The Complainant is Worldpay Limited of London, United Kingdom, represented by A.A.Thornton & Co, United States of America.
The Respondent is PrivacyP, Domain Admin, ID#10760 of Nobby Beach, Queensland, Australia / Steve Blanton, e-commerce world payments llc of Valley Cottage, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2013. On December 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 23, 2013.
The Center verified that the Complaint together with the amended 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”).
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 January 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2014.
The Center appointed Nicholas Weston as the sole panelist in this matter on February 5, 2014. The Panel finds that it was properly constituted. 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.
The language of this administrative proceeding is English, being the language of the registration agreement. 4. Identification of Respondent
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against a domain name registration privacy service listed as the registrant of the disputed domain name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Taking into account the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr,WIPO Case No. D2009-0243, and in view that many UDRP panels in cases involving privacy or proxy services in which disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant, this Panel finds that in light of the record the named Respondents PrivacyP, Domain Admin, ID#10760 / Steve Blanton, e-commerce world payments llc are the proper respondents (the “Respondent”) (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9).
As noted having regard to the Complainant’s submissions and the location of the principal office of the Registrar, it appears that the applicable mutual jurisdiction1 is Australia.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. 4. Factual Background
The Complainant operates an online payments processing business operating in more than 40 countries2. The Complainant is a public company registered in the United Kingdom (“U.K.”) authorized to provide financial services and holds registrations for the WORLDPAY trademark in numerous countries including the Australia, India and United States (“U.S.”), which it uses to designate Internet banking and other electronic financial services. Its U.S. registration No. 2414305 has been in effect since1997 but the mark has been used in Europe since 1993 and online since 1994.
The Complainant conducts business on the Internet using numerous domain names containing the word “worldpay” including and with online payment processing websites resolving from these domain names.
The Respondent registered the disputed domain name on October 16, 2012 which resolved to a web page advertising online payment processing services. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark WORLDPAY in various countries as prima facie evidence of ownership.
The Complainant submits that the mark WORLDPAY is well-known globally (citing The Royal Bank of Scotland Group Plc v. Mike Steinbock,WIPO Case No. D2013-0121). The Complainant submits that its rights in that mark predate the Respondent’s registration of the disputed domain name . It submits that the disputed domain name is confusingly similar to its trademark, because the disputed domain name incorporates in its entirety the WORLDPAY trademark and that the similarity is not removed by the addition of an abbreviation for the descriptive word “e-commerce”, namely “ecom” (citing Chanel, Inc v. Colognezone,WIPO Case No. D2000-1809).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that: “The website under the [disputed domain name] states that it is a payment gateway offering payment solutions for online retailers, and that it offers fraud prevention, credit card processing, mail order and telephone order payments… The registration and use of the domain name is for illegitimate commercial gain and is clearly done to mislead consumers that it is associated with or operated by the Complainant.”
Finally, the Complainant alleges that the registration and use of the disputed domain name were, and currently are, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules. On the issue of registration, the Complainant submits the mark WORLDPAY is well-known and that the Respondent must have been aware of the rights the Complainant has in the trademark at the point of the registration. On use, the Complainant submits that by using the Complainant’s WORLDPAY mark in the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website, which “purportedly offers services identical to those the Complainant offers” evidently to deceive the Complainant’s customers by creating a likelihood of confusion with Complainant’s marks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark WORLDPAY in the U.S. and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark WORLDPAY pursuant to U.S. Trademark Registration No. 24114305 from August 26, 1997, which predates registration of the disputed domain name by some 15 years. Even so, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark WORLDPAY.
The Panel also finds that the mark WORLDPAY is well-known internationally and associated with the Complainant.
Turning to whether the disputed domain name is identical or confusingly similar to the WORLDPAY trademark, the Panel observes that the disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark (b) preceded by an abbreviation for the descriptive word “e-commerce”, namely “ecom” (c) followed by the top level domain suffix “.com”.
It is well established that the top level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). Accordingly, in this case, the relevant comparison to be made is with the second level portion of the disputed domain name “ecomworldpay”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is generally confusingly similar to that mark despite the addition of a descriptive word or words: (see Oki Data Americas, Inc. v. ASD, Inc., supra; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel finds that the use of an abbreviation for the descriptive word “e-commerce”, namely “ecom” is an additional element that does not serve to adequately distinguish the disputed domain name in this matter and so it remains confusingly similar to the Complainant’s registered trademark.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The disputed domain name is therefore confusingly similar to the WORLDPAY trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or a legitimate interest in a domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the relevant disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 2.0, paragraph 2.1).
It is well established that a respondent may register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; National Trust for Historic Preservation v. Preston,WIPO Case No. D2005-0424). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2.).
However, the Complainant contends that it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark and contends that Respondent has no rights or legitimate interests in respect of the disputed domain name because it is misleadingly directing Internet users to a web page offering competing services and thereby illegitimately seeking to mislead their customer. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the disputed domain name.
This Panel finds that the Respondent is making an illegitimate commercial use of the disputed domain name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s well-known mark in order to attract Internet users to its website and has been using the disputed domain name to divert Internet traffic to its web page for nefarious purposes.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see: M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the disputed domain name in bad faith. The onus is on the Respondent to make the appropriate enquiries before registering a domain name that includes someone else’s trademark. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports in this case a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The trademark WORLDPAY is so well-known globally for online payment processing services that it is inconceivable to the Panel that the Respondent was unaware of the WORLDPAY trademark when it registered a domain name similar to or incorporating the mark without knowing of it, let alone offer services that directly compete with those of the Complainant.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the disputed domain name (containing the trademark) can in certain circumstances be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant held its U.S. registration for the trademark WORLDPAY from 1997 predating its rights from the Respondent’s registration by over 15 years.
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. The disputed domain name resolves to a webpage containing services directly in competition to those available on the website operated by the Complainant. It is not a website critical of, or satirizing, the Complainant’s business which may warrant the use of a privacy service as protection from retribution. There is also deposed evidence that the Respondent, having registered a company in the U.S. to hold the disputed domain name, then reversed the credit card payment for such company registration and in doing so, the Respondent appears to have obtained a financial advantage. The inference the Complainant invites the Panel to draw is that the Respondent’s conduct exhibits, in conjunction with the present factual matrix, a pattern of bad faith behaviour and the Panel does so draw that inference. In the circumstances it seems reasonable to infer that the main purpose for which the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; CCM IP S.A. v. Traverito Traverito,WIPO Case No. D2007-0542; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
Moreover, failure to respond to the cease and desist correspondence also supports in this case a finding of bad faith (see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623 (“Respondent has registered and continues to use the domain name in bad faith for the reasons set out above and in particular […] Respondent’s failure to reply to the Complainant’s "cease and desist" letters”); Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598 (“Failure to positively respond to a complainant’s efforts to make contact provides strong support for a determination of ‘bad faith’ registration and use”)).
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
This Panel finds that the Respondent has taken the Complainant’s trademark WORLDPAY and incorporated it in the disputed domain name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to the Respondent’s web page which offer directly competing services for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: February 19, 2014
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the Registrar’s WhoIs at the time of the filing of the complaint with the provider or the principal office of the Registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320.
2 According to
Full & Egal Universal Law Academy