Digest by Richard L. Ravin, Esq.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ameripay, LLC v. Paylocity Corporation (formerly Ameripay Payroll, Ltd.)
Case No. D2007-0452
Decision in favor of Complainant, Ameripay, LLC, of New Jersey, represented by, Richard L. Ravin, Esq., of Hartman & Winnicki, P.C.
The Panel found that the Complainant had satisfied its burden of showing that the Respondent registered and used the domain name in fad faith under paragraph 4(a)(iii) of the Policy. In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel ordered that the domain name be transferred to the Complainant.
It was alleged in the WIPO complaint, Complainant was founded in 1995. The Complainant had been using the mark “ameripay” in commerce continuously since at least as early as January 1, 1997. Complainant obtained rights in and to United States Patent and Trademark Office (“USPTO”) Service Mark Registration. Respondent acquired the domain name registration through assignment from a third-party, and registered the domain name in its name own name and address on January 22, 1999. Soon thereafter, Respondent began using the domain name. In or about 2003, Complainant started to become aware of instances of actual confusion of customers, suppliers, prospective employees and others due to use of Internet search engines, such as Yahoo and/or Google returning search results confusing Complainant with Respondent due to each company using the exact same mark and trade name and each company providing the same services There were also instances of reverse confusion. Hence, in July of 2003, Complainant filed suit in the United States District Court for the District of New Jersey alleging, among other things, trademark infringement and anti-cybersquatting under the Lanham Act. The suit was transferred to the United States District Court for the Northern District of Illinois, Northern District. Complainant pursued litigation spanning more than 2-1/2 years.
On February 15, 2006, the United States District Court for the Northern District of Illinois entered a Permanent Injunction and Judgment in Complainant’s favor against Respondent. The Permanent Injunction and Judgment provides that Respondent is “permanently enjoined from using the name ‘AMERIPAY’ as a trade name, trademark, or within a domain name anywhere in the United States.” The Permanent Injunction and Judgment was entered pursuant to Federal Rule of Civil Procedure 68, Respondent’s Offer of Judgment, and Complainant’s Acceptance thereof.
As a result of the Permanent Injunction and Judgment, Respondent changed the name of its corporation. Respondent was required by the Permanent Injunction and Judgment to cease all use of the name and mark, as well as the domain name, “ameripay.com”.
Respondent had continued to use the domain name “ameripay.com” for its e-mail operations after entry of the Permanent Injunction and Judgment and has continued use the trade name “Ameripay” in its registration information with the registrar Tucows, Inc.
Under Policy paragraphs 4(c)i and 4(c)ii, Respondent does not have a legitimate interest related to the offering of goods or services or in common usage as it is not permitted to use the domain name or a name corresponding to the domain name in any manner, according to the Permanent Injunction and Judgment.