Wednesday , August 17 2022

Pay.com UDRP Fails: Should Have Been RDNH

A UDRP was filed against the Pay.com domain name at the National Arbitration Forum (NAF). The decision was published today, and unsurprisingly, the panel found in favor of the domain registrant. I think the panel should have ruled that this was an abusive UDRP filing and found this to be Reverse Domain Name Hijacking (RDNH). The panelists on this UDRP were Dawn Osborne, Sandra J. Franklin and Nathalie Dreyfus.

As I mentioned on Twitter when I first noticed the UDRP filing, Pay.com is used and branded by a company doing business as Pay.com:

The panel agreed that the Pay.com domain name was confusingly similar to the complainant’s PAYCOM trademark. Yes, I agree they are very similar, and I would also think they are one and the same if I knew nothing about either company other than the trademark. That’s the only success the complainant had in this decision.

In a UDRP proceeding, the complainant also needs to prove the registrant doesn’t have rights or legitimate interests in the domain name. In addition, the complainant needs to prove the domain name was registered and is being used in bad faith. When it comes to generic domain names like Pay.com, these elements are often very challenging to prove. The more generic a domain name, the more difficult to prove.

When it came to discussing the registrant’s rights and legitimate interests in the domain name, the complainant didn’t come close to proving this. In fact, anyone who even took a 30 second look at the website could see this. Here’s what the panel wrote in the decision:

“Respondent however asserts that the disputed domain name is being used in connection with a bona fide offering of services under Policy ¶ 4(c)(i), and provides evidence that Respondent uses the domain name to offer a software platform for facilitating financial transactions.

Therefore, the Panel finds that Respondent has rights in the disputed domain name because it is making a bona fide use of it, but also because the word “pay” is a generic word, which can be used by anyone, even to compete with Complainant. Respondent is not even using the domain name to compete directly with the Complainant. The services offered by Respondent are different than those offered by Complainant. There is also no similarity in trade dress or confusing wording.”

With this finding, the panel wouldn’t have even needed to consider whether or not the domain name was registered and used in bad faith. The complaint is DOA. However, the panel ruled on this element as well:

“Respondent argues that the disputed domain name was registered and is used in good faith, as the domain name is related to Respondent’s business. As previously noted, Respondent provides supporting screenshots of the resolving webpage and services offered, as well as an affidavit by Respondent’s CEO. See Resp. Annex 4-5.

The Panel thus finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

Further, and as previously explained, the Panel finds that Respondent has rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). Therefore, Respondent cannot have registered or used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).”

Pay.com may be worth 8 figures without considering the business. In my opinion, this appears to be an attempt to wrest control of a valuable domain name inexpensively via the UDRP. I think this should have been considered an abusive filing. I was surprised the panel did not consider RDNH.




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