The Complainant is Payoneer, Inc. of New York, New York, United States of America (the “United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Iurii Moran of London, United Kingdom. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2019, 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 March 28, 2019 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 March 29, 2019.
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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2019. However, the Respondent sent an email communication on May 3, 2019.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 9, 2019. 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, Payoneer, Inc., is a financial services company founded in the United States in 2005. The Complainant specializes in providing online money transfer and digital payment services, particularly facilitating multinational B2B payments. The Complainant processes cross-border payments in over 200 countries, deals with over 150 local currencies, currently has over four million users, supports over 35 languages and has 14 established physical locations around the world.
The Complainant owns several trade mark registrations for the sign PAYONEER throughout the world, including the following:
- PAYONEER, United States word mark registered with the United States Patent and Trademark Office (USPTO) on February 12, 2008 under number 3380029 in class 36;
- PAYONEER, International word mark registered with the World Intellectual Property Organization (WIPO) on May 9, 2016 under number 1303506 in classes 9 and 36.
The Disputed Domain Name was registered on January 26, 2013. According to the Complainant’s evidence, the Disputed Domain Name has been used to refer to a website offering financial services, namely personal and business loans. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith, including through the use of an email address connected to the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. The respondent submitted an informal email after the Response due date indicating that he was sick and that we would submit a reply. No further emails were received. 6. Discussion and Findings 6.1. Preliminary Procedural Issue: Respondent’s communication after the response deadline
The Panel, before taking up the discussion on the merits of the case, first addresses the issue of the informal communication sent by the Respondent to the Center after the Response deadline. On May 3, 2019, one day after the confirmation of the Respondent’s default, the Respondent sent an email stating the following:
“(…) My apologies I wasn’t able to communicate before the deadline. I was unable to reply in due course due to severe medical condition.
My solicitor is currently in the process of preparing the response on behalf of PayoneerLoans. I’ve been informed that this may take further 15 days to completion. I kindly ask the WIPO to adjourn the proceeding of appointing the Administrative Panel to another date. (…)”
The Panel notes, in particular, that Respondent’s email was not only filed after the term for response had expired, but does also fail to include any evidence of the Respondent’s allegation of a severe medical condition.
In addition, the Respondent stated that a response would be sent within 15 days of the email date of its informal communication. The Panel did not receive any response within that timeframe.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental/New Filings (including further statements or documents) received from either Party. Accordingly, it will be in the sole discretion of the Panel to determine whether to consider and/or admit the unsolicited filing in rendering its decision, and whether to order further procedural steps, if any.
When submitting an unsolicited filing after the due date for the response, the party submitting the filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in a administratively compliant response before the due date (e.g., owing to some “exceptional” circumstance) (See section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel is of the opinion that the Respondent had enough time to provide a response and that no evidence of any “exceptional” circumstances is provided. In the absence of such response, the Panel shall decide the dispute on the basis of the Respondent’s default. 6.2. Substantive Elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i) The disputed domain name is identical or confusingly similar to a trademark 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 Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks and service marks in which the Complainant has rights. The Complainant’s PAYONEER mark has been registered and used in connection to its financial services.
The Disputed Domain Name incorporates the Complainant’s PAYONEER mark in its entirety with the mere addition of the word “loans”. As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103; T, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms or numbers to a trademark is generally not a distinguishing feature (see, Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002).
As far as the Disputed Domain Names is concerned, the word “loans” is a common word in the English language. Therefore, the word “loans” does not avoid a finding of confusing similarity to the Complainant’s trademark. The only distinctive element of the Disputed Domain Name consists of the term “Payoneer”, which is identical to the Complainant’s trademark.
Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under the second element of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is an established consensus view of previous UDRP panels that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Complainant contends that the Respondent does not have any prior rights that may ground the registration and the use of the Disputed Domain Name. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel notes that the Respondent has essentially operated a website, connected to the Disputed Domain Name, which is in the same field as the Complainant’s activity, namely financial services. Although the Complainant does not provide loans as a service, the Panel considers that these services are closely related to the Complainant’s field of business. The Complainant also provides evidence of customers querying whether the Complainant provides loans, which shows that these services are usually seen to be part of the financial services industry.
Evidence of the case further suggests that the Respondent is not using the website connected to the Disputed Domain Name in connection with a legitimate activity. For example, the website linked to the Disputed Domain Name claims that banks such as Barclays or Santander are partners of the Respondent’s business. However, the official Twitter accounts of Barclays United Kingdom, Santander United States and Santander United Kingdom all denied any affiliation with the Respondent’s website.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. It even appears that the Respondent has taken active steps to conceal its identity, as the information contained in the WhoIs records is not accurate. In the absence of an administratively compliant Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element that they must establish. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The use of the Disputed Domain Name to operate a similar website under the same name offering similar services to Internet users creates a high likelihood of confusion with the PAYONEER name and associated services of the Complainant. Evidence shows that the PAYONEER trademark was extensively used by the Complainant before the registration of the Disputed Domain Name on January 26, 2013. Given the specific field of activity in which both parties are active, it is unlikely that the Respondent was unaware of the Complainant and its rights when it registered the Disputed Domain Name. The Panel notes that the Dispute Domain Name is composed of the Complainant’s trademark with the term “loans” which is related to the Complainant’s financial services. The Panel therefore finds that the Respondent’s awareness of the Complainant’s rights at the time of registration suggests bad faith. Also, in view of the Complainant’s activity in the financial services sector, fraudulent use of the Disputed Domain Name poses a real threat to the Complainant and its clients.
Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).
Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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.
Flip Jan Claude Petillion
Sole Panelist
Date: May 22, 2019
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