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 Domain Administrator, Paysafe Group PLC of Douglas, Isle of Man, United Kingdom. This company is named as Respondent as it is the registrant of record. The filed evidence establishes that this company’s name has been used without its knowledge or consent by whoever really registered the Disputed Domain Name. The term “Respondent” is used in the remainder of this decision (unless otherwise stated) to refer to that unknown person. 2. The Domain Name and Registrar
The disputed domain name (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 May 31, 2017. On June 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 2, 2017, the Registrar transmitted by email to the Center its verification response confirming that Paysafe Group PLC 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 June 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2017. On June 26, 2017 and June 27, 2017, the Center received informal email communications from the Respondent. On July 4, 2017, the Center informed the Parties of the commencement of the Panel appointment process.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 10, 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 relevant facts are largely straightforward and can be summarized as follows.
The Complainant is a leading payments technology company providing payment processing services and facilitating face-to-face mail order and online payments, as well as a developer of anti-fraud systems. The Complainant also provides a gateway service allowing merchants to access payments online, security products and reporting services. The Complainant’s e-commerce business operates in 146 countries in 116 currencies and offers 300 payment types across Europe, the United States of America, Asia-Pacific and emerging markets. The Complainant has been in the payments industry for 30 years. It processed 13.1 billion transactions in 2015 with a value of approximately GBP 402 billion supporting around 400,000 merchants globally. In the first half of 2016, the Complainant processed a further 7.2 billion transactions (an increase of around 15 percent from the same period in 2015). The Complainant is part of the Worldpay Group, whose net revenue over 12 months in 2015 was GBP 981.7 million (and for the first half of 2016, GBP 539.7 million, an increase of around 16 percent from the same period in 2015). Using its network and technology, the Complainant is able to process payments from geographies covering 99 percent of global GDP, across 146 countries and 126 currencies, with its customers able to accept more than 300 different payment types. In 2015, the Complainant listed its shares for trading on the main London Stock Exchange and in December 2015 became a member of the FTSE100. The Complainant owns numerous trademark registrations for WORLDPAY including for example European Union trade mark registration numbers 010315646, registered on March 9, 2012, and 1229706, registered on March 26, 2014. These trademarks are referred to in this decision as the “WORLDPAY trademark”.
At the time the Complaint was filed the Disputed Domain Name was linked to a website (the “Respondent’s Website”), details of which have been provided in evidence. At first glance, the Respondent’s Website gives the appearance of a sophisticated and well-established financial services business. However the filed evidence establishes that the website largely duplicates, with only very minor changes, the genuine website of a company called Neteller, one of Paysafe’s group companies, at “”. The Respondent’s Website includes an email address and a contact form which appear to function and which presumably allow the Respondent to collect information from anyone who uses them.
Evidence has been provided from Paysafe Group PLC confirming that the Disputed Domain Name and the Respondent’s Website are unconnected with their business and have been effected by the Respondent without their consent. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is similar to the WORLDPAY Trademark.
The Respondent has no rights or legitimate interests in the term “WORLDPAY”. It says that term has no other meaning other than in relation to itself and its services.
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the deceptive nature of the Respondent’s Website is clear evidence of bad faith, as is the fact that the Respondent has provided false contact details. B. Respondent
No Response has been filed. However on June 26, 2017, the Complainant’s representatives forwarded to the Center an email sent to the Complainant’s representatives on June 16, 2017, which reads as follows
“To: McDonnell, Jim
Subject: Domain Issue
Dear Jim,
I got your reference from as you have filed a case for the domain name www. which is used my client. I would like to request you to withdraw this case as we are not in different field and we dont have copyright content also i request you to understand our concern as we are not doing any business which will effect you and your company.
Please reply me and very thankful if you will understand my concern.
--
Regards:
Nitish”
The Complainant’s representatives replied indicating indicated they intended to proceed with this Complaint and a further email was then received on June 26, 2017, which read as follows:
“Kk not issue we will shutdown our website....”
On June 27, 2017, another email was received which read as follows:
“We will not withdraw from our side as we want this domain…so we will wait for final decision of authority…”
It is not clear to the Panel whether these communications were from the Respondent or approved by the Respondent. Nothing in these communications would affect the Panel’s reasoning, even if the Panel in its discretion treated these communications as a Response. Accordingly the Panel proposes to proceed on the basis that no substantive Response has been filed. 6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent (save possibly for the emails discussed above). Certainly no formal Response has ben filed. Given the Notification of Complaint and Written Notice were sent to the respective email and physical addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in that:
(i) The Disputed Domain Name is identical with or confusingly similar to a 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;
(iii) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s trademark WORLDPAY. It is established that the addition of a descriptive term (such as here “insta” which is an obvious abbreviation of the word “instant”) to the disputed domain name has little, if any, effect on a determination of identity or confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253);furthermore, mere addition of a descriptive term does not prevent a finding of confusing similarity under the first element (Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287).
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see, e.g., Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 has been commonly known by the domain name, even if the respondent has acquired no trade mark 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the WORLDPAY trademark. The Complainant has prior rights in the WORLDPAY trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, e.g., Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the WORLDPAY trademarks, the evidence as to the Respondent’s Website, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith.
In the present case, the Respondent’s motives are somewhat obscure. It would seem to involve a scheme to present on the Internet what appeared to be a genuine and substantive financial services website using a name which would readily be perceived as being connected with the Complainant. The Panel can conceive of no honest reason the Respondent could have had for this scheme. It seems most likely that it was part of some form of fraud, or possibly a vehicle for deceptively collecting data. The Respondent has been given an opportunity to provide any legitimate explanation it may have to explain this conduct. The Respondent has not responded. The Panel finds that there is no evidence to support a finding of good faith registration and use of the Disputed Domain Name. Accordingly, the Panel accepts the Complainant’s evidence that the Disputed Domain Name has been registered for the purpose of using it in connection with some form of fraudulent activity. The Panel finds that this is evidence of bad faith registration and use.
Furthermore, under the Policy, evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that “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” (Policy paragraph 4(b)(iv)). In the present case, the Panel concludes that the deliberate use of the Complainant’s WORLDPAY trademark as part of the Disputed Domain Name is most likely intended to enable the Respondent to attract for commercial gain visitors to the website. The fact that the commercial gain in question is associated with some form of dishonest behaviour does not matter – indeed it emphasizes the bad faith involved.
Further the Panel notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Nick J. Gardner
Sole Panelist
Date: July 19, 2017
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