Mercury Payment Systems, Inc. v. Virtual Services Corporation Domains By Proxy - VSC Proxy Account and Nandy Sengupta
Claim Number: FA1101001366297
Complainant is Mercury Payment Systems, Inc. (“Complainant”), represented by Patricia Ho of Sheridan Ross P.C., Colorado, USA. Respondent is Virtual Services Corporation Domains By Proxy - VSC Proxy Account (“Respondent”), represented by Paul Keating of Law.es, Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mercurypayment.com> and <mercurypayments.com>, registered with Fabulous.com Pty Ltd.
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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2011; the National Arbitration Forum received payment on January 6, 2011.
On January 6, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <mercurypayment.com> and <mercurypayments.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 January 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 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@mercurypayments.com. Also on January 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
On January 19, 2011 the Parties filed a Joint Request to Stay the Administrative Proceeding for forty-five days until March 7, 2011 pursuant to Supplemental Rule 6(b)(i), which was approved on January 21, 2011. On February 17, 2011 Complainant filed a Request to Remove the Stay of Administrative Proceeding which was approved on February 17, 2011. In its Request to Remove the Stay, Complainant explained that the disputed domain name <mercurypayment.com> was voluntarily transferred and that Complainant only wished a decision with respect to the second disputed domain name <mercurypayments.com>.
A timely Response was received and determined to be complete on February 28, 2011.
Complainant’s Additional Submission was received and deemed complete on March 4, 2011.
On March 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Respondent’s Additional Submission was received on time and deemed complete on March 14, 2011.
Complainant requests that the domain name <mercurypayments.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that Respondent's domain name is confusingly similar to Complainant’s registered mark and operating name. Complainant further contends that Respondent has no rights or legitimate interests in the domain name. Finally, Complainant contends that Respondent registered and is using the domain name in bad faith.
Complainant argues that it has been using the MERCURY PAYMENT SYSTEMS, MERCURY, MERCURYPAY, and MPS MERCURY PAYMENT SYSTEMS marks in connection with its business operations since November 1, 2001. Complainant argues that is has expended substantial time, money, and effort to promote and advertise its goods and services under the above referenced marks. Complainant contends that based on its use of its marks, it has generated substantial goodwill and consumer recognition. Complainant also notes in its Complaint and Additional Submission that it has operated through its <mercurypay.com> website since registering the domain name on August 6, 2001.
Complainant alleges that the <mercurypayments.com> domain name is confusingly similar to its MERCURY mark. Complainant notes that the dominant term within the domain name is MERCURY, and argues that the domain name simply adds the descriptive term “payments” and the generic top-level domain (“gTLD”) “.com.”
Complainant contends that Respondent has not been authorized or licensed to use any of Complainant’s marks. Further, Complainant alleges that the WHOIS information for the disputed domain name identifies “Fabulous.com Pty Ltd.” as the registrant of the domain names.
Complainant contends that Respondent is not using the disputed domain name in conjunction with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent’s disputed domain name resolves to a website that displays third-party links to businesses and financial processing companies in competition with Complainant. Complainant argues that such commercial use of the domain name is evidence that Respondent does not have rights or legitimate interests in the domain name.
Complainant argues that Respondent’s registration and use of the disputed domain name to divert Internet users to Respondent’s website that features third-party links to Complainant’s competitors is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s use of the disputed domain name to redirect Internet users to the competitors of Complainant is presumably for Respondent’s financial gain. Complainant contends that such use is further evidence of Respondent’s bad faith registration and use of the domain name.
B. Respondent
Respondent argues that its disputed domain name was registered prior to Complainant’s alleged rights in the marks.
Respondent argues that it registered the <mercurypayments.com> domain name in November of 2005, and that it has been using the domain name in the generic/descriptive sense to provide advertising and other information related to efficient and “fast” payment methods, per the definition of “mercury.” Respondent contends that Complainant did not have rights in any of its mark at the time Respondent registered the domain name. Further, Respondent contends that using domain names in their generic or descriptive sense for pay-per-click websites is a legitimate use and bona fide business under the Policy. Respondent asserts that to find Respondent’s use illegitimate, one must accept that Complainant has monopoly rights in common industry terms, widely used in their generic or descriptive sense, or because of the associations that they create with the characteristics of the products offered.
Respondent contends that it did not acquire the <mercurypayments.com> domain name with the intention of selling it to Complainant, nor to Complainant’s competitors. Respondent argues that at the time it registered the disputed domain name that it did not know of Complainant or its asserted rights that had not yet been determined, so it could not have registered the domain name with the intention of selling it to Complainant.
Further, Respondent contends that it did not register the disputed domain name to prevent Complainant from reflecting its marks on the Internet, and that it did not register the disputed domain name primarily for the purpose of disrupting the business of Complainant.
