WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PayPal, Inc. v. , Abdulla Zaidhan Case No. D2009-1131 1. The Parties
1.1 The Complainant is PayPal, Inc. of United States of America, represented by Howrey LLP, United States of America.
1.2 The Respondent is , Abdulla Zaidhan of the Republic of Maldives. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Tucows Inc (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2009. On August 25, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25 and 27, 2009, the Registrar transmitted by email to the Center its verification response, providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 29, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 21, 2009.
3.3 The Center appointed Matthew S. Harris, Bruce E. O'Connor and Jérôme Huet as panelists in this matter on October 9, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
4.1 The Complainant is a Delaware corporation with its principle place of business in California. It is primarily engaged in the business of the provision of online payment services.
4.2 The Complainant has used the term “Paypal” in connection with its business since 1999 and owns various trade marks around the world comprising that term. These include United States Registered trade mark No. 2,646, 490 dated November 5, 2002 in Class 36.
4.3 The Complainant's “Paypal” service is the second most used online payment system in the United States, and its system is well-known and is used worldwide. The “Paypal” service was used in 2008 for transactions totalling approximately USD 60 billion.
4.4 The Complainant is also the owner of United States trade mark application No. 75694096 for the term “X.COM”.
4.5 The identity of the Respondent is unclear. The WhoIs details for the Domain Name suggest that he is an individual located in Maldives, but it is uncertain whether or not a real person exists with that name.
4.6 The Domain Name was registered on August 31, 2008. It would appear that at no time has the Domain Name been used in connection with any web page or web content.
4.7 A cease and desist email was sent by the Complainant to the Respondent (using the email addresses appearing in the WhoIs details for the Domain Name) on July 16, 2009 alleging that the Domain Name registration involved an infringement of United States law. A follow up email was sent by the Complainant on July 29, 2009. The Respondent did not respond to either email. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that its PAYPAL mark is famous and asserts that the Domain Name comprises that mark in combination with the common letter “x”. In the circumstances, it asserts that the Domain Name is confusingly similar to “and essentially identical” to the Complainant's mark. It also makes reference to the fact that “X.com” was “the name of the company which later became Paypal”.
5.2 So far as rights or legitimate interests are concerned, the Complainant states that the Respondent is not an authorised dealer, distributor or licensee of the Complainant. It further asserts that given the non-use of the Domain Name, the Respondent can have no right or legitimate interest in the Domain Name.
5.3 It also claims that the only plausible reason that the Respondent chose the Domain Name was in order to make reference to the Complainant and the Complainant's services. It refers to a number of decisions under the Policy which are said to be authority for the proposition that rights or legitimate interests cannot be created where the user of the domain name would not choose such a name unless he or she was seeking to create an impression of association with another's trade mark.
5.4 So far as bad faith is concerned, the Complainant contends that the Respondent's motive “appears to be to eventually attract Internet users to the Domain [Name] by creating a likelihood of confusion with [the] Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Domain [Name].”
5.5 It also claims that “under well-settled precedent” the use of a domain name that incorporates a famous mark in its entirety supports a finding of bad faith. Reference is also made to the fact that the Domain Name was registered long after the Complainant had registered PAYPAL as a trade mark.
5.6 Further, the Complainant contends that the fact that the Domain Name is inactive is also evidence of the fact that the Domain Name was registered in bad faith. Reference is made to the decisions of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Certamen Miss España, S.L. v. P1ESOFT.COM,WIPO Case No. D2006-0679.
5.7 The Complainant also expresses concern that the Domain Name in the hands of the Respondent could be used for “phishing” attacks.
5.8 Lastly, the Complainant contends that the Respondent has provided incomplete or inaccurate contact information for the Domain Name's WhoIs record. It asserts that both the street in the Maldives and the postal code given in the registration address for the Domain Name do not exist. B. Respondent
5.9 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the Complainant is the owner of various registered trade marks that comprise the word “Paypal” alone. Further, it accepts that the most sensible reading of the Domain Name is as the term “Paypal” combined with the letter “x” and the “.com” TLD. In the circumstances, the Panel has little difficulty in concluding that the Domain Name is confusingly similar to the Domain Name in which the Complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.5 Many UDRP panels have adopted the approach of saying that where prima facie none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the burden of proof passes to the respondent to show such a right or interest. This is, for example, the approach that was adopted in Drexel University v. David Brouda,WIPO Case No. D2001-0067, which is a case that the Complainant cites in its Complaint.
6.6 It is an approach that the Panel could perhaps also have followed in the current case. However, the Panel prefers to deal with this issue in a somewhat more direct manner. As the Panel discusses under the heading of bad faith below, the Panel accepts that by far the most likely explanation of the Respondent's conduct is that he registered the Domain Name in order to take unfair advantage of the goodwill and reputation that the Complainant has developed in the PAYPAL mark. Such registration and use, does not provide the Respondent with a right or legitimate interest under the Policy (see for example, the decision of the three-member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. C. Registered and Used in Bad Faith
6.8 The Panel has already commented on the fact that the most sensible reading of the Domain Name is as the Complainant's PAYPAL mark, combined with the letter “x”. The Panel accepts the Complainant's contention that the PAYPAL mark is well-known around the world. The combination of the fame of the Complaint's mark and the fact that it is difficult to conceive of a possible use of the Domain Name that would not in some way be associated with the Complainant, leads the Panel to conclude that the Domain Name was registered by the Respondent with the Complainant in mind.
6.9 The question that arises is why the Respondent did this? The answer to that question is not altogether clear given the Respondent's apparent non-use of the Domain Name thereafter.
6.10 The Complainant contends that the Respondent's motive is at some point in the future to use confusion between its mark and the Domain Name to attract Internet users to some other website. It is a plausible allegation, and such activity would fall within the scope of paragraph 4(b)(iv) of the Policy. However, there are other potential uses. Perhaps the Respondent intends to sell the Domain Name to the Complainant. The Complainant also refers to the danger of the use of the Domain Name in connection with a “phishing” attack.
6.11 Ultimately, the Panel is satisfied that whatever the Respondent's exact intentions, the reason for registration was in some way to take unfair advantage of the reputation and goodwill associated with the Complainant's PAYPAL mark. The facts of this case are not altogether dissimilar to those in the Telstra decision cited by the Complainant. In Telstra the panel concluded that notwithstanding the fact that the domain name was not being used for any purpose, the mere holding of a domain name in circumstances where it was hard to conceive of any legitimate use1 of the domain name constituted a use in bad faith for the purposes of the Policy.
6.12 In the circumstances, the Panel has little difficult in concluding that the Domain Name was registered and has been used in bad faith. The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Matthew S. Harris
Presiding Panelist
Bruce E. O'Connor
Panelist
Jérôme Huet
Panelist
Dated: October 23, 2009
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