The Complainant is RocketGate PR, LLC of Dorado, Puerto Rico, Unincorporated Territory of the United States of America (“United States”), represented by Hatton, Petrie & Stackler APC, United States.
The Respondent is Muhammad Amzar, Rocket Integration Technology SDN BHD of Shah Alam, Selangor, Malaysia, represented by Nur Maidin & Co., Malaysia. 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 March 27, 2018. On March 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 29, 2018, 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 April 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2018. The Center notified the Parties on April 27, 2018 that it would proceed to panel appointment. On April 25, 2018, the Center received an email communication with an attached letter from the Respondent. On April 30, 2018 the Center received a further email communication with an attached letter from the Respondent.
The Center appointed John Swinson as the sole panelist in this matter on May 2, 2018. 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 RocketGate PR, LLC of Puerto Rico. The Complainant operates RocketGate which is in the business of providing electronic processing of credit card transactions and electronic payments via a global computer network. As part of the RocketGate business, the Complainant offers a product known as RocketPay which is an online electronic wallet.
The Complainant owns a registered trade mark in the United States for ROCKETPAY, filed on October 27, 2014 and registered on January 19, 2016 (registration number 4887756) (the “Trade Mark”).
The Respondent is Rocket Integration Technology SDN BHD, of Malaysia.
The Respondent registered the Disputed Domain Name on November 9, 2017. At the time the Complaint was filed, the Disputed Domain Name resolved to a cryptocurrency website which traded the currency Dash. That website also offered e-wallet, merchant services, exchange services and payment processing services. At the time of this decision, the Disputed Domain Name redirects to , which provides similar cryptocurrency trading and payment processing services. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions. Identical or Confusingly Similar
The Complainant has a registered trade mark for ROCKETPAY in the United States. Where the Complainant holds a nationally or regionally registered trade mark or service mark, this prima facie satisfies the threshold requirement of having trade mark rights for purposes of standing to file a UDRP case (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Rights or Legitimate Interests
The Complainant submits that it is nearly certain the Respondent knew of the Complainant’s mark before registering the Disputed Domain Name. A respondent’s use of a disputed domain name will not be considered “fair” if it falsely suggests affiliation with a trade mark owner. The correlation between a disputed domain name and complainant’s trade mark is often central. The Disputed Domain Name incorporates the Complainant’s Trade Mark verbatim.
The Complainant sets out that apart from the circumstances surrounding its registration, to support a claim to rights or legitimate interests under the UDRP, the use of a disputed domain name must in any event not be abusive of third-party trade mark rights. In these circumstances, the Complainant submits that panels have been prepared to infer that a respondent knew, or should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Registration and Use in Bad Faith
The Complainant states that the Disputed Domain Name facilitates the sale of services competing with those provided by the Complainant, through its RocketPay wallet, in the exact same geographic and virtual area.
The Complainant states that panels have found that respondents who deliberately fail to search or screen domain name registrations against available online databases would be responsible for any resulting abusive registrations. The search result referring to the Complainant’s RocketPay product expressly notes that it is a registered trade mark. Therefore, if the Respondent had undertaken a search they would have been aware of the Trade Mark. The Complainant states that it learned of the website at the Disputed Domain Name specifically because one of the Complainant’s clients was erroneously directed to that website. Therefore, consumer confusion has already arisen, even if the Respondent did not intend it. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions.
On April 25, 2018 the Respondent sent an email to the Center attaching a letter which stated that the Respondent would consent to the transfer of the Disputed Domain Name subject to payment of compensation in the amount of USD 49,650. The Complainant rejected this offer.
On April 30, 2018 the Respondent sent a further email to the Center. The Respondent stated that the Disputed Domain Name is not a dormant domain name. It represents the Respondent’s “whole business and brand in Malaysia”. The Respondent stated that it is ready to show that the Disputed Domain Name is used fully for the purpose of the Respondent’s business and brand. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a formal Response.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the Trade Mark in its entirety, and no additional words have been added. The use of a new gTLD can, in some circumstances, play a role in determining identity or confusing similarity. However, in this case, the new gTLD “.today” does not serve such a purpose and as such the Panel considers that “.today” can be ignored for the purpose of testing confusing similarity, in the same way that a gTLD is generally ignored (see, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law rights in relation to the Trade Mark. (The Respondent submitted that the Disputed Domain Name is the Respondent’s “whole business and brand in Malaysia” but has not provided evidence of this fact.)
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent is offering products and services via the website at the Disputed Domain Name from which it is presumably deriving revenue.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the Disputed Domain Name resolved to the Respondent’s cryptocurrency website which trades Dash and provides ewallet services. Some of these services compete with those offered by the Complainant. At the time of this decision, the Disputed Domain Name diverts to , which offers services similar to those offered at . The Respondent is using the Complainant’s Trade Mark to redirect Internet users to its website at the Disputed Domain Name which offers services similar to those offered by the Complainant under the Trade Mark. This is not a bona fide use of the Disputed Domain Name.
The Respondent stated in an informal email communication that it was ready to submit documentation to show that the Disputed Domain Name is used fully for the purpose of the Respondent’s “whole business and brand in Malaysia”, but it did not do so. The prima facie case established by the Complainant has not been rebutted. The Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
If circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was to profit in some fashion from or otherwise exploit the Complainant’s Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).
The Complainant registered the Trade Mark on January 19, 2016. The Respondent registered the Disputed Domain Name on November 9, 2017. Given similarity of the services, it is highly unlikely that the Respondent was not aware of the Trade Mark at the time it registered the Disputed Domain Name. A simple Internet search would have alerted the Respondent to the existence of the Complainant and the Trade Mark and the similarity of the services offered by both parties.
At the time the Complaint was filed, the Respondent was using the Disputed Domain Name to offer similar services to those offered by the Complainant under the Trade Mark, and was doing so using the same brand name (i.e. RocketPay). At the time of this decision, the Respondent is using the Trade Mark to redirect Internet users to another website offering similar services, again, some of which compete with those offered by the Complainant. The Respondent is using the Disputed Domain Name to trade off the Complainant’s reputation in the Trade Mark. By using the Disputed Domain name in this way, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trade Mark. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent submits that the Disputed Domain Name is the Respondent’s “whole brand”, however the Respondent is now using the domain name to offer its cryptocurrency trading and ewallet services. The RocketPay brand was clearly not that important to the Respondent.
In these circumstances, the Respondent’s offer to sell the Disputed Domain Name for an amount far in excess of its out of pocket costs directly related to the Disputed Domain Name is further evidence of bad faith registration and use.
The Respondent had the opportunity to demonstrate good faith registration and use but did not do so. The Complainant succeeds on the third element 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.
John Swinson
Sole Panelist
Date: May 13, 2018
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