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Paychex, Inc. v. Goodsoft/Unjin No. [2000] GENDND 767 (26 July 2000)

National Arbitration Forum

DECISION

FORUM FILE NO: FA0006000095075

Paychex, Inc.

C/O James D. Cole, Esq.

COMPLAINANT

vs.

Goodsoft/Unjin No.

RESPONDENT

The above-entitled matter came on for an administrative hearing on July 24, 2000 before the undersigned on the Complaint of Paychex, Inc.,hereafter "Complainant", against Goodsoft, "Respondent". There was representation on behalf of Complainant. There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: TAXPAY.COM

Domain Name Registrar: ddong.com

Domain Name Registrant: Unjin No.

Domain Name Holder: Goodsoft

Date Complaint Filed: July 5, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): July 11, 2000.

Due date for a Response: July 31, 2000. Respondent did submit a response to the Complaint.

Remedy Requested: Transfer of the domain name to Complainant.

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on July 11, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified ddong.com, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced.

From the information submitted, it appears that the Respondent originally registered the domain name Taxpayer.com with BulkRegister.com on or about April 11, 2000. It further appears that the Respondent changed registrars from BulkRegister.Com to ddong.com on July 2, 2000. By such registration, the Respondent agreed to resolve any dispute regarding his domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1. That Complainant Paychex., Inc. is a Delaware corporation which provides payroll preparation consulting services to small to medium size businesses.
2. In February, 1989, Complainant began using the service mark TAXPAY in connection with the sale of its services.
3. On December 4, 1989, Complainant filed an application to register the service mark TAXPAY in connection with promoting the sale of its payroll preparation consulting services.
4. On January 21, 1992, the United States Patent and Trademark Office registered the TAXPAY mark which remains in full force and effect.
5. Complainant has expended substantial sums of money in advertising and promoting the TAXPAY mark in conjunction with Paychex services.
6. The TAXPAY mark has appeared prominently in brochures, newspaper, magazine, and Internet advertising in the United States and throughout the world.
7. As the result of Complainant's efforts and expenditures, substantial goodwill has been built for the TAXPAY mark, and for the services sold under this mark.
8. Respondent is apparently in the business of registering and selling domain names, thereby preventing trademark owners from using their own trademarks in conjunction with the primary .com top level domain.
9. Respondent has registered more than 50 domain names, some of which infringe famous marks such as DOTHUNDAI.COM and HYUNDAILIVE.COM.
10. Respondent is not known by the name TAXPAY and is not engaged in any business or other pursuit commonly known by the name TAXPAY.
11. The domain name TAXPAY, is identical to the service mark in which the Complainant has rights and to which the Respondent has no rights or legitimate interest.
12. Respondent registered the domain name in order to prevent Complaint, the owner of the service mark TAXPAY, from using the mark in a corresponding domain name.

On October 24, 1999, the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted the Uniform Domain Name Dispute Resolution Policy which sets forth the elements that a complainant must prove to show that a respondent has registered and used a domain name in bad faith. Specifically, the complainant must prove each of the following:

1. Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name;
3. Respondent has registered and is using the domain name in bad faith.

It is the opinion of the undersigned, that Complainant has met the burden of proof with respect to each of the above elements for the following reasons:

2 - The Respondent has no right or legitimate interest in the domain name. Specifically, the domain name has not used by the Respondent for a bone fide offering of goods or services nor has the Respondent been commonly known by such name.

3 - The Respondent has registered the name in bad faith. Section 4(b) of the ICANN Uniform Domain Name Dispute Policy provides that evidence of bad faith registration and use can consist of the following circumstances:

1. circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
2. the 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 the respondent has engaged in a pattern of such conduct; or
3. the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or of a product of service on the respondents web site or location.

The circumstances of this case permit a finding that the Respondent registered the domain name in order to prevent the owner of the service mark from reflecting the mark in a corresponding domain name.

CONCLUSION

The undersigned certifies that he has acted independently and has no know conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. The domain name TAXPAY.COM, registered to the Respondent is identical to Complainant's service mark.
2. Further, Respondent has no right or legitimate interests in said name.
3. Respondent registered, acquired and uses the domain name for the purpose of preventing the Complainant from using its service mark TAXPAY in a corresponding domain name. As such, the Respondent has used the name in bad faith as defined by ICANN rules.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(I), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "TAXPAY.COM" REGISTERED BY RESPONDENT GOODSOFT BE TRANSFERRED TO THE COMPLAINANT.

Dated: July 26, 2000, by Judge Daniel B. Banks, Jr., Panelist.