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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SurePayroll, Inc. v. Texas International Property Associates

Case No. D2007-0464

 

1. The Parties

Complainant is SurePayroll, Inc. (“Complainant”), Glenview, Illinois, United States of America.

Respondent is Texas International Property Associates (“Respondent”), Dallas, Texas, United States of America.

2. The Domain Name and Registrar

The domain names at issue are <surpayroll.com> and <surepayrol.com> (the “Disputed Domain Names”). The registrar is Compana, LLC d/b/a budgetnames.com (the “Registrar”).

3. Procedural History

On March 26, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On March 29, 2007, the Center received hardcopies of the Complaint. On March 29, 2007, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On April 19, 2007, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Disputed Domain Names and that the Disputed Domain Names are registered in the Respondent's name.

The Center verified that the Complaint satisfies 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 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 Respondent of the Complaint, and the proceedings commenced on April 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2007.

On May 10, 2007, the Center received the Response of Respondent. Complainant subsequently asked for permission to file a supplemental pleading. Respondent objected to any supplemental submissions. The Center advised the parties that permission to file supplemental submissions is within the discretion of the Panel once appointed.

On May 23, 2007, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel. Having review the request for supplemental submission and the objection, the Panel hereby denies the application of Complainant to file a supplemental submission.

4. Factual Background

Complainant is America’s fifth largest full-service payroll provider and the leading online payroll provider in the United States of America. Complainant was ranked 194 in the most recent edition of the prestigious Inc. 500 list of the fastest-growing U.S. companies. Complainant was the first to market an online payroll processing service, and now services over 17,000 small businesses. Since its inception, the company has processed over one million payrolls. Complainant has achieved over 610% sales growth in the past 3 years.

As an online payroll provider, Complainant provides its services principally via the Internet and promotes and provides services via its <surepayroll.com> domain name. Complainant is the owner of the trademark SUREPAYROLL and the associated goodwill. Complainant has received federal registrations on the Principal Register of the United States Patent and Trademark Office for several trademarks containing the principal element SUREPAYROLL. Complainant’s trademarks and registrations shall be collectively referred to as “the Marks.”

Complainant’s first use of the <surepayroll.com> domain name, first use of the Marks and registration of one of its Marks all predate the registration by Respondent of the Disputed Domain Names. Complainant has spent substantial amounts on extensive advertising covering a number of online and hardcopy media.

5. Parties’ Contentions

A Complainant’s contentions

(i) Complainant contends that it has registrations of the SUREPAYROLL Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the SUREPAYROLL Marks. 15 U.S.C. § 1115.

(ii) Complainant argues that the Disputed Domain Names are confusingly similar to the SUREPAYROLL Marks pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the principal element of SUREPAYROLL with the exception of common typographical errors and with the required extension of “.com.” Complainant alleges that this is an instance of “typosquatting.”

(iii) Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Names under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Disputed Domain Names in connection with the bona fide offering of goods or services. Complainant alleges that Respondent’s websites offer payroll locator services, but also contain links to direct competitors of the Complainant. Complainant alleges that Respondent receives click-through fees on these links. Hence any services being offered by Respondent are not bona fide.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(ii) because it is not commonly known under either of the Disputed Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the SUREPAYROLL Marks in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Disputed Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the SUREPAYROLL Marks at issue.

(iv) Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of paragraph 4(a)(iii). Of the four non-exclusive ways in which Complainant can show bad faith under paragraphs 4(b)(i)-(iv), Complainant has chosen to allege paragraph 4(b)(iv) which states that by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondents web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent’s web site or location or of a product.

As stated above, Complainant contends that Respondent is making click-through fees on links to Complainant’s competitors by directing traffic attracted to Respondent’s website by creating confusion with Complainant’s services.

B. Respondent’s contentions

(i) Respondent does not dispute that the Complainant has registrations of the SUREPAYROLL Marks. Respondent does argue that the Marks are generic because the words “sure” and “payroll” are commonly used in business in the sense of “making sure payroll is paid.” Respondent further argues that Complainant is not entitled to trademark protection for such a generic word or string of words.

(ii) Respondent does not contest that the Disputed Domain Names are identical or confusingly similar to the SUREPAYROLL Marks.

(iii) Respondent asserts that it has rights to or legitimate interests in the Disputed Domain Names because it was conducting bona fide services of selling payroll locator services prior to receiving notice from Complainant of Complainant’s asserted rights. Respondent asserts it was merely choosing commonly used words in the dictionary and did not have actual or constructive notice of the Complainant’s trademark rights prior to registering the Disputed Domain Names.

(iv) Respondent denies that it registered or used the Disputed Domain Names in bad faith. Respondent alleges that Complainant’s SUREPAYROLL Marks are descriptive or generic and offer Complainant no protection. Therefore, the Marks are incapable of being used in bad faith.

Respondent argues that given the weakness of Complainant’s Marks that Complainant must demonstrate that Respondent intended to cause confusion between the Marks and the Disputed Domain Names. Respondent further argues that Complainant has not offered sufficient proof of actual intent. Therefore, Respondent argues that there is no evidence of bad faith based on paragraph 4(b)(iv).

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001).

