The Complainant is Early Warning Services, LLC, United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondent is Vinay Shan, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2020, 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 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. On April 7, 2020, the Respondent contacted the Center requesting an automatic extension of four days. On April 8, 2020, pursuant to paragraph 5(b) of the Rules, the Response due date was extended until May 1, 2020. The Respondent did not submit a Response. On May 4, 2020, the Center notified the Parties that it would proceed to panel appointment, pursuant to paragraph 6 of the Rules. The Center appointed Steven A. Maier as the sole panelist in this matter on May 5, 2020. 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. On May 5, 2020, the Center issued Administrative Panel Order No. 1, directing the Complainant to provide further evidence of the date of the Respondent’s acquisition of the disputed domain name and of its own first use of the ZELLE trademark in commerce, and permitting the Respondent to reply. The Complainant filed a further submission accordingly on May 8, 2020, and the Respondent replied on May 12, 2020. 4. Factual Background The Complainant is a limited liability company, having its principal place of business in Scottsdale, Arizona, United States. It is a provider of digital payment services. The Complainant is the owner of various trademark registrations for the term ZELLE, including for example United States trademark number 5277307 for the word mark ZELLE, registered on August 29, 2017, for goods and services including financial transaction services in Class 36. The disputed domain name was first registered on December 16, 2010. The disputed domain name resolves to a “parking page” website, including links to online payment services. 5. Parties’ Contentions A. Complainant The Complainant submits that it has used the name and mark ZELLE in commerce since 2017 in connection with online payment services. Its evidence of its use of the mark comprises primarily screenshots of its website at “www.zellepay.com”, which it exhibited to United States trademark applications which it filed in 2017. The Complainant states that it is one of the world’s fastest growing digital payment networks, servicing over 700 financial institutions worldwide, and that it processed transactions worth USD 187 billion in 2019. The Complainant contends that the disputed domain name wholly incorporates a common misspelling of its ZELLE mark. It states that the addition of the term “pay” does not reduce the confusing similarity of the disputed domain name to its trademark, because it describes one of the Complainant’s core activities. It adds that it operates its primary website from “www.zellepay.com” and that the disputed domain name is effectively identical to that domain name. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its ZELLE trademark, that the Respondent has not been commonly known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. Instead, the Complainant contends that the Respondent is using the disputed domain name, comprising its ZELLE trademark and the term “pay”, which describes its services, to lure Internet users to its click-through website for commercial gain. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the Respondent acquired the disputed domain name in 2018 or 2019, and therefore after the Complainant commenced using its ZELLE mark in commerce for payment-related services. It exhibits in support of this a Domain Tools WhoIs history report which first records the Respondent as the registrant of the disputed domain name on February 1, 2019. The last prior registrant whose name is not privacy protected, as of January 26, 2018, is a limited liability company located in the United States. The Complainant submits that the disputed domain name wholly incorporates its ZELLE trademark and is identical to its domain name, but for the additional letter “e”, which is a clear incidence of typo-squatting. It contends that it is plain therefore that the Respondent registered the disputed domain name deliberately to trade off the Complainant’s reputation and goodwill and to gain a commercial advantage from its click-through links relating to payment services. It exhibits examples of those click-through links, including one to the name “Zelle” itself. The Complainant further contends that the Respondent intends to sell the disputed domain name for more than its documented out-of-pocket costs and exhibits a GoDaddy domain search offering the disputed domain name for sale for a minimum price of USD 2,000. The Complainant requests the transfer of the disputed domain name. B. Respondent Despite requesting an extension of time to do so, the Respondent did not file a Response in this proceeding. In its reply to the Complainant’s supplemental statement, the Respondent disputes the Complainant’s evidence as to the date it acquired the disputed domain name as being unreliable, but does not offer any information or evidence of its own concerning the date of that acquisition. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established that it has registered trademark rights for the name and mark ZELLE. The Panel finds that the disputed domain name wholly incorporates the material part of that mark (omitting the letter “e”), which is generally accepted by UDRP panels as sufficient to establish confusing similarity: see e.g. section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states: “… where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The addition of the dictionary term “pay” does not prevent a finding of confusing similarity under the first element. While noting that the threshold for establishing confusing similarity under the Policy is low, the Panel finds in the circumstances that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding, and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith In order to succeed in establishing bad faith, the Complainant must meet the conjunctive requirement of showing the disputed domain name was both registered and has been used in bad faith. For that reason, the Panel considers the date of the Respondent’s acquisition of the disputed domain name to be crucial, as if it acquired the disputed domain name prior to the Complainant’s use of the trademark in question, then it cannot have done so with bad faith intent. However, in the light of the Complainant’s evidence contained in the Domain Tools report in its Supplemental filings, and the lack of any contradictory evidence from the Respondent (although it disputes the reliability of the Complainant’s evidence), the Panel finds that the Respondent acquired the disputed domain name between January 2018 and February 2019, and therefore after the Complainant had commenced using its ZELLE mark in commerce for payment-related services. The Complainant submits that it is plain that the Respondent both registered and has used the disputed domain name with the intention of profiting from the Complainants goodwill, as the disputed domain name incorporates its ZELLE mark combined with the term “pay” and is effectively identical to the Complainant’s domain name “… 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.” The Panel is struck by the failure of the Respondent to dispute any of the Complainant’s material submissions concerning either rights or legitimate interests or bad faith, despite clearly being aware of this proceeding. In the absence of any such contradiction, the Panel accepts the Complainant’s submissions on balance. In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 Steven A. Maier
Sole Panelist
Date: May 13, 2020
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