CyberSource Corporation v. John Miller

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.

Richard G. Lyon

Sole Panelist

Dated: March 12, 2004

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.

More cases by this complainant

• CyberSource Corporation — D2004-0012 · Terminated