Will, i think you are a victim of believing what you read here sometimes. Your post is so misled as to our actions.
We have exactly ONE UDRP Action over a domain- for XXXPays.com - see: http://www.arb-forum.com/domains/decisions/104209.htm for the ruling and action from 2002. XPays won and was awarded XXXPays.com hours later. Do you have an issue with the decision in that case or our decision to enforce on a XXXPays? Anybody in our shoes would have HAD to file the udrp.
The only other lawsuit XPays has filed is with regards to infringement of content we have rights with regards to.
C&D's or emails are not lawsuits. I cannot fathom why you would have an issue with a company who preserves its trademark and content rights.
here is the arb-forum ruling:
DECISION
XPays, Inc. v. Grover Smiley, dba Grovers Presentations
Claim Number: FA0202000104209
PARTIES
The Complainant is XPays, Inc., San Francisco, CA (?Complainant?) represented by Yano Rubinstein, of Oppenheimer Wolff & Donnelly LLP. The Respondent is Grover Smiley, dba Grovers Presentations, Buford, GA (?Respondent?) represented by (name witheld at request of counsel).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xxxpays.com>, registered with Intercosmos Media Group, Inc.
PANEL
The undersigned certifies that he acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (?the Forum?) electronically on February 5, 2002; the Forum received a hard copy of the Complaint on February 11, 2002.
On February 5, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <xxxpays.com> is registered with Intercosmos Media Group, Inc. and that the Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, 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 February 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the ?Commencement Notification?), setting a deadline of March 4, 2002 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 [email protected] by e-mail.
A timely Response was received and determined to be complete on March 4, 2002.
On March 8, 2002 the Forum timely received an additional submission from the Complainant.
A further submission, from the Respondent, was timely received by the Forum on March 13, 2002.
On March 15, 2002, pursuant to Complainant?s request to have the dispute decided by a single-member Panel, the Forum appointed Hugues G. Richard as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES? CONTENTIONS
A. Complainant
Identical or Confusingly Similar
Complainant contends that the disputed domain name (<xxxpays.com>) is identical or confusingly similar to its registered trademark "XPAYS" since it includes entirely its trademark. Moreover, it alleges that the addition of the letters "xx" does not negate a finding that Respondent's domain name is identical or confusingly similar to Complainant's trademark.
Rights or Legitimate Interests
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name since :
i) there is no bona fide offering of services given that Respondent sells a competitor's services at its web site or causes, by the use of the disputed domain name integrating Complainant's trademark, consumer confusion in order to profit from the goodwill associated with said trademark;
ii) Respondent is not commonly known by "XXXPAYS" given that it does not carry on business nor is it incorporated under that particular name and that it does not own trademark registration for the expression "xxxpays.com";
iii) "Respondent's use of "XXXPAYS" is neither a non-commercial use nor a fair use" given that it intends to misleadingly divert consumers to its web site for commercial gain.
Registration and Use in Bad Faith
Finally, the Complainant alleges that Respondent has registered the domain name in bad faith since it registered it despite being familiar with and aware of the "XPAYS" brand name. Respondent is also using the domain name in bad faith by "capitalizing on web site confusion" and "misdirecting traffic to its website" by using Complainant's trademark in the domain name. Moreover, Complainant contends that Respondent's failure to list correct contact information and attempts to delay legal proceedings constitute evidence of its bad faith.
B. Respondent
Burden of proof
For its part, Respondent alleges that Complainant has not met its burden of proof under the ICANN Policy.
Clear abuses
It also contends that the Panel should not grant Complainant's request since there is no clear case of "cyber squatting" and "cyber piracy" in the case at hand.
Identical or Confusingly Similar
Furthermore, Respondent alleges that the word "xxxpays" and "xxxpays.com" are distinct and different from Complainant's trademarks. Moreover, Respondent asserts that the words "xxxpays" and "xpays" have different meanings since "the use of three x's is commonly known as a reference to adult material while one x does not have the same common meaning".
