ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name.
The Complainant is CTI-Com Tel, Inc., a company that operates within the industry of bill payment services in Canada. The company is headquartered in the City of Winnipeg, Manitoba, Canada.
The Respondent is StrataCom, Inc., headquartered in San Antonio, Texas, United States of America.
The domain name at issue is 'telpay.com', the Registrar was Network Solutions.
The remedy sought is the transfer of the domain name to the Complainant.
2. Procedural History.
The electronic version of the Complaint form was filled on-line through eResolution's Website on August 9, 2000. The hardcopy of the Complaint form and the choice of jurisdiction were received on August 11, 2000. Payment was received on August 23, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
Confirm the identity of the Registrar for the contested Domain Name;
Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
Verify if the contested domain name resolved to an active Web page;
Verify if the Complaint was administratively compliant.
The inquiry led the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested domain name resolves to an active Web page and the Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's office to obtain a copy of the Registration Agreement on August 10, 2000. The requested information was received August 12, 2000.
The Clerk's office then proceeded to send a copy of the Complaint form and the required Cover sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on August 24, 2000. That date is the commencement date of the administrative proceeding.
On August 24, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned registrar, and ICANN of the date of commencement of the administrative proceeding.
On September 12, 2000 the Respondent submitted, via email, his response. It was posted online by the Clerk's Office on September 13. Accordingly to the rules, on September 13, 2000 the Clerk's Office requested a signed version of the response, and granted the Respondent a ten-day delay in order to do so.
On September 26, 2000, the Clerk's Office notified the Respondent and the Complainant of the failure of the first one to provide the Clerk's Office with the hardcopy format of the Response form within the delays. It also informed the parties that according to eResolution Supplemental Rules section 7, c.iii.b.ii "if the Respondent does not file the second format of the response form within that delay of 10 calendar days, the administrative proceeding shall be conducted and decided on the basis of the complaint alone".
On September 26, 2000, the Clerk's Office received the signed response form. However, since it was received without the delays, the response is not applicable in the administrative process.
On September 26, 2000, the Clerk's Office contacted Mr. Giovanni Ziccardi, and requested that he acts as panelist in this case.
On September 28, 2000, Mr. Giovanni Ziccardi accepted to act as panelist in this case and filled the necessary Declaration of Indipendence and Impartiality.
On September 29, 2000, the Clerk's Office forwarded a user name and a password to Mr. Giovanni Ziccardi, allowing him to access the Complaint form and the evidence through eResolution's Automated Docket Management System.
On September, 29, 2000, the parties were notified thast Mr. Giovanni Ziccardi had been appointed and that a decision was to be, save exceptional circumstances, handed down on October, 12.
3. Factual Background.
The Complainant, TelPay Bill Payment Services, a division of CTI-ComTel Inc., is the owner of the registered trademark in Canada 'tel-pay', registration number 189,042 and used in association with electronic bill payment systems and electronic funds transfer processing services to financial institutions and end-users. The Complainant uses the mark in association with its web site at 'telpay.ca'.
The Respondent registered the domain name 'telpay.com'. The domain name has never been used in connection with a business, brand, product or service that can be linked in any way to the word 'telpay'.
The owner of telpay.com contacted the Complainant to inform that he was receiving e-mail intended for telpay.ca. The owner of telpay.com was offering the domain name for sale for 15.000 USD.
4. Parties' Contentions.
The Complainant highlights, first of all, that he is the owner of the telpay.ca domain name and of the registered trademark tel-pay. The telpay.com domain name differs only in the extension.
The Complainant declares also that the owner of telpay.com contacted the company to inform that he was receiving e-mail intended for Telpay Canada.
The signed Response form was received without the delays, so the Response is not applicable in this administrative process.
5. Discussion and Findings.
A. Copy or similarity.
The Complainant's trademark 'tel-pay' is similar to the domain name 'telpay.com' forming the subject matter of the complaint.
The first requirement is satisfied: the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Registrant had indicated that he was not going to be offering a service for which the domain name will be applicable. he was actively offering the domain name for sale for 15,000 USD to any electronic transaction service providers.
The Respondent has not advertised or promoted the use for commercial purposes. Telpay.com was not an active web site.
The Respondent's statements and conduct are therefore iconsistent with any reasonable demonstration of the respondent of a legitimate interest in the domain name.
According to this Panel also the second requirement is satisified: StrataCom Inc. has no rights or legitimate interests in respect of the domain name.
C. Bad faith.
The Respondent has never operated an active web site in association with the domain name or URL address 'telpay.com'. The Respondent offered to sell the rights of the domain name address to the Complaint for the sum of 15,000 USD.
The URL and domain name telpay.com was inactive and there was no use whatsoever of telpay.com in connection with a bona fide offering of goods or services, nor is there any evidence that the Respondent has been commonly known by the domain name telpay.com.
According to this Panel, the name Telpay was primarly registered for the purpose of either selling, renting, or otherwise transferring it to the owner of the trademark or service mark, or a competitor, for valuable consideration in excess of the documented out of pocket costs directly related to the Domain name.
The evidence, submission of the Complainant, examination of documents, ICANN Regulations, compell this Panel to conclude and decide that:
- the domain name 'telpay.com' registered by StrataCom is confusingly similar to the registered mark of Tel-pay, a mark in wich the complainant has rights.
- StrataCom has no legitimate interest in respect of that domain name, has not been commonly known by this domain name, and is not making legitimate non-commercial or fair use of the domain name.
- The domain name at issue was registered and is being used in bad faith by StrataCom.
Accordingly, the Complainant's request is granted and, in accordance with Paragraph 3 (c), the Panel orders that the registration of the domain name at issue, 'telpay.com' be transferred from StrataCom, Inc to CTI-Com Tel, Inc.
This done and signed in Castelfranco Emilia, Modena, Italy, on October 12, 2000.
(s) Giovanni Ziccardi