Comments

• Greg Murray 11:20 pm 30-Jan-2017 Not all domain names identical or confusingly similar to trademarks are actionable. Exhibit 1 are complainants whose trademarks postdate domain name registration. The latest example of this is Insight Energy Ventures LLC v. Alois Muehlberger, L.M.Berger Co.Ltd., D2016-2010 (WIPO December 12, 2016) () but there are other, more esoteric examples such as loss by genericide, Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016). Common words and phrases can convey sources of goods or services but within a community of speakers they can also convey other expressive communications unrelated to trademark value which the Panel in Shop Vac concluded was the case with : It is not clear whether or not Complainant has been or is likely to be successful in preventing use of the words “shop vac” to describe a type of vacuum cleaner. However, it appears on the material before the Panel that the word “vac” is commonly used in the industry as an abbreviation for “vacuum” and that the expressions “shop vac” and “best shop vac” are in common use with respect to vacuum cleaners other than those of Complainant. The reference to likelihood of success in preventing use of the phrase “shop vac” from death by genericide is Complainant’s so far unsuccessful attempt to suppress the mark's generic meaning. A factually similar situation to “shop vac” turns on legitimate trademark disputes between two fair users of a common phrase, a difference between genericide and lack of distinctiveness. In NZ Manufacturing, Inc. v Eric Snell, FA1604001670641 (Forum June 3, 2016) the Panel held that there is “no doubt as to the generic nature of the words ‘stretch cordz’, even in view of the alternative spelling of the last letter in the word ‘cords’. Neither Complainant, nor Respondent are the ‘authors of this alternative form of spelling’ widely used in commerce.” The difference between Insight Energy and NZ Manufacturing is the ongoing legal challenge to the mark in the USPTO, and this takes it outside the scope of the Policy. Basically, the universe of abusive registration of domain names consists of adding generic words before or after the mark (cybersquatting) and subtracting letters from, reversing letters within, or adding letters to marks (typosquatting). The only qualification to marks as dominant is when they are composed of dictionary words to which are added other dictionary words that when combined create associations distinguishable from the marks alleged to have been infringed. An example is Food and Wine Travel Pty Ltd v. Michael Keriakos, Keriakos Media Ventures, D2016-1953 (WIPO November 21, 2016) (). Complainant unluckily lost the domain name by inadvertently failing to renew registration and the proof for cybersquatting did not support either lack of rights/legitimate interests or bad faith. As the Panel pointed out, there are many business that use those generic words and there was no evidence Respondent registered the domain name from the general pool on lapse of registration to capitalize on Complainant’s mark. Losing domain names for failing to renew registrations illustrates a not always well understood difference between trademarks and domains, namely that trademarks are owned and domain names (while they may be valuable assets when held) are not. Having a mark is not security for reclaiming a lapsed domain name. In considering additions, marks are always the dominant part of the composition when arbitrary and fanciful or well-known or famous nationally and internationally and less so when they are on the lower end of the classification scale. For example, the “QQ” (or affixes of like kind) added to “Google” (an arbitrary word) is not (and cannot be) dominant in a composition with a well-known mark, Respondent’s argument to the contrary notwithstanding in Google Inc. v. J Renz, FA160900 1694123 (Forum October 28, 2016) () that “QQ” is dominant. Confusing similarity is not lessened however many extra words or (in the cases of letters) added or subtracted. The focus for confusing similarity is the mark. Plain vanilla cybersquatting simply involves opportunistic registrations even if registrants are ignorant of the law. Squatters give themselves away by either offering domain names for sale, populating their websites with links to businesses competitive with complainants, or passively holding domain names that could have no conceivable non-infringing use if pointed to a resolving website. In Telstra Corporation Limited v. Graeme Riordan, D2016-2022 (WIPO December 6, 2016) () Respondent argues he has a legitimate interest in collecting domain names because he purchases them (currently 3,000 strong) for his “personal satisfaction as ... collectable item[s].” Extensions such as dot website are no different than legacy top level domains in being functional elements to be disregarded in determining confusing similarity. In any event, registrants cannot impermissibly own