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 Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“United States”) / Jackie White, Worldpaysu of West Hollywood, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (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 1, 2017, 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 June 7, 2017 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 June 12, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2017.
The Center appointed Tobias Zuberbühler 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 Complainant is a 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 operates in 146 countries in 116 currencies as part of the Worldpay Group, the net revenue of which was GBP 981.7 million in 2015.
The Complainant is the owner, amongst others, of several United States trademarks WORLDPAY (No. 2245537 and No. 2414305) with registrations dating back to May 18, 1999, and an International Trade Mark WORLDPAY (No. 1139206; registered on April 5, 2012).
The disputed domain name was registered on November 2, 2015. It resolves to a website purporting to offer payment services. 5. Parties’ Contentions A. Complainant
In summary, the Complainant contends the following:
The dominant element of the disputed domain name, “worldpaysu”, comprises the Complainant’s trademark WORLDPAY in its entirety, but extended to include the letters “su”. Based on the content of the website linked to the disputed domain name, the Complainant assumes that the disputed domain name is intended to phonetically represent the phrase “world pays you” – a phrase which suggests a business service similar to that of the Complainant. In any event, the only difference to the Complainant’s trademark is the addition of a two-letter suffix “su”. This does not sufficiently distinguish the disputed domain name from the Complainant’s trademark and in fact would clearly lead to confusion.
There is no relation between the Complainant and the Respondent, and the Complainant has not authorized the Respondent to use its trademark or register the disputed domain name. Whilst at first glance, the Respondent’s website appears to present a genuine business, there are a number of elements indicating that this is not the case. For example, (i) the various pages of the website appear to be little more than a verbatim copy of part of the text of a webpage of an unrelated United States-based third party; (ii) in the header of each webpage is a “CUSTOMER LOGIN” link that leads to a login page on a website for another organization which does not exist; (iii) the footer of each webpage includes the Twitter “bird” logo, but there is no actual link to Twitter.
Use of the disputed domain name will clearly cause confusion for customers and partners of the Complainant by deceiving them into thinking that the Respondent’s website is operated by or associated with the Complainant, and will disrupt the Complainant’s business. The only logical conclusion is that the Respondent has registered and is using the disputed domain name with the intent of trading on the reputation of the Complainant’s brand to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s brand, for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark WORLDPAY and the suffix “su”. According to the consensus view of UDRP panels, the addition of a descriptive term such as “su” to a trademark in a domain name would not prevent a finding of confusing similarity under the first element where the relevant trademark is recognizable within the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). In the Panel’s view, the Complainant’s trademark WORLDPAY is clearly recognizable in the disputed domain name, and the suffix “su” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark to avoid confusion.
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The website to which the disputed domain name resolves purports to offer identical (online payment) services as the Complainant, albeit with links to organizations that do not appear to exist and broken links which do not lead anywhere.
Against this background, there are no indications before the Panel of any right or legitimate interests of the Respondent in respect of the disputed domain name.
Based on the Complainant’s credible contentions and the Panel’s findings regarding registration and use in bad faith, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It is well established that the use of a domain name to display information aimed to create confusion with the complainant is considered as bad faith (see DFDS A/S v. Milena YUrevna Valenskaya,WIPO Case No. D2012-0840; Texts From Last Night, Inc. v. WhoIs Privacy Services Pty Ltd / Wang Shaopeng,WIPO Case No. D2011-1266; Bluewater Rubber & Gasket Co v. Mrs Sian Jones / Easyspace Privacy,WIPO Case No. D2010-2112). In consideration of the evidence submitted by the Complainant, this Panel is satisfied that the Respondent is attempting to trade on the Complainant’s reputation in order to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark. In the circumstances of the present case, such conduct constitutes bad faith registration and use in the sense of paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has established the Respondent’s bad faith registration and use 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.
Tobias Zuberbühler
Sole Panelist
Date: July 18, 2017
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