One panelist said he would have ruled reverse domain name hijacking.
A three-member World Intellectual Property Organization panel has denied (pdf) Green Dot Corporation’s attempt to get the domain name RapidPay.com through a cybersquatting dispute.
Green Dot, a financial and bank holding company, uses the domain names GreenDot.com and RapidPayCard.com. It owns U.S. trademark registrations for RAPID! PAYCARD and RAPID!, which were assigned to it in 2018.
The disputed domain name was acquired by the respondent, domain investor Cyber Capital Technology, in August 2015. The domain is currently listed for sale for about $200,000.
Cyber Capital Technology argued that “rapid pay” is a descriptive term meaning fast payments.
It noted that Green Dot had to disclaim “PayCard” in its trademark, which makes its trademark different from the domain. It also pointed out that Green Dot did not begin using “Rapid! Pay” for its mobile app until 2020, five years after the respondent acquired the domain.
The domain investor also found 26 companies that use “rapidpay” in their names, suggesting widespread use of the term.
The panel found in favor of the domain investors on the issues of rights or legitimate interests in the domain, and registration and use in bad faith.
On the issue of bad faith, it wrote:
…the Panel concludes that while the Complainant’s trademark registrations predate the acquisition of the disputed domain name, the Complainant’s predecessor in title was required to disclaim “Paycard”. A “paycard” can be defined as a prepaid card that employers offer to employees as means to receive wages, compensation or employment-related benefits.
As such, “paycard” differs from “rapid pay” which carries a different concept and describes a different function, namely the fast payment of something. The Complainant’s rights in RAPID! and RAPID! PAYCARD do not automatically grant the Complainant exclusive rights in “rapid pay” which, as the Respondent appropriately indicated, is widely used by multiple companies in relation to instant or fast payments.
The majority of the panel found this was not a case of reverse domain name hijacking, but panelist Gerald M. Levine said he would have found RDNH.
CSC Digital Brand Services Group AB represented Green Dot. Ankur Raheja of Cylaw Solutions represented Cyber Capital Technology.
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