infringing domain names as collectable items; they have no intrinsic value as collectibles because unlike heirlooms that can be owned domain names composed of appropriated marks (however long they are held) cannot be sold without infringing owners’ trademark rights. Moreover, arguing that identity and confusing similarity refers only to the string to the left of the dot has been soundly rejected although in Telstra the string to the left of the dot is identical to the mark and forfeit regardless of the extension. Respondent in Raincat Online Services v. fluder, CAC 101125 (ADReu February 1, 2016) (AD6.MEDIA) argued that “[t]he disputed domain name is neither identical nor confusingly similar to the protected mark . . . [because] [t]he ICANN rules only apply to what’s left of the dot [, and that any other reading would be] an abuse of the administrative proceeding. Panel disagreed and domain name transferred.” Not so, however, because when second and top level domains read together yield identical or confusing similarity to a mark claimed to be infringed no amount of argument will make it not so; typical in addition to are and where the second level domains by themselves could conceivably be used without infringing complainants’ marks but the extensions seal the infringements. Typosquatting differs from cybersquatting in this respect, that it is easier to support the inference of actual knowledge and closer to a per se violation of the Policy. For example, in TTT Moneycorp Limited v. Guiying Huang, D2016-2030 (WIPO December 1, 2016) () Complainant is a financial institution that issues (among other services) credit cards. The accused domain name mimics complainant’s by the addition of a single letter “s.” There are of course situations where the addition of a single letter (or omission of one) can be lawful but not where the resolving website is found to be “a typical parking website, providing links to websites of the Complainant’s competitors and generating revenues by means of a PPC mechanism.” It’s useful in understanding evidentiary demands of the UDRP to have a firm theory for forfeiture or retention of accused domain names. As I recently explained registrants called out as cybersquatters generally don’t bother to respond to complaints where infringement is obvious from the record, but where the record undercuts complainant’s claims as it did in Insight Energy the default is not and cannot be a determinative factor in the award. Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement and Update here. Supplement and Update through August 2016 will be available in e-book format on October 1, 2016; the print format will be published on December 1, 2016. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement In Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel found bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain. See also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel thus finds bad faith registration and use under Policy ¶ 4(b)(iv). In this case as provided by the worldepay.com case there is no click through traffic or hyperlinks, this site is used for the purpose of e-commerce not a typical parking website, hence the name worldepay.co, the respondent, will also put a disclaimer on the site that this site has no commercial association with wolrdpay.com and in its form is not applicable to the case. There will be no association with the complainant.

• Greg Murray 11:54 pm 30-Jan-2017 Disclaimer is active on main page worldepay.co

• worldepay 03:22 am 31-Jan-2017 Hi , I also read this Among the ways that a domain name owner can prove a legitimate right or interest in a domain name is by showing: use or preparations to use the domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute; I have been connected and am currently developing the site for the past 12 to 14 months , 1 partner is an alternative payments solution and the other is a payment solutions company using credit cards this is my second submission for this case please advise as to whom, I need to speak to ? Thank you Greg Murray

• worldepay 03:24 am 31-Jan-2017 Not all domain names identical or confusingly similar to trademarks are actionable. Exhibit 1 are complainants whose trademarks postdate domain name registration. The latest example of this is Insight Energy Ventures LLC v. Alois Muehlberger, L.M.Berger Co.Ltd., D2016-2010 (WIPO December 12, 2016) () but there are other, more esoteric examples such as loss by genericide, Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016). Common words and phrases can convey sources of goods or services but within a community of speakers they can also convey other expressive communications unrelated to trademark value which the Panel in Shop Vac concluded was the case with : It is not clear whether or not Complainant has been or is likely to be successful in preventing use of the words “shop vac” to describe a type of vacuum cleaner. However, it appears on the