For a domain registered in 1997, the Complainant, iPayment, Inc. of Westlake Village, California, claimed exclusive rights to the “IPAYMENT” mark it asserted to hold since 2001.
In an interesting twist to the plot, the domain iPayments.com was owned by the Complainant until April 2015, and they let it expire; that fact was not disclosed during their filing of the UDRP.
It was acquired by the Respondent at a domain auction, among other domains with the “i” prefix, such as i-channel.com, igospel.com and ishoppers.com. The Korea-based Respondent stated that they were not aware of the Complainant or their trademark.
According to the UDRP defense, the Respondent explained that his purchase was part of a legitimate business strategy to acquire “a desirable common word domain name”, evidenced by his prior registrations of similar domain names such as ishoppers.com, i-channel.com, paystar.com, paychecker.com, and premiumpay.com.
A three member panel at the WIPO noted, among other things, the following:
“The Panel has come to the conclusion that the Complainant has failed to disclose a number of material facts, including (1) its prior ownership and subsequent abandonment of the disputed domain name, (2) the eventual purchase of the domain name at auction by the Respondent; and 3) that the Complainant attempted to partially base its trademark rights on a cancelled registration. This non-disclosure has been compounded by the Complainant’s aggressive pleadings, which repeatedly characterize the Respondent’s conduct in a manner which is not consistent with the actual circumstances at hand.”
A finding of Reverse Domain Name Hijacking was delivered by the panelists, on top of ordering the domain iPayments.com to remain with the Respondent; the decision is the Holy Grail of legal representation regarding domain names.
For an interview with ESQwire attorney, Jason B. Schaeffer, click here.
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