WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Christopher High
Case No. DCO2014-0031
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A., Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Christopher High, United Kingdom of Great Britain and Northern Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <wave2pay.co> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2014. On November 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2014, the Registrar 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" or "UDRP"), 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 November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. The Response was filed with the Center on December 4, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on December 17, 2014. 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.
The Complainant submitted an unsolicited supplemental filing entitled "Further observations in the name of the Complainant" (hereinafter "Complainant's Supplemental Filing") on December 9, 2014. The Rules vest in panels the sole discretion to determine the admissibility of unsolicited supplemental filings. In this instance, the Complainant's unsolicited supplemental submission does little more than reframe the arguments and positions advanced in the Complaint. The Panel in its discretion has determined not to accept the Complainant's supplemental submission, and has not needed to consider it in reaching a decision in this matter.
4. Factual Background
The Complainant is a leading bank group headquartered in Italy and also operates subsidiary banks in countries in Central-Eastern Europe and the Mediterranean basin. The Complainant is the owner of an Italian trademark registration for WAVE 2 PAY, applied for on November 8, 2013, and granted on June 4, 2014. The registration claims goods and services in International Classes 9, 16 (including computer software), 36 (banking and financial services), and 38 (telecommunications). The Complainant has designated the WAVE 2 PAY mark for protection under the Madrid Protocol in additional jurisdictions, including among others Croatia and Slovakia. Additionally, the Complainant also owns a figurative Community Trade Mark (CTM) registration for WAVE 2 PAY issued on June 30, 2014, as depicted below, in the same International Classes.1
The Complainant has registered domain names incorporating "Wave 2 Pay" or Wave To Pay". This includes the domain name <wave2pay.com>, which was registered by the Complainant on October 30, 2013. It appears from the record that the Respondent previously had registered this domain name on January 29, 2008, but did not renew the registration in 2011.
The Complainant has submitted evidence that two of its subsidiary banks in Eastern Europe – the Croatian PBZ Privredna Banka Zagreb (PBZ) and the Slovakian VUB Banka (VUB) – share common mobile application software called "WAVE 2 PAY", which is used for internet banking transactions. The record does not reflect the date upon which such use was commenced.
The Respondent registered the disputed domain name <wave2pay.co> on October 11, 2014, according to the concerned Registrar's WhoIs records. Previously, the Respondent on January 14, 2012, registered the domain name <wave2pay.co.uk>. Both of these domain names currently redirect Internet users to the Respondent's Keyphrase Domains website "www.keyphrasedomains.co.uk", on which domain names held by the Respondent are offered for sale.
The Complainant has submitted a screenshot of the Keyphrase Domains website captured on November 11, 2014, listing both the disputed domain name and the domain name <wave2pay.co.uk> as for sale. There is also an explanation by the Respondent that "Wave2Pay would be a good term for a NFC contactless payment technology."
5. Parties' Contentions
A. Complainant
The Complainant describes itself as leading Italian banking group and also one of the protagonists in the European financial arena. The Complainant was formed by the 2007 merger of the Italian bank groups Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. According to the Complainant, in addition to being the undisputed leader in Italy, the Complainant has a strong presence in Central-Eastern Europe and supports customers in 29 countries where Italian companies are active, including the Mediterranean area, the United States of America, the Russian Federation, China, and India.
The Complainant submits that the disputed domain name is identical to its WAVE 2 PAY mark. The Complainant avers that the Respondent has no relationship to the Complainant, has not been authorized to use the Complainant's WAVE 2 PAY mark or to reflect the Complainant's mark in a domain name, and has not been commonly known by the disputed domain name. The Complainant asserts that the Respondent is not making a legitimate fair or noncommercial use of the disputed domain name, and that the disputed domain name is not being used in connection with any bona fide offering of goods or services.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that its WAVE 2 PAY mark is distinctive and well known around the world, and that the Respondent's registration of a domain name that is identical to the Complainant's mark indicates that the Respondent was aware of the Complainant's mark when registering the disputed domain name. According to the Complainant, even a cursory Google search by the Respondent would have yielded obvious references to the Complainant, and the Complainant submits its own search report in support thereof.
In light of the foregoing, and in the absence of any bona fide use of the disputed domain name or demonstrable preparations by the Respondent to make such use, the Complainant infers from the circumstances at hand that the Respondent's primary intent in registering the disputed domain name was to sell or otherwise transfer the domain name to the Complainant or one of its competitors for valuable consideration in excess of the Respondent's documents out-of-pocket costs directly related to the disputed domain name. The Complainant also makes reference to the screenshot of the Respondent's Keyphrase Domains website captured on November 11, 2014, in which the disputed domain name and the domain name <wave2pay.co.uk>, also registered by the Respondent, are offered for sale.
