The Complainant is Worldpay Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by A. A. Thornton & Co., United Kingdom.
The Respondent is pay world of United States of America / PrivacyP of Nobby Beach, Queensland, Australia. 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 January 8, 2014. On January 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2014, 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 January 15, 2014 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 January 20, 2014. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 20, 2014.
The Center verified that 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 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2014. The Respondent did not file a Response. However, email communications were received on January 30, February 2 and 3, 2024 and a Response was filed with the Center by a third party on February 5, 2014. The third party cPanel, Inc. indicated that it had no relationship with any of the parties.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 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. 4. Factual Background
The Complainant is in the business of providing payment processing through face to face mail order, Paypal and online payments. The Complainant also provides anti-fraud systems, and a gateway service for merchants to access payments online. The Complainant has used the trademark WORLDPAY since 1993, and provided Internet payments under the mark since 1994 in Europe and since 1997 in the U.S. The Complainant owns many trademark registrations around the world for the mark WORLDPAY, and their trademark portfolio includes the following registrations:
Community Trademark Registration No. 10315646 – WORLDPAY (Class 36)
U.S. Trademark Registration Nos. 2245537 and 2414305 – WORLDPAY (Classes 9 and 36)
Indian Trademark Registration No. 1345007 – WORLDPAY
The Complainant operates its payment processing and anti-fraud systems in 148 countries in 120 currencies across Europe, U.S., Asia Pacific and other emerging markets. In 2012, the Complainant processed 165 billion (EUR) of global ecommerce transactions under the trademark WORLDPAY. The Complainant is part of the Worldpay Group, whose revenue in 2012 was £3089 million.
The Complainant owns several domain names including, , and .
The disputed domain name was created on September 8, 2013. 5. Parties’ Contentions A. Complainant Confusingly Similar
The Complainant submits that it owns registered trademark rights in WORLDPAY, as particularized above in paragraph 4.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s WORLDPAY trademark except for the addition of a hyphen between the words “world” and “pay”. The addition of a hyphen does not distinguish the disputed domain name from the Complainant’s WORLDPAY Trademark. Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered WORLDPAY trademark. Rights and Legitimate interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the domain name. The Complainant contends that the Respondent is not commonly known as “Worldpay”, and was never authorized or licensed by the Complainant to the use the WORLDPAY trademark in association with financial investment programmes. The Complainant further submits that the Respondent has not used the disputed domain name in a bona fide offering of goods and services, as the disputed domain name until November, 2013 reverted to a website which offered competing financial investment programmes and services (annex F to Complaint). The disputed domain name now reverts to a webpage stating the account has been suspended. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) Respondent registered and is using a confusingly similar domain name for commercial gain, by creating a likelihood of confusion with Complainant’s registered mark; (ii) Respondent must have been aware of the Complainant’s registered trademark rights in WORLDPAY when it registered the disputed domain name; (iii) Respondent has not responded to cease and desist letters sent by the Complainant in 2013 and (iv) Respondent is interfering with the Complainant’s business, and is misleading internet users into believing the disputed domain name is associated or related to the Complainant. B. Respondent
The Respondent did not file any response in this dispute. C. Third Party Response
A response was received from cPanel, Inc., as it was served with a copy of the Complaint in this proceeding. cPanel contends that it is not related to any of the parties listed in this dispute, and has no connection to the disputed domain name. cPanel takes no position in this proceeding. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trademark rights in the trademark WORLDPAY by virtue of European Community Trademark Registration No. 10315646, U.S. Trademark Registration Nos. 2245537 and 2414305 and Indian Trademark Registration No. 1345007.
The Panel further finds that the disputed domain name is confusingly similar with the Complainants’ registered trademark WORLDPAY. The disputed domain name contains all the elements the Complainants’ trademark WORLDPAY, differing only by virtue of a hyphen between the two words. The addition of a hyphen does not serve to distinguish the disputed domain name from the trademark in question.
Accordingly, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The disputed domain name was registered in September, 2013, 20 years after the Complainant began using, promoting and advertising the WORLDPAY trademark and associated services. The Respondent was never licensed or authorized to use the WORLDPAY trademark. The Respondent has not filed a Response, and accordingly there is no basis to find that any rights or legitimate interests are held by the Respondent in the disputed domain name.
Therefore, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has provided substantial evidence to support a finding that its WORLDPAY trademark has a well-established international reputation in its field.
The Panel finds that the Respondent must have been aware of the Complainant’s rights in the trademark WORLDPAY when it registered the disputed domain name. Furthermore, the Panel finds that the Respondent’s use of the disputed domain name in association with a website that promoted and purported to provide financial investment programs is tangible evidence of bad faith. The Respondent has attempted to use the disputed domain name to interfere with the Complainants’ business and to trade on the goodwill and reputation of the Complainant.
Therefore, the Panel finds that the Complainants have satisfied the requirement under 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.
Christopher J. Pibus
Sole Panelist
Date: March 19, 2014
Full & Egal Universal Law Academy