Paycom Payroll LLC fired up its lawyers in an attempt to usurp the ultra-premium domain Pay.com from its owners. The Complainant operates from the domain name Paycom.com.
The domain Pay.com is used as a software platform for facilitating financial transactions. In the UDRP, the Complainant alleges that the Respondent acquired the domain in 2020:
The disputed domain name was registered on April 17, 1995, whereas Respondent’s became the owner of said domain on November 17, 2020, subsequent to Complainant’s first claimed rights in the PAYCOM mark.
That’s irrelevant, according to the three member panel at Forum (NAF):
Therefore, the Panel finds that Respondent has rights in the disputed domain name because it is making a bona fide use of it, but also because the word “pay” is a generic word, which can be used by anyone, even to compete with Complainant. Respondent is not even using the domain name to compete directly with the Complainant. The services offered by Respondent are different than those offered by Complainant. There is also no similarity in trade dress or confusing wording.
Final decision: Deny transfer of the domain name Pay.com to the Complainant, who now have to pay to get the domain.
The domain transfer was denied.
Paycom Payroll, LLC v. Glorytime Trading Limited
Claim Number: FA2204001993513
PARTIES
Complainant is Paycom Payroll, LLC (“Complainant”), represented by Zachary A.P Oubre of McAfee & Taft A Professional Corporation, Oklahoma, USA. Respondent is Glorytime Trading Limited (“Respondent”), represented by Christian Morgan of Baker & McKenzie LLP, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with SafeNames Ltd.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Dawn Osborne, Sandra J. Franklin and Nathalie Dreyfus as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on April 22, 2022; the Forum received payment on April 25, 2022.
On April 27, 2022, SafeNames Ltd. confirmed by e-mail to the Forum that the domain name is registered with SafeNames Ltd. and that Respondent is the current registrant of the name. SafeNames Ltd. has verified that Respondent is bound by the SafeNames Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pay.com. Also, on May 2, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 26, 2022.
On June 7, 2022, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Dawn Osborne, Sandra J. Franklin and Nathalie Dreyfus as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a provider of, among other things, technology solutions for human capital management and payroll goods and services. Complainant has rights in the PAYCOM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,318,824 registered February 15, 2000). See Compl. Annex 1.
Complainant claims that Respondent’s domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the PAYCOM mark in its entirety and merely adds a period in the middle of the mark.
Complainant also argues that Respondent has no legitimate interests in the domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the PAYCOM mark. In addition, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name is used to offer competing goods and services.
Finally, Complainant claims that Respondent registered and uses the domain name in bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the PAYCOM mark.
B. Respondent
Respondent offers goods and services in connection with its activities as a software platform for facilitating financial transactions. Respondent argues that the disputed domain name is not identical or confusingly similar. The inclusion of a top-level domain (TLD) is irrelevant when determining if a disputed domain name is identical or confusingly similar.
Respondent also argues that it has legitimate interests in the domain name. The disputed domain name is used in the course of a bona fide offering of goods or services.
Respondent claims that it registered and uses the domain name in good faith. Respondent registered and uses the disputed domain name for a legitimate commercial use.
FINDINGS
Complainant has rights in the PAYCOM mark through the following US trademark registrations:
– Registration No. 2,318,824 dated February 15, 2000, duly renewed, for services in classes 35 and 36;
– Registration No. 3,918,726, dated February 15, 2011 for services in class 42;
– Registration No. 3,921,874 dated February 22, 2011 for services in class 45;
– Registration No. 4,329,783 dated May 7, 2013 for services in class 35;
– Registration No. 5,481,382 dated May 29, 2018 for services in classes 35, 36 and 42;
– Registration No. 5,481,383 dated May 29, 2018 for services in classes 35, 36 and 42;
– Registration No. 5,620,266 dated December 4, 2018 for goods and services in classes 9 and 35;
– Registration No. 5,807,635 dated July 16, 2019 for goods and services in classes 9, 35, 36, 41, 42, 45.
The disputed domain name was registered on April 17, 1995, whereas Respondent’s became the owner of said domain on November 17, 2020, subsequent to Complainant’s first claimed rights in the PAYCOM mark.
Respondent uses the disputed domain name to reflect the purpose of its business.
DISCUSSION
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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
Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the PAYCOM mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues that Respondent’s domain name is identical or confusingly similar to its PAYCOM mark as it contains the PAYCOM mark in its entirety and merely adds a period in the middle of the mark.
Respondent argues that the disputed domain name is not identical or confusingly similar to the PAYCOM mark, since Complainant disclaims the word “pay” and the only addition is a gTLD. Generally, a gTLD is not considered under Policy ¶4(a)(i). See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
As demonstrated by Complainant in many prior UDRP cases, numerous panels have found that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy” (Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903).
Therefore, the gTLD “.com” should be considered in the present case in order to assess the similarity with Complainant trademark “PAYCOM”. Indeed, the PAYCOM mark is reproduced with a period in the middle of the mark that is the dot between the domain “PAY” and the gTLD .com. Therefore, it is more likely than not that Internet users will read and understand the domain name as a whole and will include the gTLD <.com> when comparing with Complainant’s trademark.
Thus, the Panel considers, in light of the above, that the domain name is confusingly similar to Complainant’s prior mark and therefore Complainant satisfies Policy 4(a)(i).
Rights or Legitimate Interests
Under Policy paragraph 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name. The burden, in effect, then shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).
Complainant asserts that Respondent lacks rights and legitimate interests in the domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the PAYCOM mark.
Complainant also argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name redirects to another site offering competing goods and services.
Respondent however asserts that the disputed domain name is being used in connection with a bona fide offering of services under Policy ¶ 4(c)(i), and provides evidence that Respondent uses the domain name to offer a software platform for facilitating financial transactions.
Therefore, the Panel finds that Respondent has rights in the disputed domain name because it is making a bona fide use of it, but also because the word “pay” is a generic word, which can be used by anyone, even to compete with Complainant. Respondent is not even using the domain name to compete directly with the Complainant. The services offered by Respondent are different than those offered by Complainant. There is also no similarity in trade dress or confusing wording.
The Panel thus considers that Respondent uses the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Registration and Use in Bad Faith
To fulfill the third requirement of the Policy, Complainant must prove that the disputed domain name was registered and is being used in bad faith.
Complainant argues that Respondent had knowledge of Complainant’s rights in the PAYCOM mark at the time of registering the domain name.
Respondent argues that the disputed domain name was registered and is used in good faith, as the domain name is related to Respondent’s business. As previously noted, Respondent provides supporting screenshots of the resolving webpage and services offered, as well as an affidavit by Respondent’s CEO. See Resp. Annex 4-5.
The Panel thus finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Further, and as previously explained, the Panel finds that Respondent has rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). Therefore, Respondent cannot have registered or used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Hence, the Panel finds that Complainant does not provide evidence of bad faith registration and use of the disputed domain name. As a consequence, Complainant does not fulfil the requirements of Policy 4(b)(iv).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
Dawn Osborne, Sandra J. Franklin and Nathalie Dreyfus, Panelists
Dated: June 20, 2022
