The “Authorized” Domain Name
The Complainant, Authorize.net, provides payment gateway services and allows merchants to accept credit card and electronic check payments through the merchants’ websites. The Complainant has been providing software and services for payment processing using the mark AUTHORIZE.NET since the late 1990s and holds several trademarks for AUTHORIZE.NET, the first of which was registered in January 2001. The Respondent first registered the disputed domain name, AUTHORIZE.NET, in 1998 and, since 1999, has been an authorized affiliate/reseller of the Complainant’s services.
The Respondent does not contest the Complainant’s trademark rights or the confusing similarity of the disputed domain name to them. Instead, the Respondent’s defense is based on its bona fide use of the disputed domain name and the Complainant’s knowledge and acquiescence of the Respondent’s use of the disputed domain name for almost ten years. In support, the Respondent points to the Complainant’s explicit approval contained in an email from the Complainant in November 2005.
In denying relief to the Complainant, the Panel noted that there is no proof, other than a conclusory allegation, that when the Respondent registered the disputed domain name almost ten years ago that it did so for any reason other than to participate in the Complainant’s affiliate program with the Complainant’s full knowledge and consent, and no allegations of fact were presented from which the Panel could infer bad faith at that time. The Panel further noted that the Complainant profited directly from each referral from the Respondent’s website that generated a commission and that, therefore, the Respondent has shown a legitimate interest in the dispute domain name. The Panel noted that the only “change” was the Complainant’s apparent “change of mind” after the Respondent’s more than nine years of use of the disputed domain name.