WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chase Paymentech Solutions LLC v. Rob Kim
Case No. D2008-0390
1. The Parties
The Complainant is Chase Paymentech Solutions LLC, Dallas, Texas, United States of America, represented by Hitchcock Evert LLP, United States of America.
The Respondent is Rob Kim, Suva, Fiji.
2. The Domain Name and Registrar
The disputed domain name <chasepaymenttech.com>isregistered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2008. On March 12, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 12, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on April 21, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is in the business of assisting merchants to process credit and debit card transactions, acting as an interface between the merchants and the card networks, such as Visa and Mastercard. The business started in 1985 and by 2007, it was the world’s largest in its sphere of operations. The mark PAYMENTECH has been used in connection with the business since 1996. In 2004, J.P. Morgan Chase & Co became the majority owner of the Complainant and in 2006 added its mark CHASE to the name PAYMENTECH. This is now used to identify the Complainant’s business.
The Complainant is licensed by J.P. Morgan Chase & Co to use the CHASE mark. Paymentech LLC, a wholly-owned operating subsidiary of the Complainant, is the owner of the US trademark registration 2360495 for the mark PAYMENTECH dated June 20, 2000, 2206259 dated November 24, 1998 and 2674223, dated January 14, 2003 and 2703853 dated April 8, 2003. J.P. Morgan Chase & Co. own a US trade mark for CHASE number 2368015 dated July 18, 2000 among others. The CHASE mark has been used since 1877 when Chase National Bank, one of the predecessors of J.P. Morgan Chase & Co started in business.
The disputed domain name was created on January 10, 2007.
5. Parties’ Contentions
A. The Complainant
These are the Complainant’s contentions. The Panel does not necessarily accept them in their entirety.
The Complainant is the licensee of the CHASE trademark and the 100% owner of the owner of a trademark registration for the name PAYMENTECH.
The mark, PAYMENTECH, has been used in connection with the Complainant’s business continuously since May 1996. In 2006, the Complainant added the mark CHASE, with the permission of J.P. Morgan Chase & Co to the name. Since then, CHASE PAYMENTECH has been used as a service mark to identify the Complainant’s business. The Complainant claims to be entitled to common law trademark rights in relation to the mark CHASE PAYMENTECH.
The components of the mark are each separately registered on the Principal Trademark Register of the U.S. Patent and Trademark Office. The Complainant is a related company to the owners of both the CHASE and PAYMENTECH marks. The owner of the CHASE service mark has expressly licensed Chase Paymentech to use that mark. An entity that is licensed to use a mark is recognized as having “rights” in the mark sufficient to satisfy the requirements of Paragraph 4(a)(i) of the Policy.
The Respondent has registered a domain name which is confusingly similar to the Complainant’s domain name <chasepaymentech.com>, as well as its service mark CHASE PAYMENTECH. The only difference is the Respondent’s addition of the letter “t” to produce a double “tt”, which is virtually indistinguishable in appearance, sound and implication from the form used by the Complainant.
There is no evidence to suggest that the Respondent has ever used the domain name and/or a name closely corresponding to the Complainant’s mark, CHASE PAYMENTECH, prior to the Complainant’s first use of the service mark CHASE PAYMENTECH in 2005, nor, of course, the much earlier first uses of the marks CHASE and PAYMENTECH by the respective owners of those marks. The sole purpose of the Respondent’s selection of the disputed domain name was to capitalize improperly on the reputation and goodwill established by the Complainant and its licensors by capturing people trying to reach the Complainant’s web who mistype the domain name. Under these circumstances, the Respondent’s registration and use of the disputed domain name cannot constitute a “fair use.”
The web page to which the Respondent’s domain name links includes links to “Credit Card Processing”, “Credit Card Merchant Account”, “Merchant Account Services”, and “Accept Credit Card” which are services provided by Chase Paymentech. Clicking on the links on the Respondent’s web pages connect to web sites promoting Chase Paymentech’s competitors. Comparing the web page with the Complainant’s web pages, it is clear that The Respondent is attempting to deceive consumers.
