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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CyberSource Corporation v. John Miller

Case No. D2004-0011

 

1. The Parties

The Complainant is CyberSource Corporation, a Delaware (USA) corporation located in Mountain View, California, United States of America, represented by Jennifer Lee Taylor of the law firm Morrison & Foerster, LLP, San Francisco, California, United States of America.

The Respondent is John Miller, an individual with an address in Orange Park, Florida, United States of America. Mr. Miller has submitted a response on his own behalf.

 

2. The Domain Names and Registrar

The domain names at issue are <paylinx.com> and <paylinx.net> (the "Disputed Domain Names"). Both are registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the "Registrar").

 

3. Procedural History and Jurisdiction

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 7, 2004. On January 9, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names, and the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of both Domain Names and providing the contact details for the administrative, billing, and technical contact. Also on February 9, 2004, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with Rules 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced, on February 9, 2004. In accordance with Rule 5(a), the due date for Response was February 29, 2004. The Response was filed with the Center on March 1, 2004.

On March 8, 2004, the Center appointed Richard G. Lyon as the Sole Panelist in this matter. I submitted my Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center, to ensure compliance with Rule 7.

I find that the Panel was properly constituted and has jurisdiction over this dispute.

 

4. Factual Background

In August 1996, based on use in commerce since April 1996, PaylinX Corporation applied for trademark registration of PAYLINX in International Class 9, for computer programs for use and interactive credit card processing. This mark was so registered in March 1998. In February 1998 PaylinX Corporation filed an application to register the mark PAYLINX as a word mark in the United States, also claiming a first use of April 1996. This application matured to registration in October 2003. PaylinX Corporation became a wholly owned subsidiary of Complainant in September 2002. At that time, Complainant acquired all of PaylinX Corporation’s trademark rights, including the PAYLINX mark and then-pending application listed above.

Complainant provides products and services for e-commerce payment solutions. It continues to use its PAYLINX marks in this business.

PaylinX Corporation owned one of the Disputed Domain Names, <paylinx.com>, from August 1996 through September 2002. In September 2002 this registration lapsed for failure to pay the renewal fee[1].

Respondent registered both Disputed Domain Names on September 25, 2002. Respondent had earlier registered five domain names (collectively the "Paylinks Domain Names") incorporating the work paylinks: <paylinks.com> (registered November 1999), <paylinks.net> (May 2000), <paylinks.org> (May 2000), <paylinks.biz> (May 2001), <paylinks.info> (December 2001)[2].

Evidence is sparse on Respondent’s use of the Disputed Domain Names. On November 23, 2003, the Disputed Domain Names were offered for sale through links to Afternic.com (Complaint, Ex. H, I). Complainant alleges, and Respondent acknowledges, that each was offered for sale for $15,000 (Complaint, ¶ 23; Response ¶ 11).

On March 21, 2003, Complainant’s counsel wrote Respondent, claiming superior rights in the PAYLINX marks and demanding that Respondent transfer the Disputed Domain Names, the Paylinks Domain Names, and the two other domain names listed in footnote 2, to Complainant. Respondent replied by email on March 27, 2003. In this letter Respondent:

• Acknowledged ownership of the Disputed Domain Names and the Paylinks Domain Names;

• Asserted that he is in the business of "buying domain names" and "[selling] generic domain names";

• Asserted that all of his domain names redirect to <paylinks.com>;

Stated his unwillingness to release any of these domain names, "especially Paylinks"; and

• Denied any bad faith in registration or use. In particular, Respondent asserted that he placed a $15,000 price tag upon the Disputed Domain Names and Paylinks Domain Names to discourage offers, since he had no interest in selling any of them.

Apart from Respondent’s statements in his March 2003 email, repeated in the Response[3], about buying and selling domain names, there is no evidence in the record of any use of the Disputed Domain Names for any purpose. An attempt on March 10, 2004, to reach <paylinx.com> generated a response of "This page cannot be displayed"; a similar attempt to reach <paylinx.net> resulted in a transfer to the Afternic.com "domain name exchange." A view of the <paylinks.com> site on March 10, 2004 revealed the following:

"Paylinks.com listings are temporarily unavailable.

All available domain names can be found at "http://www.afternic.com/names.php?u=586."

Due to my current US Military obligations, all transactions must be handled by the escrow services of Afternic.com.

This web site is expected to resume its normal content and links around 25 March, 2004. 

Thank you,

J. Miller"

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

It has enforceable rights in its PAYLINX marks that predate and are superior to Respondent’s registration of the Disputed Domain Names. The Disputed Domain Names are identical to these marks and thus likely to create confusion with Complainant and its business.

Respondent has no rights or legitimate interests in the Disputed Domain Names. He has no statutory or common law trademark rights in the word "PaylinX", he has never been known by this name, he did not before notice of the dispute use or make preparation to use the Disputed Domain Names in connection with a bona fide offering of goods or services, and he has never made a legitimate non-commercial or fair use of the Disputed Domain Names without intent for commercial gain. Respondent’s only use of the Disputed Domain Names, offering them for sale at a price plainly in excess of his cost of registration, is an illegitimate use of the Disputed Domain Names.

