DECISION

Upromise, Inc. v. Phayze, Inc.

Claim Number:  FA0306000161280

PARTIES

Complainant is Upromise, Inc., Needham, MA, USA (“Complainant”) represented by Sean F. Heneghan.  Respondent is Phayze, Inc., Paris, FRANCE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <upomise.com>, registered with I.D.R. Internet Domain Registry Ltd.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 30, 2003; the Forum received a hard copy of the Complaint on June 2, 2003.

On June 3, 2003, I.D.R. Internet Domain Registry Ltd. confirmed by e-mail to the Forum that the domain name <upomise.com> is registered with I.D.R. Internet Domain Registry Ltd. and that Respondent is the current registrant of the name. I.D.R. Internet Domain Registry Ltd. has verified that Respondent is bound by the I.D.R. Internet Domain Registry Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 26, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@upomise.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <upomise.com> domain name is confusingly similar to Complainant’s UPROMISE mark.

2. Respondent does not have any rights or legitimate interests in the <upomise.com> domain name.

3. Respondent registered and used the <upomise.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Since July 12, 2000, Complainant has used the UPROMISE mark in providing services that help companies give families money back for college education.  Complainant has several registrations for the mark with the U.S. Patent and Trademark Office (“USPTO”) including, Reg. Nos. 2,618,696 (registered September 10, 2002) and 2,669,900 (registered December 31, 2002).  The filing date for these two registrations was April 14, 2000, and October 19, 2000 respectively.  Furthermore, Complainant owns applications and or registrations for the UPROMISE mark in Australia, Canada and with the European Union.  Complainant’s European Union registration was filed on February 4, 2002 and was published May 5, 2003 (Application No. 2,561,561).

In addition, Complainant uses the <Upromise.com> domain name in conjunction with the services it provides its customers. 

Respondent registered the disputed domain name on March 29, 2002.  Respondent is using the disputed domain name to redirect Internet traffic to the <hanky-panky-college.com> and <yes-yes-yes.com> domain names.  The former is an adult oriented website and the latter is a website that provides links to other commercial websites.  In addition, when Internet users access Respondent’s <upomise.com> domain name, a series of “pop-up” windows appear that contain commercial advertisements. 

DISCUSSION

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the UPROMISE mark through registration with the USPTO, other registration authorities, and through use in commerce.  Complainant’s statutory rights in the UPROMISE mark dates back to the time of filing with the USPTO, i.e. April 14, 2000.  See FDNY Fire Safety Educ. Fund, Inc. v. Roger Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <upomise.com> domain name is confusingly similar to Complainant’s UPROMISE mark because the disputed domain name includes Complainants mark and merely omits the letter “r” from the mark.  The misspelling of Complainant’s mark causes Internet users to be confused and may lead to the mistaken belief that the disputed domain name is associated with Complainant.  Therefore, the disputed domain name is confusingly similar pursuant to Policy ¶ 4(a)(i).  See Ameriquest Mortgage Co. v. Phayze, Inc., D2002-0861 (WIPO Nov. 7, 2002) (finding that Respondent’s domain name, <ameriquestmortage.com>, is confusingly similar to Complainant’s AMERIQUEST MORTGAGE mark because the domain name merely omitted the letter “g” from the word “mortgage”); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark).

The Panel finds that Complainant established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant claims that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent capitalizes on Internet users who misspell Complainant’s mark. 

Due to Respondent’s failure to dispute the allegations in the Complaint, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <upomise.com> domain name to redirect Internet users to an adult oriented website and to other commercial advertisements.  This use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).

Furthermore, Respondent is not affiliated with Complainant and the evidence fails to establish that Respondent is authorized or licensed to register or use domain names or marks containing the UPROMISE mark.  Also, the WHOIS information for the <upomise.com> domain name identifies Respondent as the registrant but does not prove that Respondent is an “individual, business, or other organization” commonly known by the <upomise.com> domain name or the UPOMISE name.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has engaged in the practice of “typosquatting” by misspelling Complainant’s mark in order to divert Internet users to an adult oriented website.  Respondent’s “typosquatting” constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).

In addition, Respondent’s domain name tarnishes Complainant’s mark, because the disputed domain name redirects Internet users that misspell Complainant’s website address to an adult oriented website and other commercial websites that are not associated with Complainant.  Also, Respondent has attempted to commercially gain from the confusingly similar domain name through this diversionary practice.  Respondent’s activities constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Complainant having established all three elements as required under ICANN Policy, the Panel concludes that the relief  requested  should be GRANTED.

Accordingly, it is Ordered that the <upomise.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  July 16, 2003

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