material before the Panel that the word “vac” is commonly used in the industry as an abbreviation for “vacuum” and that the expressions “shop vac” and “best shop vac” are in common use with respect to vacuum cleaners other than those of Complainant. The reference to likelihood of success in preventing use of the phrase “shop vac” from death by genericide is Complainant’s so far unsuccessful attempt to suppress the mark's generic meaning. A factually similar situation to “shop vac” turns on legitimate trademark disputes between two fair users of a common phrase, a difference between genericide and lack of distinctiveness. In NZ Manufacturing, Inc. v Eric Snell, FA1604001670641 (Forum June 3, 2016) the Panel held that there is “no doubt as to the generic nature of the words ‘stretch cordz’, even in view of the alternative spelling of the last letter in the word ‘cords’. Neither Complainant, nor Respondent are the ‘authors of this alternative form of spelling’ widely used in commerce.” The difference between Insight Energy and NZ Manufacturing is the ongoing legal challenge to the mark in the USPTO, and this takes it outside the scope of the Policy. Basically, the universe of abusive registration of domain names consists of adding generic words before or after the mark (cybersquatting) and subtracting letters from, reversing letters within, or adding letters to marks (typosquatting). The only qualification to marks as dominant is when they are composed of dictionary words to which are added other dictionary words that when combined create associations distinguishable from the marks alleged to have been infringed. An example is Food and Wine Travel Pty Ltd v. Michael Keriakos, Keriakos Media Ventures, D2016-1953 (WIPO November 21, 2016) (). Complainant unluckily lost the domain name by inadvertently failing to renew registration and the proof for cybersquatting did not support either lack of rights/legitimate interests or bad faith. As the Panel pointed out, there are many business that use those generic words and there was no evidence Respondent registered the domain name from the general pool on lapse of registration to capitalize on Complainant’s mark. Losing domain names for failing to renew registrations illustrates a not always well understood difference between trademarks and domains, namely that trademarks are owned and domain names (while they may be valuable assets when held) are not. Having a mark is not security for reclaiming a lapsed domain name. In considering additions, marks are always the dominant part of the composition when arbitrary and fanciful or well-known or famous nationally and internationally and less so when they are on the lower end of the classification scale. For example, the “QQ” (or affixes of like kind) added to “Google” (an arbitrary word) is not (and cannot be) dominant in a composition with a well-known mark, Respondent’s argument to the contrary notwithstanding in Google Inc. v. J Renz, FA160900 1694123 (Forum October 28, 2016) () that “QQ” is dominant. Confusing similarity is not lessened however many extra words or (in the cases of letters) added or subtracted. The focus for confusing similarity is the mark. Plain vanilla cybersquatting simply involves opportunistic registrations even if registrants are ignorant of the law. Squatters give themselves away by either offering domain names for sale, populating their websites with links to businesses competitive with complainants, or passively holding domain names that could have no conceivable non-infringing use if pointed to a resolving website. In Telstra Corporation Limited v. Graeme Riordan, D2016-2022 (WIPO December 6, 2016) () Respondent argues he has a legitimate interest in collecting domain names because he purchases them (currently 3,000 strong) for his “personal satisfaction as ... collectable item[s].” Extensions such as dot website are no different than legacy top level domains in being functional elements to be disregarded in determining confusing similarity. In any event, registrants cannot impermissibly own infringing domain names as collectable items; they have no intrinsic value as collectibles because unlike heirlooms that can be owned domain names composed of appropriated marks (however long they are held) cannot be sold without infringing owners’ trademark rights. Moreover, arguing that identity and confusing similarity refers only to the string to the left of the dot has been soundly rejected although in Telstra the string to the left of the dot is identical to the mark and forfeit regardless of the extension. Respondent in Raincat Online Services v. fluder, CAC 101125 (ADReu February 1, 2016) (AD6.MEDIA) argued that “[t]he disputed domain name is neither identical nor confusingly similar to the protected mark . . . [because] [t]he ICANN rules only apply to what’s left of the dot [, and that any other reading would be] an abuse of the administrative proceeding. Panel disagreed and domain name