Paymentus Corporation v. Domain Admin / TotalDomain Privacy Ltd
Claim Number: FA2207002005377
Complainant is Paymentus Corporation (“Complainant”), represented by Stephen M. Vaughn of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is Domain Admin / TotalDomain Privacy Ltd (“Respondent”), Panamá.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ipnpaymentus.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2022. The Forum received payment on July 22, 2022.
On July 25, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ipnpaymentus.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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”).
In response to a deficiency letter from the Forum dated July 25, 2022, Complainant filed an Amended Complaint on July 28, 2022.
On July 29, 2022, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2022 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@ipnpaymentus.com. Also on July 29, 2022, 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 August 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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, Paymentus Corporation, is a provider of electronic bill presentment and payment services. Complainant is the owner of the valid and registered PAYMENTUS trademark in the United States Patent and Trademark Office (“USPTO”) that forms the basis of this Amended Complaint. Respondent’s <ipnpaymentus.com> domain name is identical or confusingly similar to Complainant’s mark.
The PAYMENTUS mark is distinctive and well known in the electronic billing and payment solutions industries. The PAYMENTUS mark was first used in commerce at least as early as 2005 and it was registered on the Principal Register of the USPTO on or about December 13, 2016. Complainant has invested large sums of money and resources to create, maintain and promote the goodwill associated with the PAYMENTUS mark. As a result of Complainant’s promotional efforts, as well as its commitment to providing quality services, the PAYMENTUS mark is recognized and relied upon by the consuming public as indicating high quality services originating exclusively from Complainant. Accordingly, the PAYMENTUS Mark is a valuable asset of Complainant, representing reputation and customer goodwill of considerable value. Complainant maintains a website at the domain <paymentus.com>.
Respondent lacks rights and legitimate interests in the <ipnpaymentus.com> domain name. Respondent did not register the domain name until November 18, 2014, long after Complainant began using the PAYMENTUS mark. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed to Respondent any rights in the PAYMENTUS mark. Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Instead, Respondent uses the domain name’s resolving webpage to generate revenue from pay-per-click (“PPC”) links to competing third party webpages. Upon information and belief, Respondent is also using the domain name in furtherance of a phishing scheme.
Respondent registered and uses the <ipnpaymentus.com> domain name in bad faith with actual or constructive knowledge of Complainant’s rights in the PAYMENTUS mark. Respondent registered the domain name with intent to sell the rights to the domain name. Further, Respondent uses the domain name to attract users and disrupt complainant’s business through the use of PPC links to competing third parties. Upon information and belief, Respondent uses the domain name to phish for users’ account information. Respondent engages in typosquatting. Respondent used a privacy shield when registering the domain name. Because the PAYMENTUS mark was registered at the time Respondent registered the domain, it is presumed that Respondent had knowledge of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the PAYMENTUS mark through registration with the USPTO, namely Reg. No. 5,099,998, registered on December 13, 2016 upon application filed on April 28, 2016 and claiming first use in commerce on January 1, 2005. The Panel finds Respondent’s <ipnpaymentus.com> domain name to be confusingly similar to Complainant’s mark as it wholly incorporates the PAYMENTUS mark and adds the acronym “ipn”, which stands for Instant Payment Notification in the payment processing industry and is insufficient to distinguish the domain name from the mark. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
In light of the Panel’s finding in relation to the third element it is unnecessary to consider this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The <ipnpaymentus.com> domain name resolves to an active website indicating that the domain name may be for sale and containing pay-per-click links to third party websites offering services competing with those of Complainant.
There is no evidence that Respondent is using the domain name in furtherance of a phishing scheme.
The fact that the domain name may be for sale does not establish that it was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Accordingly, Complainant has not established bad faith within paragraph 4(b)(i) of the Policy.
The <ipnpaymentus.com> domain name was registered on November 18, 2014, some 2 years before the registration of Complainant’s mark. The fact that the application to register the mark claimed first use in commerce in 2005 does not establish that this was so. There is no evidence to substantiate Complainant’s claim that the PAYMENTUS mark was first used in commerce as early as 2005.
Complainant explicitly relies on its registered mark in this proceeding and has provided no evidence to support its claims to have invested large sums of money and resources to create, maintain and promote the goodwill associated with the PAYMENTUS mark and that, as a result, the PAYMENTUS mark is recognized and relied upon by the consuming public as indicating high quality services originating exclusively from Complainant. Accordingly, the Panel is not satisfied that Complainant had common law rights in the PAYMENTUS mark when Respondent registered the domain name.
As noted in the WIPO Jurisprudential Overview 3.0, section 3.8.1:
“where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
…
“As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
There is no evidence of any of these exceptional scenarios in the present proceeding. Accordingly, the Panel is not satisfied that Respondent registered the domain name with Complainant’s mark in mind and there is no basis to find bad faith within paragraphs 4(b)(ii) or (iii) of the Policy.
As to paragraph 4(b)(iv) of the Policy, the Panel finds the domain name is currently being used in bad faith to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on its website. Although bad faith use of the kind identified in paragraph 4(b)(iv) of the Policy is evidence of both bad faith registration and bad faith use, such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250, followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905.
The Panel considers that the PAYMENTUS mark is not one of a kind and is a combination of descriptive words. Its incorporation in the domain name with the acronym “ipn”, which stands for Instant Payment Notification in the payment processing industry, some two years prior to Complainant’s application to register its mark, is insufficient to enable the Panel to conclude that Respondent was aware of Complainant’s PAYMENTUS mark and of its use by Complainant in relation to electronic bill presentment and payment services when registering the domain name.
Under these circumstances the Panel finds that Complainant has failed to establish that the domain name was registered in bad faith.
Reverse Domain Name Hijacking
UDRP Rule 15(e) provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking (RDNH) is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking; rather, as stated in the WIPO Jurisprudential Overview 3.0, paragraph 4.16:
“Reasons articulated by panels for finding RDNH include: (iv) the provision of false evidence, or otherwise attempting to mislead the panel.”
The Amended Complaint acknowledges that the domain name was registered on November 18, 2014 and that Complainant’s mark was registered on December 13, 2016. Accordingly, Complainant’s statement:
“Because the PAYMENTUS mark was registered at the time Respondent registered the domain, it is presumed that Respondent had knowledge of the mark”
was knowingly false. Therefore Panel finds RDNH.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <ipnpaymentus.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: August 23, 2022
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