B. Respondent
The Respondent concedes that the disputed domain name is identical to the term in which the Complainant asserts trademark rights, but the Respondent maintains that it is unfair for the Complainant to be granted trademark rights in the terms "wave 2 pay" or "wave to pay". First, the Respondent submits he has legitimate, prior and pre-eminent rights to the term "wave 2 pay" arising from his registration of the domain name <wave2pay.co.uk> on January 14, 2012. According to the Respondent, he was the first person in the world to think of the term "wave 2 pay", which demonstrates his intent to use the term for commercial purposes, and confers upon him pre-eminent rights for such purposes.
The Respondent further asserts a belief that the term "wave 2 pay" is generic, by which he means a term which constitutes an everyday human action that many people would need to perform and that no one party could claim exclusive rights to. The Respondent argues that a generic term is not entitled to trademark protection, and characterizes his registration of <wave2pay.co.uk> in January 2012 as an example of a "future generic term", occurring only when the introduction of Near Field Technology (NFC) allows people to make payments by waving their mobile phone over a reader. The Respondent predicts that as the technology advances more and more people will undertake the everyday generic action of "wave to pay", represented by the term "wave 2 pay".
Along similar lines, the Respondent submits that "wave 2 pay" is descriptive of what will become a common everyday action, and therefore incapable of distinguishing one enterprise from another. According to the Respondent, as the term "wave 2 pay" is not capable of distinctiveness no trademark should have been granted. The Respondent suggests that to make their enterprise distinguishable from those of others the Complainant would need to incorporate a unique and distinct identifier such as their enterprise name.
The Respondent submits that it was not until October 13, 2013, that the Complainant registered its first domain name containing "wave 2 pay" – namely, <wave2pay.sk>. The Respondent maintains that the Complainant did not register the domain name <wave2pay.com> until October 30, 2013, and only then because, according to the Respondent, he made a "business error" in not renewing the registration. The Respondent represents that he registered <wave2pay.co.uk> and the disputed domain name in good faith as generic domain names that could either be developed by him or offered for sale. From this, the Respondent contends he has established his clear intent to make a commercial use of the disputed domain name.
The Respondent does not object to the Complainant's to the use of the term "wave 2 pay" in its business activities, but objects to the Complainant's claim to have exclusive rights to "wave 2 pay", and asserts that if anyone is to have trademark rights to the term it should clearly be him, based on his prior and pre-eminent rights. The Respondent argues that the Complainant should have checked all WhoIs databases before seeking to register the term, as such a search would have shown the Respondent's active registration of <wave2pay.co.uk>, demonstrating his intent to use the term for commercial purposes. The Respondent concedes he was aware of the Complainant's registration of <wave2pay.com> before registering the disputed domain name, but insists he did so as a "defensive" registration to defend his prior rights.
The Respondent maintains he has established rights or legitimate interests in the disputed domain name because it is a generic term that corresponds to the future service that he envisaged. The Respondent asserts he has the capacity to build a "wave 2 pay" mobile app for making payments with a mobile phone using NFC technology. The Respondent repeats that he was the first person to think of the term "wave 2 pay" as one that would someday become a commercially viable generic term, and the first to register domain names using the term with a view to launching a commercial NFC mobile payment app in the UK, but only "when market conditions are right." According to the Respondent, it is still too early to launch such a mobile app, but he urges that this should not affect his prior rights in relation to the disputed domain name.
The Respondent explains he has the capability to launch a commercial service using a domain name because he is an expert in web and software development, and operates a "one man" business registering generic domain names either to build commercial services himself, or sometimes to sell to others. The Respondent asserts that since November 2003 he has developed over 90 generic domain names into commercial services. The Respondent concludes that he has therefore demonstrated a legitimate interest in respect of the disputed domain name.
The Respondent maintains that it would have been impossible for him to register and use the disputed domain name in bad faith because "wave 2 pay" is generic, and thus cannot give rise to enforceable trademark rights by the Complainant. The Respondent asserts that in such circumstances he should be the rightful owner of exclusive rights in the disputed domain name. The Respondent reiterates his belief that the Complainant's mark is not distinctive, and observes that it cannot possibly be well known around the world, since it has been used only in Slovakia and Croatia.
The Respondent denies any knowledge of the Complainant's mark prior to his receipt of the Complaint. The Respondent represents that he did not reasonably expect that the term "wave 2 pay" could be registered as a trademark. The Respondent further asserts that he had no easy way to discovery the Complainant's registration of the WAVE 2 PAY mark, but would have objected had he been aware.
