The Complainant is Worldpay Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Surojit Manna, Worldpay of West Medinipur, India. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2017.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 28, 2017. 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 a payment technology company that provides payment processing services, facilitates face-to-face mail order and online payments, and develops anti-fraud systems. The Complainant operates its business in 146 countries worldwide. The Complainant owns several trade mark registrations for the WORLDPAY trade mark, including in China, the European Union, India, United Kingdom and the United States of America (“United States”). The Complainant’s United States trade mark, registration no. 2,245,537, was registered on May 18, 1999.
The Respondent is based in India, and the Disputed Domain Name was registered by the Respondent on February 12, 2016. The Disputed Domain Name resolves to a website that allegedly offers online booking and online utility payment services for businesses (the “Respondent Website”). 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant has registered rights in the WORLDPAY trade mark in multiple jurisdictions, including China, the European Union, India, United Kingdom and United States. The Complainant first began using the WORLDPAY trade mark in 1993. The Complainant’s WORLDPAY trade mark was previously found in other UDRP proceedings to be well-known internationally and associated with the Complainant (see Worldpay Limited v. PrivacyP, Domain Admin, ID#10760 / Steve Blanton, e-commerce world payments llc,WIPO Case No. D2013-2147).
(b) The Complainant has been in the payments industry for 30 years. In 2015, the Complainant became listed on the London Stock Exchange and a member of the FTSE100. The Complainant processed 13.1 billion transactions in 2015, and 7.2 billion transactions in the first half of 2016. The Complainant has also won several awards throughout the years.
(c) The Disputed Domain Name incorporates the Complainant’s WORLDPAY trade mark in its entirety, save for the suffix “india”. The suffix “india” denotes a geographical territory, in which the Complainant has substantial business, and does nothing to distinguish the Disputed Domain Name from the Complainant’s WORLDPAY trade mark.
(d) The Complainant has no relationship with the Respondent, and has not authorized the Respondent to use the Complainant’s WORLDPAY trade mark. The Disputed Domain Name resolves to a website that appears to offer online booking and utility payment services. The Complainant does not believe that the Respondent is offering any genuine services. The website includes a number of broken links, or links that simply point back to the website’s homepage. The Respondent’s use of the Complainant’s well-known WORLPAY trade mark is unauthorized and is an attempt to create the impression that the website to which the Disputed Domain Name resolves is secure, legitimate and trustworthy.
(e) The Complainant and its WORLDPAY trade mark are well-known worldwide, and the Complainant has numerous trade mark registrations for WORLDPAY. India was the third highest source of traffic to the Complainant’s official website, for the period of twelve months prior to the registration of the Disputed Domain Name. The Respondent must have been aware of the Complainant at the time it registered the Disputed Domain Name. The Respondent is using the Disputed Domain Name to confuse users and to deceive them into thinking that the website is associated with the Complainant, and will disrupt the Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the WORLDPAY trade mark, based on its registrations in China, the European Union, India, United Kingdom and the United States.
The Disputed Domain Name incorporates the Complainant’s WORLDPAY trade mark in its entirety, the only difference being the suffix “india”. It is well established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only deviation from this is the inclusion of a geographic indicator as a prefix or a suffix, such prefix or suffix does not typically negate the confusing similarity between the disputed domain name and the mark (see Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768). In this case, “worldpay” is the distinctive and prominent component of the Disputed Domain Name and the addition of the geographical term “india” does nothing to distinguish it from the Complainant’s WORLDPAY trade mark.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extensions, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the WORLDPAY trade mark many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name, or a name corresponding to it. The Disputed Domain Name resolves to a website that allegedly offers online booking and online utility payment services for businesses.
Even if the Respondent Website was offering genuine services, the Panel finds that such use cannot amount to a bona fide offering of services since the Respondent is using the Respondent Website to offer services in the same industry as the Complainant, and the Disputed Domain Name is confusingly similar to the Complainant’s WORLDPAY trade mark. As held by the panel in Microchip Technology, Inc. v. Milos Krejcik and EDI Corporation, d/b/a A,WIPO Case No. D2001-0337, although the respondent had been offering legitimate goods for sale prior to any notice of dispute, as the respondent used the domain name to resolve to a website where users were likely to be confused as to whether the site was affiliated with the complainant, the respondent could not be bona fide and did not have legitimate rights or interest in the domain name. Similarly, in Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052, where the respondent in that case was using the domain name to provide mortgage related services which competed with the complainant’s business, it was held that the “Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy.”
Based on the foregoing, and the fact that the Disputed Domain Name is confusingly similar to the Complainant’s WORLDPAY trade mark, the Panel finds that the Respondent has been using the Disputed Domain Name with the intent of misleadingly diverting consumers to the Respondent Website in order to make a commercial gain by offering services that directly compete with the Complainant, and to sell products. Such use cannot confer any rights or legitimate interests to the Respondent in the Disputed Domain Name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel accepts that the Respondent is likely to have known of the Complainant’s WORLDPAY trade mark at the time he registered the Disputed Domain Name, and has registered and has been using it in bad faith, based on the following:
(a) the Respondent acquired the Disputed Domain Name on February 12, 2016, which was more than two decades after the Complainant first began using its WORLDPAY trade mark in its business;
(b) the Respondent has been using the Disputed Domain Name to offer services that compete with the Complainant’s business;
(c) the Disputed Domain Name is confusingly similar to the Complainant’s WORLDPAY trade mark; and
(d) the Complainant and its WORLDPAY trade mark are well-known in India, where the Respondent is based, as India was the third highest source of traffic to the Complainant’s official website in the twelve months prior to the registration of the Disputed Domain Name.
The above cannot be mere coincidence. The Panel believes that the Respondent registered and is using the Disputed Domain Name with the intent of trading on the reputation of the Complainant’s WORLDPAY trade mark to attract Internet users to the Respondent Website, by creating a likelihood of confusion with the Complainant’s WORLDPAY trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent Website, for commercial gain. As stated by the panel in Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364, “it is use in bad faith […] where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page […] the confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay-per-click site that it then becomes clear that the website is unconnected with the trade mark holder.” The same reasoning can apply in this case.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Gabriela Kennedy
Sole Panelist
Date: March 9, 2017
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