Rights or Legitimate Interests
Respondent also dismisses Complainant's allegations as to the absence of bona fide offering of services. It alleges that it is making a bona fide offering of services since both parties are not selling competing services. It also reiterates its allegations as to Complainant's failure to meet its burden of proof on that particular aspect of its onus.
Registration and Use in Bad Faith
Finally, Respondent alleges that Complainant has not met its burden of proof. Respondent claims that the Complainant's statements are mere conjecture and that it has not submitted adequate proof to substantiate its allegations. Furthermore, it adds that the words in dispute ("xxxpays" and "xpays") are different.
C. COMPLAINANT'S REPLY
Respondent's failure to rebut the allegations
In its reply, Complainant alleges that Respondent has failed to rebut its allegations and to provide any supported facts to dispute the Complainant's allegations.
Meaning of one "X"
As to the meaning of one "X", the Complainant dismisses Respondent's assertion that "X" is not commonly known as a reference to adult material. It alleges that "the terms "X" and "XXX" are synonymous with adult-oriented material".
Addition of "XX"
Furthermore, Complainant alleges that ?the addition of the XX to Complainant?s [XPAYS] mark does not prevent likelihood of confusion between the domain xxxpays from the XPAYS mark?.
Nature of services
Complainant alleges, in its reply, that since both parties are offering the same services they are, in fact, competitors.
Offer for sale
Finally, Complainant claims that an additional element proves Respondent's use in bad faith. The domain name has been listed for sale on the web site <www. greatdomains.com> and Complainant considers that such conduct demonstrates bad faith.
RESPONDENT'S ADDITIONAL SUBMISSION
Burden of proof
In its additional submission, Respondent reiterates its allegation concerning Complainant's failure to discharge itself from its burden of proof and concludes that Complainant has not provided adequate proof.
Confusingly similar
Respondent also alleges that the terms "X" and "XXX" have different meanings. Therefore the domain names <xpays.com> and <xxx.pays.com> are not confusingly similar since their respective meaning are different.
Rights or Legitimate Interests
Finally, Respondent reiterates its contentions as to having rights or legitimate interests in the disputed domain name.
<cont'd>
We have exactly ONE UDRP Action over a domain- for XXXPays.com - see: http://www.arb-forum.com/domains/decisions/104209.htm for the ruling and action from 2002. XPays won and was awarded XXXPays.com hours later. Do you have an issue with the decision in that case or our decision to enforce on a XXXPays? Anybody in our shoes would have HAD to file the udrp.
The only other lawsuit XPays has filed is with regards to infringement of content we have rights with regards to.
C&D's or emails are not lawsuits. I cannot fathom why you would have an issue with a company who preserves its trademark and content rights.
here is the arb-forum ruling:
DECISION
XPays, Inc. v. Grover Smiley, dba Grovers Presentations
Claim Number: FA0202000104209
PARTIES
The Complainant is XPays, Inc., San Francisco, CA (?Complainant?) represented by Yano Rubinstein, of Oppenheimer Wolff & Donnelly LLP. The Respondent is Grover Smiley, dba Grovers Presentations, Buford, GA (?Respondent?) represented by (name witheld at request of counsel).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xxxpays.com>, registered with Intercosmos Media Group, Inc.
PANEL
The undersigned certifies that he acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (?the Forum?) electronically on February 5, 2002; the Forum received a hard copy of the Complaint on February 11, 2002.
On February 5, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <xxxpays.com> is registered with Intercosmos Media Group, Inc. and that the Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, 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 February 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the ?Commencement Notification?), setting a deadline of March 4, 2002 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 [email protected] by e-mail.
A timely Response was received and determined to be complete on March 4, 2002.
On March 8, 2002 the Forum timely received an additional submission from the Complainant.
A further submission, from the Respondent, was timely received by the Forum on March 13, 2002.
On March 15, 2002, pursuant to Complainant?s request to have the dispute decided by a single-member Panel, the Forum appointed Hugues G. Richard as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES? CONTENTIONS
A. Complainant
Identical or Confusingly Similar
Complainant contends that the disputed domain name (<xxxpays.com>) is identical or confusingly similar to its registered trademark "XPAYS" since it includes entirely its trademark. Moreover, it alleges that the addition of the letters "xx" does not negate a finding that Respondent's domain name is identical or confusingly similar to Complainant's trademark.
