Complainant is PayPal, Inc. of San Jose, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Tip Powers of Ashburn, Virginia, United States of America. / Moniker Privacy Services of Fort Lauderdale, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2015, 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 Complainant on March 4, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 9, 2015.
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 Respondent of the Complaint, and the proceedings commenced on March 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 2, 2015.
The Center appointed M. Scott Donahey as the sole panelist in this matter on April 21, 2015. 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
Complainant is a worldwide provider of online payment and money transfer services. Complaint, Annexes 3, 4, 5, and 9. Founded in 1998 and subsequently acquired by eBay, Inc., Complainant is the registrant of numerous domain names in which the Second Level Domain name is its registered service mark PAYPAL. Complaint, Annex 6. Complainant holds numerous service mark registrations with the United States Patent Office and the Office for Harmonization in the Internal Market of the European Union for the PAYPAL mark. Complaint, Annex 12. The mark was registered in the United States as early as November 5, 2002, and in the European Union as early as January 8, 2000. Id.
Respondent registered the disputed domain name on June 14, 2006. Complaint, Annex 1. Respondent uses the disputed domain name to resolve to a pay-per-click web site with prominent links to web sites operated by Complainant or its parent, but also containing links to web sites operated by other business entities. Complaint, Annexes 10 and 11. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant's PAYPAL mark in that it is identical but for the additional "l" added immediately preceding the generic Top-Level Domain ("gTLD") suffix. Complainant alleges that Respondent is not an authorized distributor, licensee, or authorized dealer, nor does Respondent have any other rights or legitimate interests with respect to the disputed domain name. Finally, Complainant argues that Respondent had to know of Complainant's PAYPAL mark at the time it registered the disputed domain name, since it had not only been registered long before, but also that Complainant was at the time Respondent first registered the disputed domain name famous around the world. Complainant contends that the domain name is being used to attract Internet users to the site assuming that they are dealing with Complainant, that the site is designed to mislead the user that it is affiliated with Complainant, and that Respondent is generating revenue resulting from the confused user clicking on the links to other businesses. Complainant argues that this constitutes bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is identical to Complainant's famous mark but for the addition of a final, additional "l". The addition or subtraction of one letter of a particular mark in the formation of a domain name has long been held to create a domain name that is confusingly similar to that mark. Veuve Clicquot Ponsardin v.Net-Promotion, Inc.,WIPO Case No. D2000-0347 (The use of the spelling "cliquot" in two of the disputed domain names was found to be confusingly similar to the CLICQUOT portion of the mark). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's PAYPAL mark. B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0"), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Respondent registered the disputed domain name long after Complainant had begun its worldwide registration of PAYPAL marks, and also well after Complainant's PAYPAL mark had become famous as a certifier of origin of the payment services Complainant offered. Respondent has used the disputed domain name to resolve to a web site that is designed to mislead the Internet user into believing that it is somehow connected to Complainant. The site to which the disputed domain name resolves contains links to some of Complainant's web sites and to web sites of Complainant's parent, all of which are intended to convince the user that he or she has arrived at a site which is operated by or affiliated in some way with Complainant. Moreover, the web site to which the disputed domain name resolves also contains links to sites of other business from which Respondent sure receives pay-per-click revenues. The Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 Complainant.
M. Scott Donahey
Sole Panelist
Date: April 23, 2015
Full & Egal Universal Law Academy