Telpay.mobi

The timeline behind telpay.mobi

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION TelPay Inc. v. Metrics Media Claim Number: FA0710001100419 PARTIES Complainant is TelPay Inc. (“Complainant”), represented by Alan Beaton, 298 Garry Street, Winnipeg, MB R3C 1H3, Canada. Respondent is Metrics Media (“Respondent”), represented by Claude Drakes, of Metrics Media, 1029 Thomas S. Boyland St., Brooklyn, NY 11212. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <telpay.mobi>, registered with GoDaddy.com, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. David S. Safran, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2007. On October 22, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <telpay.mobi> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 November 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 2007 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@telpay.mobi by e-mail. A Response was received and determined to be complete on November 27, 2007. However, the Response was late pursuant to ICANN Rule 5. On December 9, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS Complainant asserts that: 1. The domain name <telpay.mobi> registered by the Respondent is identical to Complainant’s registered trademarks, and other of its domain names, such as, <telpay.ca>, <telpay.com>, etc. 2. The Respondent should be considered as having no rights or legitimate interests in the domain name because: (a) It has offered it for sale to Complainant; (b) There is no indication that it is used in support of a legitimate business; (c) It has been used to provide a link to other bill payment services, some of which are competitors of Complainant; (d) Complainant provides a sensitive financial service which requires it to ensure that no other party attempts to imitate it. 3. The domain name should be considered registered and used in bad faith because: (a) It was offered for sale to Complainant; (b) It was registered when the domain became available even though there was no known reason why it should have been requested by the Respondent; (c) It has recently had a page of links to other businesses that are similar to Complainant, also being financial services providers, in an apparent effort to make it appear to have a use. Some of those links would never be made by Complainant and could be harmful to Complainant and the other Party. B. Respondent Respondent contends that: 1. The domain name is not confusingly similar: (a) as applied to Respondent’s services, (b) The words “TEL” and PAY” of which the domain is comprised are two generic and commonly used words or abbreviations, and means things other than the Complainant’s trademark, (c) Various third parties own domain names consisting of the words “TEL” and “PAY,” (d) Complainant has not established that it had rights in the trademark “TELPAY” standing alone, its marks being design marks and containing a disclaimer of the words “TEL” and “PAY“ apart from the marks as a whole. 2. The Respondent has rights and legitimate interests in the domain because: (a) It was not registered with the intention of selling it to the Complainant, it was the Complainant who first contacted Respondent for the purpose of purchasing the domain, (b) While waiting for the intend website to be developed and come online, the domain was resolved to a generic search engine containing links to various other websites offering for sale, or otherwise related to, various categories of products and services with the resulting web page being automatically optimized to provide contextually related advertising and other information and thus any results are not due to the actions of Respondent. 3. The Respondent did not register and is not using the domain in bad faith because: (a) Registering and holding a domain name for future development in regards to an existing business or a project in development does not in itself constitute bad faith, but rather demonstrates the reality of operating a business in today’s e-commerce environment. (b) That Respondent register the domain for, and is developing a business called “Mobile Telephone Payment Systems” with which customers can pay their mobile telephone bill, and purchase prepaid mobile phones and phone cards, relative to which the public would not in any way be confused, deceived or call to mind an association between the business outlined for the domain name <telpay.mobi> and the Complainant’s trademarks. (c) Complainant’s trademark is not well-known, except maybe in Canada, and the Complainant did not provide any documents showing the famous character of the trademark “TEL-PAY,” even in Canada and the domain <telpay.mobi> was selected with no knowledge of the Complainant or its activity, and the Complainant has failed to provide proof to the contrary. FINDINGS The domain <telpay.mobi> is composed of generic terms in use in the same combination by various parties, and Complainant has failed to establish a reasonable likelihood that Respondent had any knowledge of its trademarks at the time that the domain was registered. Complainant has also failed to establish that the domain was registered for the purpose of resale and has provided no evidence demonstrating a pattern of such activity on the part of Respondent. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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 Since it has been found that the domain was not registered in bad faith, this element need not be addressed. Rights or Legitimate Interests Since it has been found that the domain was not registered in bad faith, this element need not be addressed. Registration and Use in Bad Faith Respondent contends that it registered the disputed domain name for a client with the intention of establishing a mobile telephone services website, and that it was not aware of any rights that Complainant may have in the TELPAY mark. The Panel finds that Respondent has not registered or used the <telpay.mobi> domain name in bad faith since it finds that Complainant has not established that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)). Moreover, Respondent contends that the <telpay.mobi> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s TELPAY mark and are in use in domain names owned by various third parties. Given that fact that Respondent’s client, the real party in interest here, is located in Guyana and Complainant has provided no evidence to indicate that its marks are known outside of Canada, the Panel finds the fact that the <telpay.mobi> domain name is comprised entirely of common terms and are in use in domain names owned by various third parties to indicate that Respondent did not register and use the <telpay.mobi> domain name in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith). DECISION Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <telpay.mobi> domain name be RETAINED by Respondent. David S. Safran, Panelist Dated: December 20, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.