Rights or Legitimate Interests
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name since :
i) there is no bona fide offering of services given that Respondent sells a competitor's services at its web site or causes, by the use of the disputed domain name integrating Complainant's trademark, consumer confusion in order to profit from the goodwill associated with said trademark;
ii) Respondent is not commonly known by "XXXPAYS" given that it does not carry on business nor is it incorporated under that particular name and that it does not own trademark registration for the expression "xxxpays.com";
iii) "Respondent's use of "XXXPAYS" is neither a non-commercial use nor a fair use" given that it intends to misleadingly divert consumers to its web site for commercial gain.
Registration and Use in Bad Faith
Finally, the Complainant alleges that Respondent has registered the domain name in bad faith since it registered it despite being familiar with and aware of the "XPAYS" brand name. Respondent is also using the domain name in bad faith by "capitalizing on web site confusion" and "misdirecting traffic to its website" by using Complainant's trademark in the domain name. Moreover, Complainant contends that Respondent's failure to list correct contact information and attempts to delay legal proceedings constitute evidence of its bad faith.
B. Respondent
Burden of proof
For its part, Respondent alleges that Complainant has not met its burden of proof under the ICANN Policy.
Clear abuses
It also contends that the Panel should not grant Complainant's request since there is no clear case of "cyber squatting" and "cyber piracy" in the case at hand.
Identical or Confusingly Similar
Furthermore, Respondent alleges that the word "xxxpays" and "xxxpays.com" are distinct and different from Complainant's trademarks. Moreover, Respondent asserts that the words "xxxpays" and "xpays" have different meanings since "the use of three x's is commonly known as a reference to adult material while one x does not have the same common meaning".
Rights or Legitimate Interests
Respondent also dismisses Complainant's allegations as to the absence of bona fide offering of services. It alleges that it is making a bona fide offering of services since both parties are not selling competing services. It also reiterates its allegations as to Complainant's failure to meet its burden of proof on that particular aspect of its onus.
Registration and Use in Bad Faith
Finally, Respondent alleges that Complainant has not met its burden of proof. Respondent claims that the Complainant's statements are mere conjecture and that it has not submitted adequate proof to substantiate its allegations. Furthermore, it adds that the words in dispute ("xxxpays" and "xpays") are different.
C. COMPLAINANT'S REPLY
Respondent's failure to rebut the allegations
In its reply, Complainant alleges that Respondent has failed to rebut its allegations and to provide any supported facts to dispute the Complainant's allegations.
Meaning of one "X"
As to the meaning of one "X", the Complainant dismisses Respondent's assertion that "X" is not commonly known as a reference to adult material. It alleges that "the terms "X" and "XXX" are synonymous with adult-oriented material".
Addition of "XX"
Furthermore, Complainant alleges that ?the addition of the XX to Complainant?s [XPAYS] mark does not prevent likelihood of confusion between the domain xxxpays from the XPAYS mark?.
Nature of services
Complainant alleges, in its reply, that since both parties are offering the same services they are, in fact, competitors.
Offer for sale
Finally, Complainant claims that an additional element proves Respondent's use in bad faith. The domain name has been listed for sale on the web site <www. greatdomains.com> and Complainant considers that such conduct demonstrates bad faith.
RESPONDENT'S ADDITIONAL SUBMISSION
Burden of proof
In its additional submission, Respondent reiterates its allegation concerning Complainant's failure to discharge itself from its burden of proof and concludes that Complainant has not provided adequate proof.
Confusingly similar
Respondent also alleges that the terms "X" and "XXX" have different meanings. Therefore the domain names <xpays.com> and <xxx.pays.com> are not confusingly similar since their respective meaning are different.
Rights or Legitimate Interests
Finally, Respondent reiterates its contentions as to having rights or legitimate interests in the disputed domain name.
<cont'd>
Comment