Respondent also argues that it did not register the disputed domain name to attract Internet users to its website by creating a likelihood of confusion with Complainant’s marks that did not exist at the time of Complainant’s registration. Respondent argues that at the time it registered the domain name it was planning to use the name in its generic sense of the word “mercury,” which means “fast.” Respondent alleges that it planned to use the name to offer advertising under the generic sense of the term, and that such use is legitimate and precludes a finding of bad faith registration and use.
Finally, Respondent asserts that it was not aware of Complainant or any of the marks that Complainant presents in the instant proceeding. Respondent also states that the first time it had heard of Complainant was on May 26, 2008 when Respondent received a demand letter from Complainant. Respondent sent a response letter back to Complainant stating that it believed Complainant did not have rights in the any mark at that time. Respondent argues that Complainant acknowledged receiving Respondent’s letter, but that Complainant took no action further pursuing any rights. Respondent argues that it is impossible for it to have registered the domain name in bad faith when Complainant did not own a trademark registration or have any established rights in the asserted marks when Respondent registered the domain name.
C. Additional Submissions
Both Complainant and Respondent have filed Additional Submissions pursuant to Supplemental Rule 7. After the filing of their first Additional Submissions, both Complainant and Respondent have posted communications with additional arguments. However, Supplemental Rule 7(e) provides that each party is limited to one additional submission. Hence the communications that were posted by both Complainant and Respondent after having filed their first Additional Submissions cannot be taken into account.
Complainant
Complainant argues in its Additional Submission that although its marks were registered with the USPTO after Respondent registered the disputed domain name on November 13, 2005 that it previously used the marks in commerce before that time. Complainant contends that it has been using its marks since 2001 and that it has established common law rights in those marks. Complainant contends that its Exhibit E plainly shows that its marks have been promoted and circulated within the community, and that its press releases date back to 2003 using the MERCURY and MERCURY PAYMENT SYSTEMS marks. Further, Complainant alleges that its evidence includes advertisements by Complainant for training sessions for customers and potential customers showing the dates of the sessions that took place prior to 2005.
Complainant further argues that Respondent has a history of registering domain names in bad faith and that Respondent’s website sends Internet users to competing companies in the credit card processing industry, thereby disrupting Complainant’s business.
Respondent
Respondent argues that Complainant’s Additional Submission is improper as there are no exceptional circumstances, justifying such Additional Submission.
Respondent claims that, also in its Additional Submission, Complainant does not establish any common law trademark rights prior to the registration of the disputed domain name. Respondent further asserts that even if the minimum evidence provided by Complainant were to be accepted as establishing common law rights, there is no evidence indicating that those rights should have been known to Respondent prior to the registration of the disputed domain name.
Respondent also argues that Complainant, by waiting until after its marks had been registered, admits that at the time, in May 2008, and even more so, in November 2005, did not itself believe it held enforceable rights in the asserted marks, sufficient to prevail in any UDRP or other proceeding. Respondent contends that Complainant fails to understand that any rights it may have obtained through such later registration, post-dating registration of the Domain Name, are irrelevant.
Finally, Respondent argues that Complainant's unacceptable delay has allowed the Respondent to further establish its rights in the disputed domain name.
1. Complainant is the holder of inter alia the following trademark registrations:
- U.S. Reg. No. 3,523,057 – MERCURY PAYMENT SYSTEMS, filed on November 10, 2006 and registered on November 28, 2008
- U.S. Reg. No. 3,526,214 – MERCURY filed on November 10, 2006 and registered on November 28, 2008)
- U.S. Reg. No. 3,623,390 – MERCURYPAY filed on November 10, 2006 and issued on May 19, 2009)
- U.S. Reg. No. 3,625,187 – MPS MERCURY PAYMENT SYSTEMS filed on July 11, 2007 and issued on May 25, 2009.
2. Complainant first used its trademark on November 1, 2001.
3. Nandy Sengupta, the first Respondent, registered the domain name <mercurypayment.com> on October 4, 2005. Virtual Services Corp. Domains By Proxy, the second Respondent, registered the domain name <mercurypayments.com> on November 13, 2005.
4. Complainant submits that the first respondent voluntarily transferred the domain name <mercurypayment.com> and asks the Panel to limit its decision to the disputed domain name <mercurypayments.com>.
5. The second Respondent uses the domain name in connection with a directory website displaying third-party links to competitors of Complainant.
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. However, complaints relating to multiple domain-name holders can be accepted in cases where there are sufficient indications that there is common control. See Blue Cross and Blue Shield Assoc., Empire HealthChoice Assurance, Inc. d/b/a Empire Blue Cross Blue Shield and also d/b/a Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Ins.Assocs. / 4 Letter Domains Inc. / New York Health Ins., Case No. D2010-1699 (WIPO December 1, 2010) (finding that complaint relating to multiple domain-name holders can be accepted where common control has been established due to the fact that all domain names were registered on the same day, adopted a common format and were used to divert traffic to the same pay-per-click parking page).