The Respondent acknowledges that he has offered the disputed domain name for sale on his Keyphrase Domains website, but he also claims that as early April 15, 2012, he already was offering for sale on the Keyphrase Domains website both <wave2pay.com> and <wave2pay.co.uk>, long before the Complainant had ever made use of the term. According to the Respondent, this can be confirmed by a screenshot on www.archive.org (better known as the "Internet Archive Wayback Machine").
The Respondent submits that he operates the Keyphrase Domains website as part of a legitimate business model. According to the Respondent, the selling of domain names is his secondary purpose, with the primary purpose being developing the domain himself when conditions allow. He explains that an offer on one of his domain names can give him an "early profitable exit", should he chose to take it. The Respondent represents that his business model involves only the sale of "high quality generic domain name" on the Keyphrase Domains website, that he has developed 97 generic domain names for commercial purposes, and sold 32 generic domain names to others.
The Respondent complains that the Complainant's registration of the WAVE 2 PAY mark is unfair and commercially damaging to him because it restricts what the Respondent maintains is a "legitimate prior right to offer generic domains involving the term 'wave 2 pay' for sale." The Respondent observes that the Complainant's trademark unfairly decreases that value of what he believes is a generic domain name, as any buyer could face claims trademark infringement by the Complainant.
The Respondent notes that he has not disrupted the business of the Complainant because he has not offered to sell the disputed domain name to the Complainant, and he reiterates that his primary purpose in registering the disputed domain name was to "defend his prior and pre-eminent rights to develop a "wave 2 pay" mobile phone app for the UK market, when market conditions are suitable."
The Respondent thus concludes that he should be allowed to retain ownership of the disputed domain name based on his prior and pre-eminent rights in the term "wave 2 pay," and to put it to the commercial uses he has described.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant's WAVE 2 PAY mark, with respect to which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain name is identical to the Complainant's mark for purposes of the Policy.
As noted earlier, the Respondent acknowledges that the disputed domain name is identical to the Complainant's mark, but argues that the Panel should give no weight to the Complainant's registration of the WAVE 2 PAY mark on the grounds that the mark is either generic or merely descriptive with respect to the Complainant's goods and services. The Panel is not persuaded by the Respondent's argument.
The Panel notes that the Italian Trademark Office examines trademark applications for descriptiveness and distinctiveness. Further, the registration of the Complainant's WAVE 2 PAY mark by the Italian Trademark Office constitutes prima facie evidence of ownership and validity. The registration of the Complainant's WAVE 2 PAY mark thus reflects the Italian Trademark Office's official determination that the mark is capable of distinguishing the Complainant's goods and services from those of others and that the mark does not function solely to provide information about the Complainant's goods and services associated with the mark. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (<creditkeeper.com>) (USPTO's registration of the CREDITKEEPER mark on its principal register constitutes an official determination that the mark is not descriptive with respect to the debt deferment and credit reporting services for which it was registered).3
Further, while "wave" and "pay" may be generic in the sense that they are both dictionary words, the term "wave 2 pay" is not a dictionary word, and the Respondent has provided no evidence of any claimed generic or descriptive use of "wave 2 pay" by third parties. The Respondent's professed belief that "wave 2 pay" would be a good term for a NFC contactless payment technology, without more, is not evidence that the Complainant's mark is a generic term for near field communication technology, nor evidence that the mark functions solely to provide information about the Complainant's product.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent, despite his previous registrations of <wave2pay.com> and <wave2pay.co.uk>, has not been commonly known by these domain names or by the disputed domain name. The Respondent, without the Complainant's authorization or consent, registered the disputed domain name, which is identical to the Complainant's WAVE 2 PAY mark, and which the Respondent is offering for sale on his Keyphrase Domains website.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent asserts that he has established rights or legitimate interests in the disputed domain name based on making a good faith, descriptive use of the disputed domain name prior to notice of this dispute. A number of UDRP panels have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, at least in circumstances indicating that the respondent was not aware of the complainant's trademark rights or believed in good faith that such use would not violate the complainant's rights. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. Similarly, the registration of a domain name in order sell it to a third-party is not a violation per se of the Policy, provided that the respondent is not seeking to capitalize on the goodwill created by the trademark owner. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
Thus, where a respondent registers a domain name consisting of "dictionary" terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.
The Panel considers that the Respondent at the time of registration could not have formed a good faith belief that the disputed domain name's value derived from generic or descriptive qualities – at least not without turning a blind eye to the fact that the disputed domain name was identical to the Complainant's registered trademark. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. The Respondent, a sophisticated user of the Internet, had actual knowledge of the Complainant's ownership of <wave2pay.com> when registering the disputed domain name. The Respondent's insists that his registration of the disputed domain name was a purely defensive move, but if so this is an action that in the Panel's view belies the Respondent's claim that he was not aware and could not reasonably have been aware of the Complainant's trademark rights. Even a cursory Internet search at the time of registration likely would have shown that WAVE 2 PAY was the Complainant's trademark.