The Respondent’s selection of a domain name that is virtually identical (except for the doubling of the centrally located “t” within the Complainant’s service mark) to the heavily promoted and well-recognized service mark of the Complainant clearly indicates a bad faith intent. The Respondent’s decision was part of a scheme to attract, for commercial gain, Internet users to The Respondent’s website by creating a likelihood of confusion with the Complainant’s domain name and its mark CHASE PAYMENTECH. The Respondent has not only copied the Complainant’s service mark, but the Respondent’s web site also provides similar functions to the Complainant’s web site. Typosquatting, in and of itself, is evidence of bad faith.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is a marginally misspelt version of a combination of two service marks. One is owned by the Complainant’s majority owner who has licensed the Complainant to use it. The other is owned by the Complainant’s wholly owned subsidiary.
Other WIPO Panel decisions have regarded a domain name that is confusingly similar to a combination of trademarks in which the Complainant has rights as being “confusingly similar to a trademark or service mark in which the Complainant has rights”: Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao (aka Tyou Star) (“Zhao”) WIPO Case No. D2000-0717 and Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112. Here, the disputed domain name is, in any event, a combination of the Complainant’s subsidiary’s mark very slightly misspelt and a generic word “Chase”. The addition of a generic word does not generally remove the confusing similarity that would otherwise exist between the rest of the domain name and a trademark. The Panel reached such a conclusion in relation to a <chasewallmart.com> in Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 saying:
“it is evident that the twenty-three Domain Names at issue are confusingly similar with the Complainant’s mark, where the latter is included in its entirety in the twenty-three Domain Names. The mere addition of the words “chase”, … or “wire” is too tenuous and insubstantial to detract from this conclusion.”
The trademark PAYMENTECH is sufficiently distinct in its own right that the addition of the word “chase” and a marginal misspelling still make the domain name confusingly similar to it. The misspelling does not make the phonetic sound of the word “paymenttech” any different from PAYMENTECH, the trademark in which the Complainant claims to have rights.
The second issue is whether the Complainant has sufficient rights to the PAYMENTECH trademark to be entitled to make the Complaint. Ideally, the Complainant should always be the trademark owner. The expression “trademark or service mark in which it has rights” is ambiguous as to whether this extends beyond the owner of the mark. Nevertheless, the overwhelming majority of Panellists, faced with this issue, have concluded that it is sufficient for the Complainant to have the right to use the trademark to be able to prove that it has rights in the relevant mark. If ICANN was dissatisfied with this interpretation, one would have expected it to have either clarified the provision or changed it.
The trademark owner is a wholly-owned subsidiary of the Complainant. The Complainant has used the mark PAYMENTECH on its website since at least 2005. If the subsidiary had any right to object to this, it would have long since lost it by waiver. Indeed, the logical assumption must be in this type of situation that the subsidiary has licensed the parent company to use its trademark. Under the majority interpretation of the Policy, that is sufficient to give it rights in a trademark to which the domain name is confusingly similar. For these reasons, the Panel concludes that the Complainant has satisfied the first element of the policy.
B. Rights or Legitimate Interests
The Respondent is apparently not called “Paymenttech” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant or any member of the Complainant’s group has authorized the Respondent to use its trademark. The Respondent has not here asserted any rights or legitimate interests in that name.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The name, “Paymenttech” has no independent existence or meaning except as a misspelling of the Complainant’s subsidiary’s trademark. The latter was registered before the domain name in issue. It is impossible for the Panel in these circumstances, at least without a Response to the Complaint, to identify a reason why the Respondent registered the domain name in issue other than to attract business or Internet users to its site who were looking for a site connected to the Complainant’s business or its subsidiary’s trademark.
The only reasonable explanation of what has happened is that the Respondent’s motive in registering and using the sites seems to be, as the Complainant says, simply to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy.
This conclusion is supported by the view expressed in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568:
“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source” of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services.”
For all these reasons, the Panel concludes that the domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <chasepaymenttech.com> be transferred to the Complainant.
Date: May 5, 2008