In the present case, the complaint relates to two domain names and the whois records show that they have not been registered by the same domain-name holder. Moreover, Complainant provides insufficient elements to show that there exists any indication of common control. The fact that one of the Respondents decided to voluntarily transfer the disputed domain name of which it was the holder, and the other did not, is a clear indication that there exists no common control with regard to the disputed domain names. Hence, the condition for a complaint to relate to more than one domain is not fulfilled.
However, in its request to remove the Stay of administrative proceeding requested a decision for only one of the disputed domain names, namely the domain name <mercurypayments.com>. As Complainant searches relief in relation to only one domain name, the complaint de facto relates to one domain name only. As a result, the Panel opines it is competent to render a decision in relation to this one 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."
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 provided evidence to show that it owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for various marks including:
1. MERCURY PAYMENT SYSTEMS (e.g., Reg. No. 3,523,057 filed November 10, 2006; registered November 28, 2008)
2. MERCURY (e.g., Reg. No. 3,526,214 filed November 10, 2006; registered November 28, 2008)
3. MERCURYPAY (e.g., Reg. No. 3,623,390 filed November 10, 2006; issued May 19, 2009)
4. MERCURYGIFT (e.g., Reg. No. 3,526,213 filed November 10, 2006; issued November 4, 2008)
5. MERCURYVIEW (e.g., Reg. No. 3,623,646 filed July 11, 2007; issued May 19, 2009) and
6. MPS MERCURY PAYMENT SYSTEMS (e.g., Reg. No. 3,625,187 filed July 11, 2007; issued May 25, 2009)
Accordingly, Complainant has established rights in its MERCURY marks under Policy ¶ 4(a)(i) that date back to November 10, 2006, which is the date of its earliest trademark filing with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
According to the Panel, the dominant term within the domain name is MERCURY and the domain name simply adds the descriptive term “payments”, related to Complainant’s business and the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that the <mercurypayments.com> domain name is confusingly similar to Complainant’s MERCURY mark under Policy ¶ 4(a)(i), where the domain name simply adds a term that describes Complainant’s business and the gTLD “.com.” See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The fact that the registration of the <mercurypayments.com> domain name predates Complainant’s registered rights in the mark is irrelevant under Policy ¶ 4(a)(i) according to the Panel, as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain name is confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Respondent’s contention that the <mercurypayments.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, is also irrelevant under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.
It is established case law that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the Domain Name in order to shift the burden of proof to the Respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant established that Respondent has not been authorized or licensed to use any of Complainant’s marks. Further, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Furthermore, it is shown from the record that Respondent’s disputed domain name resolves to a website that displays third-party links to businesses and financial processing companies in competition with Complainant. The Panel finds that Respondent’s use of the disputed domain as a links directory website that offers commercial links to third-parties that are in competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). According to the Panel, such commercial use of the domain name is evidence that Respondent does not have rights or legitimate interests in the domain name. The Panel considers Respondent’s argument that it has been using the domain name in the generic/descriptive sense to provide advertising and other information related to efficient and “fast” payment methods, per the definition of “mercury” to be of no value. If “mercury” would have a generic/descriptive sense, it would be that of i) the Roman god of commerce, eloquence, travel, cunning, and theft who serves as a messenger to the other gods, ii) the planet closest to the sun, or iii) the metallic poisonous element “Hg”. The Panel does not consider “mercury” do be descriptive of any form of payment and does not consider the domain name to be used as such. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
The Panel notes that Respondent has a history of registering domain names in bad faith. Evidence was submitted showing that Respondent has over 3,000 domain name registrations with many bearing slight misspellings of third-party trademarks, such as: <americaneaglesoutfitters.com>, <homedopet.com>, <deltaairlline.com> and others. Such registrations of domain names that contain misspellings of others’ trademarks is evidence shows that Respondent has a pattern of registering disputed domain names, and that such pattern is evidence of bad faith in the instant proceeding under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).
Furthermore, the Panel considers that the registration and use of a domain name to divert Internet users to Respondent’s website that features third-party links to Complainant’s competitors is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). According to the Panel, Respondent’s website sends Internet users to companies competing with Complainant in the credit card processing industry, thereby disrupting Complainant’s business. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
According to the Panel, the use of domain names as a directory website displaying third-party links to competitors of a trademark holder is evidence of bad faith registration and use under Policy ¶ 4(b)(iv), where the domain-name holder presumably profits from such activity. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel finds that Respondent uses the disputed domain name to redirect Internet users to the competitors of Complainant and that such use is presumably for Respondent’s financial gain. Such use is further evidence of Respondent’s bad faith registration and use of the domain name.
Finally, the Panel considers that, although Complainant had no registered MERCURY trademark at the time of registration of the disputed domain name, Complainant proves to have been using its MERCURY mark since 2001. Given the distinctive character of the trademark for payment services and given the use Respondent made of the disputed domain name, the Panel finds it inconceivable that Respondent was unaware of Complainants rights in the MERCURY mark at the time of registration of the disputed domain name in 2005.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mercurypayments.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: March 23, 2011
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