transferred.” Not so, however, because when second and top level domains read together yield identical or confusing similarity to a mark claimed to be infringed no amount of argument will make it not so; typical in addition to are and where the second level domains by themselves could conceivably be used without infringing complainants’ marks but the extensions seal the infringements. Typosquatting differs from cybersquatting in this respect, that it is easier to support the inference of actual knowledge and closer to a per se violation of the Policy. For example, in TTT Moneycorp Limited v. Guiying Huang, D2016-2030 (WIPO December 1, 2016) () Complainant is a financial institution that issues (among other services) credit cards. The accused domain name mimics complainant’s by the addition of a single letter “s.” There are of course situations where the addition of a single letter (or omission of one) can be lawful but not where the resolving website is found to be “a typical parking website, providing links to websites of the Complainant’s competitors and generating revenues by means of a PPC mechanism.” It’s useful in understanding evidentiary demands of the UDRP to have a firm theory for forfeiture or retention of accused domain names. As I recently explained registrants called out as cybersquatters generally don’t bother to respond to complaints where infringement is obvious from the record, but where the record undercuts complainant’s claims as it did in Insight Energy the default is not and cannot be a determinative factor in the award. Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement and Update here. Supplement and Update through August 2016 will be available in e-book format on October 1, 2016; the print format will be published on December 1, 2016. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement In Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel found bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain. See also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel thus finds bad faith registration and use under Policy ¶ 4(b)(iv). In this case as provided by the worldepay.com case there is no click through traffic or hyperlinks, this site is used for the purpose of e-commerce not a typical parking website, hence the name worldepay.co, the respondent, will also put a disclaimer on the site that this site has no commercial association with wolrdpay.com and in its form is not applicable to the case. There will be no association with the complainant.

• UDRPcommentaries (Gerald M. Levine) 05:22 pm 03-Feb-2017 Greg, I'm sure the decision in will be interesting but it's unclear to me what point you and the other speaker are trying to make by quoting the entirety of my article. Please clarify. Thanks. Gerald M. Levine,

• worldepay 11:56 pm 07-Feb-2017 Dear Mr Levine, i am embarrassed as this commentary was copied by me but should not have been put on here, my windows 10 computer mouse was acting up and I was trying to transfer it to a word document and it some how went crazy and added it to the site while I was trying to add it to the doc, I am sorry . thank you Greg Murray

• worldepay 12:05 am 08-Feb-2017 To whom , it may Concern 1) We are not passing ourselves off as worldpay.com, worldepay.co is a real website with a distinct purpose, we are in the e-commerce payments business with actual solutions partners. 2) The term e-commerce is a real term used as the letter “e” not just by worldepay.co, but by others around the world , this is also used as “e” for electronic payment done so by the European Union it its everyday language when referring to issues in the above . Hence the use of world E (ecommerce) pay .co, we now have a number of general terms such as e-signatures, e-payments , it’s common knowledge in the industry, that this term is used widely and is well known , confusing this with worldpay, would be somewhat difficult. 3) The moron in a hurry test, I believe that even a so called moron in a hurry, would see the difference The "moron in a hurry" phrase was first used by Mr Justice Foster in the 1978 case Morning Star Cooperative Society v Express Newspapers Limited, in which the publishers of the Morning Star, a British Communist Party publication, sought an injunction to prevent Express Newspapers from launching a new tabloid, which was to be called the Daily Star.[2] The judge ruled against the Morning Star, noting that "If one puts the two papers side by side I for myself would find that the two papers are so different in every way that only a moron in a hurry would be misled."[2], I think this is the case here also the case with worldepay.co, people are now very internet savvy and understand the basic differences in Domain names and that they are different businesses altogether. The websites look nothing like each other and while have a similar business are clearly not the same, I don’t believe that worldpay.com is so famous that everyone knows who they are And say they are this famous, an average consumers and merchants would know EXACTLY who they are and they should be able to stand on their own 2 feet as it were. The reason someone would choose worldepay.co over worldpay.com would be in the area of competition, not falsely choosing the incorrect site believing it to be the other. 