The foregoing also evidences Respondent’s registration and use of the Disputed Domain Names in bad faith. Respondent’s protracted non-use of the Disputed Domain Names is further evidence of registration and use in bad faith under the "warehousing" doctrine of the Telstra case[4]. Multiple registrations of domain names using paylinx or paylinks constitues a pattern of conduct "intended solely to prevent Complainant from reflecting its trademark in corresponding domain names." (Complaint, ¶36; see Policy, ¶4(c)(iii))

B. Respondent

While the Response does not contain the sort of argument usually set out to answer the allegations of the Complaint, taking the Response and the March 2003 email letter described above (Exhibit L to the Complaint and expressly incorporated by reference in the Response), Respondent’s contentions may be summarized as follows:

Respondent was unaware of Complainant’s marks when it registered the Disputed Domain Names; he simply noticed that they had become available[5]. They were appealing to him because they were similar to his Paylinks Domain Names. His posting the Disputed Domain Names for sale was intended to discourage offers, since he planned to use the "www.paylinks.com" site for his business of selling generic domain names. The offers were "withdrawn" prior to commencement of these proceedings. His obligations as a United States serviceman have prevented full development of the paylinks sites, requiring him to make us of Afternic as a temporary alternative.

 

6. Standard for Decision

The Complainant must prove the elements set out in paragraph 4(a) of the Policy:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements.

 

7. Discussion and Findings

Identical or Confusingly Similar

Except for the TLD designation, the Disputed Domain Names are identical to Complainant’s registered PAYLINX marks. Complainant has established this element of the Policy.

Legitimate Rights

Complainant has also established the second element. Complainant has never licensed Respondent to use the Disputed Domain Names, Respondent has never been known by the variant spelling paylinx as opposed to the arguably generic paylinks, and Respondent is undeniably using the Disputed Domain Names for commercial purposes. Respondent’s sole justification for registering the Disputed Domain Names is their similarly to his Paylinks Domain Names. This case therefore presents the obverse of those cases in which a respondent claims permission to use the complainant’s mark or a variant spelling of the mark in its domain name, when that mark is a descriptive or generic word and the complainant was not universally associated with that word and mark[6]. The logic of those cases does not work in the opposite direction. When the mark at issue is an abnormal spelling the mark takes on some distinctiveness and ipso facto serves to identify to some degree the mark owner with its products or services. The variant spelling results in a stronger mark than one using a common word. That fact undermines an infringer’s contentions that he was unaware of the mark or that the mark (or domain name) was selected as a common or descriptive term.

Respondent would have a much closer case for legitimate use if Complainant (as it did in its cease and desist letter) sought a transfer of Respondent’s Paylinks Domain Names. Paylinks is arguably a descriptive word (or combination of words), it is not identical to Complainant’s marks, and Respondent’s asserted lack of knowledge of Complainant’s rights in a descriptive term might demonstrate legitimacy, based on Respondent’s alleged prior use for transactions in domain names[7]. Where as here Respondent has selected the artificial spelling, he runs the risk of treading on another’s mark. Paylinx is not a generic word and therefore the Disputed Domain Names are not the "generic" domain names that Respondent may sell legitimately. It is not a variant of a common word describing the goods and services Respondent offers, and it is a registered mark actively used by the Complainant mark owner in its business.

Trademark owners regularly and legitimately register domain names that use variant spellings of their marks, both to prevent cybersquatters from obtaining them and to attract prospective customers who might misspell the proper mark name when searching on the Internet. That is what Respondent claims to have done here, albeit with an unregistered business name rather than a registered mark. I do not believe he may retain that name for sale or use if the variant is verbatim the active mark of another. While this may place a greater burden on sellers of domain names than others when registering a variant of its business name, I believe that burden is justified by the language and rationale of the Policy.

Registration and Use in Bad Faith

Respondent’s factual contention about registering the Disputed Domain Names because of their similarly to the Paylinks Domain Names has some credibility. Considerably less believable is his statement about the reason for listing a substantial purchase price for them. I need not determine if either statement is true. While some panels have in effect weighed the credibility of the parties’ competing factual assertions, the Panel’s inability to hear testimony or obtain the benefits of cross-examination convince me that I may not do so consistently with the Policy. Bad faith (or lack of it) should be determined on objective criteria. And any objective evaluation of a regular seller of domain names’ offering the Disputed Domain Names for sale for $15,000 shortly after registering them renders this conduct persuasive evidence of both registration and use in bad faith.

Furthermore, Respondent has made no use of the Disputed Domain Names other than to redirect users to his other site. While such a referral, like the sale of domain names, is not itself bad faith, when the site at issue incorporates the mark of another the Policy presumes bad faith. Respondent presents no evidence to overcome that presumption.

 

8. Decision

For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and Rule 15 the Panel orders that the Domain Name be transferred to the Complainant.

 

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Richard G. Lyon
Sole Panelist

Dated: March 12, 2004

 

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1. Plaintiff's counsel speculates (Complaint, 20), without any evidentiary support, that the reason for this was Complainant's closing in March 2002 of PaylinX Corporation's St. Louis, Missouri office.
2. In its cease and desist letter Complainant also asserted that Respondent had registered <paylinks.us> and <paylinx.org>.
3. As Respondent himself, and not counsel, has affirmed in his Response that his statements, specifically including those in his March 2003 email, are " to the best of the Respondent's knowledge complete and accurate," I give them the evidentiary weight of a sworn statement. See Rule 5(b)(viii).
4. Telstra Corp., Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
5. It is worth noting that many registrars, including Afternic, offer a service that informs interested parties when particular domain names do become available.
6. See, e.g., Ciphergen Biosystems v. David Sabatini, WIPO Case No. D2002-0600 (proteinchip). C.A.Cigaretta Bigott Sucesores v. Ultimate Search, WIPO Case No. D2002-0866 (bigot); Fabricas Agrupadas de Munecas de Onil SA v. Palameta, WIPO Case No. D2000-1689 (famosa).
7. Buying and selling domain names, in and of itself, is a legitimate commercial activity. Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323; SuNyx Surface Nanotechnologies GmbH v. Primmer, WIPO Case No. D2002-0968. What the Policy condemns is buying a domain name incorporating another's mark for the purpose of selling it to the markholder for an exorbitant price.