A. Identical or Confusingly Similar

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the SUREPAYROLL Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the SUREPAYROLL Marks. 15 U.S.C. § 1115.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000).

Respondent challenges the SUREPAYROLL Marks as generic and descriptive. Respondent argues that the SUREPAYROLL Marks are generic because the words “sure” and “payroll” are commonly used in business in the sense of “making sure payroll is paid.” Respondent further argues that Complainant is not entitled to trademark protection for such a generic word or string of words.

The Panel adheres to the position that such defenses are beyond the purview of the Panel. The Panel believes that the courts or regulatory authorities are better able to grapple with the question of the generic nature of words and phrases, and the acquisition of secondary meaning. In addition, the summary nature of the procedures under the Rules is not adequate to develop the proof necessary to make an informed decision on these issues. Therefore, the Panel accepts the registered trademark as prima facie evidence of the existence of the mark without analysis of Respondent’s assertions that the SUREPAYROLL Marks are descriptive or generic and without analyzing secondary meaning. 402 Shoes Inc dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223 (January 2, 2001).

It is this Panel’s view that if the Panel were to undertake an analysis of the assertion by Respondent that Complainant’s SUREPAYROLL Marks are generic, it would rule in favor of Complainant. Respondent’s analysis of why the phrase “sure payroll” is generic is not sufficient to this Panel to overcome the presumption of validity arising from the registration by Complainant of the SUREPAYROLL Marks.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the SUREPAYROLL Marks.

Confusing Similarity

Complainant further contends that the Disputed Domain Names are identical with and confusingly similar to the SUREPAYROLL Marks pursuant to the Policy paragraph 4(a)(i). Complainant argues that the Disputed Domain Names are confusingly similar, because they wholly incorporate the principal element of SUREPAYROLL with the exception of common typographical errors and with the required extension of “.com.” Complainant alleges that this is an instance of “typosquatting.”

Respondent has not contested the assertions by Complaint that the Disputed Domain Names are confusingly similar to the SUREPAYROLL Marks.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are identical for purposes of the Policy). The addition of generic terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel agrees with Complainant that the differences between the Disputed Domain Names and the SUREPAYROLL Marks are of the nature of common typos and are not distinctive. Additionally, the “.com” is a required gTLD and is not distinctive.

Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the SUREPAYROLL Marks pursuant to the Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Disputed Domain Names. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Names:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

Complainant has alleged that Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Names under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Disputed Domain Names in connection with the bona fide offering of goods or services. Complainant alleges that Respondent’s websites offer payroll locator services, but also contain links to direct competitors of the Complainant. Complainant alleges that Respondent receives click-through fees on these links. Hence any services being offered by Respondent are not bona fide.

Complainant further alleges that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(ii) because it is not commonly known under either of the Disputed Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the SUREPAYROLL Marks in a domain name or in any other manner.

Complainant alleges that Respondent is receiving click-through payments and is engaged in a commercial enterprise. Therefore, Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Disputed Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the SUREPAYROLL Marks at issue.

The Panel finds that Complainant has sustained its burden of coming forward with evidence that the Respondent lacks rights to or legitimate interests in the Disputed Domain Names.

In response, Respondent asserts that it has rights to or legitimate interests in the Disputed Domain Names because it was conducting bona fide services of selling payroll locator services prior to receiving notice from Complainant of Complainant’s asserted rights. Respondent asserts it was merely choosing commonly used words in the dictionary and did not have actual or constructive notice of the Complainant’s trademark rights prior to registering the Disputed Domain Names.

The Panel finds it unbelievable that Respondent independently choose words from the dictionary and modified them to create the Disputed Domain Names. Rather, the Disputed Domain Names appear to be systematic typos based on the SUREPAYROLL Marks. The Panel finds that Respondent has not adequately refuted the allegations of Complainant.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product

Of the four non-exclusive ways in which Complainant can show bad faith under Paragraphs 4(b)(i)-(iv), Complainant has chosen to allege paragraph 4(b)(iv).

Respondent denies that it registered or used the Disputed Domain Names in bad faith. Respondent alleges that Complainant’s SUREPAYROLL Marks are descriptive or generic and offer Complainant no protection. Therefore, the Marks are incapable of being used in bad faith.

Respondent further argues that given the weakness of Complainant’s SUREPAYROLL Marks that Complainant must demonstrate that Respondent intended to cause confusion between the Marks and the Disputed Domain Names. Respondent alleges that Complainant has not offered sufficient proof of actual intent. Therefore, Respondent argues that there is no evidence of bad faith based on paragraph 4(b)(iv).

The Panel has previously found that the Complainant has enforceable rights SUREPAYROLL Marks for purposes of this proceeding. The Panel rejects the argument that Complainant has a higher duty to show Respondent’s actual intent to cause confusion because of an alleged weakness of the SUREPAYROLL Marks.

The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Disputed Domain Names <surpayroll.com> and <surepayrol.com> are confusingly similar to Complainant’s registered trademarks SUREPAYROLL Marks, (b) that Respondent has no rights or legitimate interest in the Disputed Domain Names and (c) that Respondent registered and used the Disputed Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <surpayroll.com> and <surepayrol.com> be transferred to Complainant.

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Richard W. Page
Sole Panelist

Dated: June 9, 2007