4) What I see here is a business trying its best to have no competition even where there is no instance of passing of or ) Bad faith. The disputed domain must have been registered and used in bad faith. Both these elements of bad faith must be proved. The UDRP has set out a non-exhaustive list of what constitutes bad faith. These include the following: 5) diverting users to other sites by creating a likelihood of confusion; (not done in this case) 6) if the registrant has multiple domains registered; (not done in this case) 7) an approach made to a party that would be interested in the domain demanding money or moneys worth greatly in excess of out of pocket expenses; (not done in this case) 8) passive holding of a domain was held to constitute bad faith if the impression that the domain was being offered for sale was given (the www.vivendiuniversalsucks.com case) and panels are increasingly inferring that the domains are being held for sale; (not done in this case) 9) offering to sell the domain on an auction site has been construed as being in bad faith; however, on occasions the fact that the registrant has offered to sell the domain by auction, or agreed to negotiate a price when contacted about the dispute does not automatically constitute bad faith for the purposes of UDRP. This was the case in the www.avnet case where the respondent had a long standing interest in the name; and (not done in this case, that is to be auctioned) 10) being difficult to contact or untraceable has been construed as bad faith ( you clearly see who owns this site on who is ) . Clearly there is evidence that this site worldepay.co is a bone fide site having a website developer, who is being used to develop the site as REAL Business on and off for approximately 16 to 18 months or longer, well before this case was brought to bare, and it also has its own shop for its merchants to sell their products, worldepay.co is also developing a new method of payment, that we believe no one has yet to have developed. None of the above have been done (4,5,6,7,8,9 and 10 inclusive) although not exhaustive as true examples of bad faith, of which this site has not been built upon, we are about to “go live” and see this case as less than honorable. This site was being developed long before we were aware of this complaint. 11) To whom it may concern, There are also no forward or backward links to worldpay.com, we are not passing ourselves off as worldpay.com, and are not interested in doing so. when people ask me what is the name of my payment site I DON'T say worldpay.com I SAY WORLDEPAY.CO , i often have to say it 3 or 4 times, they say never hear of it, no-one has ever said are you worldpay.com, this is a FISHING exercise I see that in this regard worldpay LTD has made this an exercise to do this to many domain name holders some are using it to connect to their site we worldepay.co are not one of them and at no time when I purchased this domain name did I think WOW , this sounds like worldepay.com lets buy it, I purchased because it is what we do we are a world payment system in the e-commerce market , we are currently developing a shop and this site was being developed long before I was aware of the complaint. this site being SIMILAR in name is NOT the same and does not even rate a mention in our market we are primarily High risk and alternative High-risk . All this is just a coincidence and there was no intention to do any of what is leveled against us by the complainant. worldpay.com didn't even come up on our radar. My understanding is that we have in NO way breached this act and or the legal requirements for 1) passing ourselves off as them (see recently added disclaimer on worldepay.co) this is not an omission of guild but merely a way to prove that our intention is not and never will be to pass ourselves off as worldpay.com For example, in TTT Moneycorp Limited v. Guiying Huang, D2016-2030 (WIPO December 1, 2016) () Complainant is a financial institution that issues (among other services) credit cards. The accused domain name mimics complainant’s by the addition of a single letter “s.” There are of course situations where the addition of a single letter (or omission of one) can be lawful but not where the resolving website is found to be “a typical parking website, providing links to websites of the Complainant’s competitors and generating revenues by means of a PPC mechanism.” we are doing none of the above ! There is no evidence of the above (2). There the conclusion can be an alleged anti competitive measure or just a way to get rid of possible competition. Gregory Murray worldepay Bcom/Laws