Payway, Inc. v. Domain Administrator
Claim Number: FA1905001845958
Complainant is Payway, Inc. (“Complainant”), represented by Dale Kerester of Landay Leblang Stern, Massachusetts, USA. Respondent is Domain Administrator (“Respondent”), represented by Frank Reimann, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names here at issue are <payway.com>, <payway.net> and <payways.com>, registered with 1&1 IONOS SE.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2019; the Forum received payment on May 31, 2019.
On June 4, 2019, 1&1 IONOS SE confirmed by e-mail to the Forum that the <payway.com>, <payway.net>, and <payways.com> domain names are registered with 1&1 IONOS SE and that Respondent is the current registrant of the names. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2019, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to the attention of the following: postmaster@payway.com, postmaster@payway.net, and postmaster@payways.com. Also, on June 10, 2019, 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.
A timely Response was received and determined to be complete on July 1, 2019.
On July 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant asserts, among other things, the following:
Complainant has, since 1984, engaged in the business of providing to its customers integrated payment processing services.
Complainant, operating under the PAYWAY mark, advertises and promotes the sale of its software and related services in interstate commerce throughout the United States.
Complainant holds a registration for the PAYWAY service mark, which is on file with the United States Patent and Trademark Office as Registry No. 4,436,195, registered November 19, 2013, on the basis of an application for registration filed April 8, 2013.
Complainant has made an extensive investment in the promotion and protection of its PAYWAY mark.
Complainant has achieved a substantial reputation and good will in the PAYWAY mark so that the mark has acquired secondary meaning in the marketplace identifying the mark as a source of integrated payment processing services.
As a consequence, Complainant has rights in the PAYWAY mark under the common law running from 1984.
Respondent registered the domain names <payway.com>, <payway.net> and <payways.com> in about March of 2000.
The domain names are confusingly similar to Complainant’s PAYWAY mark.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise permitted Respondent to use the PAYWAY mark.
Respondent has not used the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain names.
Respondent has demanded from Complainant a price of $184,000 for the purchase of the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent’s registration of the domain names prevents Complainant from reflecting its mark in any corresponding domain names.
Respondent has registered and uses the domain names in bad faith.
B. Respondent
In its Response to the Complaint, Respondent alleges, inter alia, as follows:
Respondent began operations in the payment solutions business in October of 1998.
Respondent registered the domain name <payway.com> on March 6, 2000, the domain name <payways.com> on March 29, 2000, and the domain name <payway.net> on January 22, 2002.
Respondent has employed the domain names in domestic and international electronic commerce since their respective dates of registration.
Respondent registered the fictitious name “PAYWAY.COM” with the state of Florida on July 11, 2002, and has ever since used that name as its “doing business as” name for the marketing of its products and services.
Complainant’s filing of the Complaint in this proceeding is an attempt by it to pirate the domain names, all the while knowing that it has no legitimate right to any of them.
Complainant has failed to demonstrate, prima facie, that Respondent has no rights to or legitimate interests in any of the disputed domain names.
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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the PAYWAY service mark sufficient for purposes of Policy ¶4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef/Express Transporting, FA 1738124 (Forum July 28, 2017), finding that registration of a mark with the USPTO adequately established a UDRP complainant’s rights in that mark to meet the standing requirements of Policy ¶4(a)(i).
Turning to the core question posed by Policy¶4(a)(i), we conclude from a review of the record that each of the domain names <payway.com>, <payway.net> and <payways.com> is confusingly similar to Complainant’s PAYWAY service mark. All of the domain names contain the mark in its entirety, with only the addition of an extraneous letter “s” in one of them, plus either the generic Top Level Domain (“gTLD”) “.com” or “.net” for each. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, LodgeWorks Partners, L.P. v. Isaac Goldstein, FA 1717300 (Forum April 5, 2017), finding the domain name <archerhotels.com> to be confusingly similar to the mark ARCHER HOTEL.
See also Dell Inc. v. Protection of Private Person, FA 1681432 (Forum August 1, 2016), finding that:
A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <payway.com>, <payway.net> and <payways.com> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
In the circumstances before us, the question of Respondent’s rights to or legitimate interests in the contested domain names appears to turn on the point of time. The record before us reveals that, while Complainant has rights in its PAYWAY mark by way of registration with the USPTO, the date of that registration, November 19, 2013, falls considerably after the dates of Respondent’s registrations of the questioned domain names, which fall between March 6, 2000, and January 22, 2002. If the facts ended there, we would therefore be obliged to find that Respondent’s rights in all of its domain names precede in time Complainant’s rights in its mark, and, therefore, that Respondent’s rights in the domain names, being senior, carry the day under Policy ¶ 4(a)(ii).
However, Complainant, anticipating the result, also offers that it has rights in its PAYWAY mark under the common law dating from 1984. While the Complaint recites familiar tokens associated with common law rights in a mark, the attachments to the Complaint are wanting of even the slightest proof in support of this claim. As a consequence, we are constrained to conclude that Complainant has failed to carry its prima facie burden on this question. See, for example, Healthgrades Operating Company, Inc. v. Erick Hallick, FA 1672836 (Forum June 9, 2016), finding that a UDRP complainant did not establish common law rights in a mark because it did not provide evidence of the public’s recognition of the mark as a source identifier, and concluding that:
[S]elf-serving commentary alone from a common law mark claimant is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.
The Panel therefore finds that Complainant has failed to satisfy the proof requirements of Policy ¶ 4(a)(ii).
Because Complainant has failed to meet its obligations of proof under Policy ¶ 4(a)(ii), it is unnecessary for us to examine Complainant’s contention that Respondent both registered and is now using the disputed <payway.com>, <payway.net> and <payways.com> domain names in bad faith. See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum April 17, 2017) (finding that, because a UDRP complainant must prove all three elements set out in Policy ¶4(a), a complainant’s failure to prove one of those elements makes inquiry into the remaining ones unnecessary). See also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (determining not to inquire into a respondent’s rights or legitimate interests in a domain name or its registration and use of that domain name in bad faith where a UDRP complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Complainant having failed to establish all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the <payway.com>, <payway.net>, and <payways.com> domain names REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: July 10, 2019
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