel finds Complainant has established a prima facie case. Due to
Respondent’s failure to timely respond to the Complaint, the Panel may assume
Respondent does not have rights or legitimate interests in the disputed domain
name. The Panel, however, will
examine the record to determine whether Respondent has rights or legitimate
interests pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
From 2002 to 2007, Respondent’s disputed domain name did not resolve to an active website. The Respondent only activated a website under the disputed domain name after Complainant sent Respondent a cease-and-desist letter. Therefore, the Panel finds Respondent’s previous failure to make an active use of the disputed domain name was not a use 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 Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the complainant’s “cease and desist” notice); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
Respondent is currently using the <safetpay.com> domain name to redirect Internet users to
Respondent’s <3pea.com> domain name which offers electronic payment
products and services which directly compete with Complainant’s business. The Panel finds this diversionary use is not
a use in connection with a bona fide
offering of goods or service pursuant to Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is
using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Coryn
Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003)
(finding that the respondent was not using the domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
Additionally, it does not appear Respondent is commonly known by the <safetpay.com> domain name. The WHOIS information lists Respondent as “3Pea International, Inc.” and “Mark Newcomer.” Also, the record does not indicate Complainant authorized Respondent to use its SAFETPAY mark. Therefore, the Panel finds Respondent is not commonly known by the <safetpay.com> domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent previously was not making an active use of the <safetpay.com> domain name. Respondent did not active a website under the
<safetpay.com> domain name
for almost five years. After receiving a
cease-and-desist letter from Complainant, Respondent then used the disputed domain
name to redirect Internet users to Respondent’s <3pea.com> domain
name. The Panel finds Respondent’s
previous failure to make an active use of the disputed domain name constitutes
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Sporty's Farm L.L.C. v. Sportsman's Mkt.,
Inc., 202 F.3d 489 (2nd Cir. 2000) cert. denied, 120 S.Ct. 2719
(2000) (finding bad faith where the domain name was not used until after
litigation began and the domain name does not consist of the legal name of the
party); see also DCI
Respondent’s <safetpay.com>
domain name currently redirects Internet users to Respondent’s <3pea.com>
domain name, which offers electronic payment products and services that
directly compete with Complainant’s business.
The Panel finds this use constitutes disruption and is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See
S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding that the respondent registered the domain name in question
to disrupt the business of the complainant, a competitor of the respondent); see also
Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent’s <safetpay.com>
domain name currently redirects Internet users to Respondent’s competing
<3pea.com> domain name. This is
evidence Respondent is using its identical <safetpay.com>
domain name to profit from the goodwill Complainant has established in its
mark. This use also creates confusion as
to the affiliation of Complainant with the products and services being
marketed. Therefore, the Panel finds
Respondent’s use constitutes bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to
advertise its business, which sold goods in competition with Complainant. This
establishes bad faith as defined in Policy ¶ 4(b)(iv).”);
see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
The Panel finds 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 <safetpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 2, 2008
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