The Respondent has offered the disputed domain name for sale with the explanation that "Wave2Pay" would be a "good term for a NFC contactless payment technology." As noted earlier, the term "wave 2 pay" is not itself a dictionary word, and there is no indication in the record of third-party use of this term in a generic or descriptive sense in relation to near field communication technology. In fact, as far as the Panel can see from the evidence of record, the only evidence of the commercial use of this term with such technology is the Complainant's use of the WAVE 2 PAY mark. Given the totality of circumstances, the Panel is of the view that the Respondent at the time of registration could not reasonably have formed a good faith belief that the disputed domain name's value derived from its generic or descriptive qualities, instead of its value as a trademark.
The Respondent also argues that his registrations of <wave2pay.com> and <wave2 pay.co.uk> prior to the Complainant's adoption of the WAVE 2 PAY mark establish prior rights that inure to the benefit of the disputed domain name. The Respondent avers that all three of his "wave2pay" domain name registrations manifest a continuing intent "to develop a "wave 2 pay" mobile phone app for the UK market, when market conditions are suitable." The Respondent, however, has not developed a mobile phone app or presented any evidence whatsoever of any demonstrable preparations to do so. Mere assertions of intent are not enough to satisfy Paragraph 4(c)(i) or 4(c) (iii) of the Policy. See Van Halen v. Morgan, WIPO Case No. D2000-1313.
As such, the Respondent's argument fundamentally misperceives the Policy and its objectives. In the circumstances of this case, the Respondent cannot rely on his previous domain name registrations without more as a basis for rights or legitimate interests in the disputed domain name. Prior to the Respondent's registration of the disputed domain name, the Complainant developed and launched mobile application software for internet banking transactions respecting which it has registered and is using the WAVE 2 PAY mark. As noted earlier, the Respondent was aware of the Complainant's registration of <wave2pay.com> when registering the disputed domain name. The Respondent describes this as a defensive registration, but this in the Panel's view strongly implies that the Respondent was aware of the Complainant's launch of its WAVE 2 Pay mobile application software.4 The Panel notes that paragraph 2 of the Policy (at least) implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.5
In sum, record does not reflect the Respondent's use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to any notice of this dispute, or any legitimate noncommercial or fair use of the disputed domain name. It is uncontested that the Respondent has not been commonly known by the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The issue of bad faith registration generally is to be determined with reference to the time the Respondent registered or acquired the disputed domain name. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra. The Panel considers that the Respondent at the time of the registration could not reasonably have formed a good faith belief that the disputed domain name's value derived from generic or descriptive qualities. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. The disputed domain name is identical to the Complainant's mark, and there is no indication in the record of any appreciable generic or descriptive use by third parties. The Respondent was aware of the Complainant's ownership of <wave2pay.com> when registering the disputed domain name, and most likely was aware of the Complainant's use of the WAVE 2 PAY mark with mobile application software, for the reasons previously discussed.
The Panel, having regard to the totality of facts and circumstances in this case, thus considers it most likely that the Respondent was aware of the Complainant and its rights in the WAVE 2 PAY mark when registering the disputed domain name. The Panel further considers that the Respondent's primary aim in registering the disputed domain name and offering it for sale was to profit from and exploit the Complainant's rights. See Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044. This constitutes bad faith registration and use within the contemplation of paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <wave2pay.co> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: December 31, 2014
1 The Complaint refers to another CTM application for the word mark WAVE 2 PAY submitted by the Complainant. The application was filed on October 28, 2013. As noted in the Response, but not disclosed in the Complaint, this registration has been refused and is on appeal. The Panel confirmed this by visiting OHIM's publically available online trademark database. The Panel, when visiting the OHIM trademark database, also learned that the Complainant had obtained a Community Trade Mark registration for the figurative (design plus words) WAVE 2 PAY mark shown above.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.
3 Community Trade Marks also are examined in respect of descriptiveness and distinctiveness. As previously noted, the Complainant's application to register the word mark WAVE 2 PAY has been refused by OHIM and is on appeal. However, a refusal to register a Community mark based on nondistinctiveness may be overcome by a showing of acquired distinctiveness.
4 The Respondent has offered no explanation why, already having possession of a UK domain name registration for purposes of his professed desire to develop a "wave 2 pay" mobile phone application for the UK market, he would need for
5 Paragraph 2 of the Policy, "Your Representations", is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:
By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights. (emphasis added).