The Complainant is Fluid Pay, LLC, United States of America (“United States”), represented by Good Attorneys at Law, PA, United States.
The Respondent is Hallward WebDevs, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 13, 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. On October 12, 2020, the Respondent sent an amendment amending the remedy requested in the Complaint. 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 October 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2020. The Response was filed with the Center on November 16, 2020. The Center appointed Willem J. H. Leppink as the sole panelist in this matter on December 24, 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. 4. Factual Background The following facts are undisputed. The Complainant, Fluid Pay, LLC operates a web-based gateway that is used for electronic payments. Since the registration of the domain name The Complainant has acquired common law trademark rights in the mark FLUIDPAY, hereinafter referred to as the “Trademark”. Furthermore, the Complainant filed the US trademark application for the wordmark FLUIDPAY on September 28, 2020 (the “Application”). The Domain Name was registered on February 18, 2020. The Domain Name resolves to a website “www.fuidpay.com” (the “Website”). On the Website, a payment service for bitcoin payment is offered to merchants. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions. The Domain Name is confusingly similar to the Trademark. The Respondent specifically targeted the Trademark when registering the Domain Name, omitting the “l” in the term “fluid” in an attempt to capitalize on the Complainant’s brand and Internet users’ mistakes. As such, the Domain Name is confusingly similar to the Trademark. The Respondent has no rights or legitimate interests in the Domain Name. There is not, and has never been any affiliation, relation or communication between the Complainant and the Respondent. On the Website the Complainant’s services are offered and the language look and feel of the website of the Complainant are copied. The Respondent is an impersonator, counting on the user’s confusion between the Trademark and the Domain Name, which is not a bona fide offering. Furthermore, there is no evidence that the Respondent is intended to be non-commercial, or that it makes fair use of the Trademark. The Domain Name is registered and is being used in bad faith. The Respondent registered the Domain Name, which is confusingly similar to the Trademark and uses it in connection with payment processing services. It strains credulity to imagine that the Respondent could have registered the Domain Name without knowing the business and website of the Complainant. Furthermore, the Respondent purports to offer payment processing services, impersonating the Complainant in order to attract its business. B. Respondent The following is a summary of the Respondent’s contentions. The Domain Name is not intentionally made confusingly similar to the Trademark. The Domain Name is a combination of the words “Fluid” and “Pay”, to portray the seamless nature of the service. To make the name sound less ordinary, the Respondent omitted the letter “l” which resulted in the name “fuidpay”. The similarity with the Trademark is coincidental. The Respondent has legitimate interests in respect of the Domain Name. The Respondent invested in the Domain Name and came up with a name which best matched its business name. At the time of filing of the response, the Respondent had not processed any payments as it awaits to receive licenses from governmental bodies. The Respondent has no intention to hijack customers from the Complainant. The Respondent is willing to transfer the Domain Name to the Complainant, although the Respondent would appreciate a compensation from the Complainant. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark. It is not disputed that the Complainant has common law trademark rights in the Trademark. The Complainant has extensively substantiated that it is entitled to these common law trademark rights and thus the Complainant has shown that its mark has become a distinctive identifier which consumers associate with the Complainant’s services in line with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. This satisfies the Panel that the Complainant has established that it owns common law trademark rights in FLUIDPAY for the purposes of the Policy. As set out in WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison. The Domain Name only differs from the Trademark by the omission of the letter ‘l’. The Trademark is therefore easily recognizable in the Domain Name. Moreover, it is well established that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element (see section 1.9 of the WIPO Overview 3.0). In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. Therefore, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on a complainant, panels have recognized that proving a respondent’s lack of rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following: (i) before any notice of the dispute, the respondent’s 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark 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 at issue. The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests. The Respondent has not provided any evidence or circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use the Trademark or to apply for use of any domain name incorporating the Trademark. The Respondent claims that the Domain Name is composed of the words “Fluid” and “Pay”, in which the “l” is omitted in order to make the Domain Name less common and easier to pronounce. The Respondent has advised that no payments have been processed yet. The main question is whether before any notice of the dispute, the Respondent’s has used or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. In particular it narrows down to the question whether the Domain Name is used for the bona fide offering of these payment services. The Respondent has not convinced the Panel that the offering of payment services is bona fide. The Respondent has not provided any substantiation of its activities beyond what is mentioned on the Website. Moreover, the Panel has difficulties believing the Respondent’s explanation of how it has come to the Domain Name and rather seems to indicate that the Respondent has been aware of the Complainant and/or its activities. Therefore, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith The Panel refers to its findings under section 4.B of this decision and finds that the Domain Name was registered and is being used in bad faith. In light of the evidence filed by the Complainant, the Panel finds that the Trademark is, as well as the activities of the Complainant, internationally known amongst the relevant public. This is undisputed by the Respondent. Furthermore, the Domain Name was registered years after the Complainant acquired common law trademark rights for the Trademark. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time of registering the Domain Name, which is a requisite for a finding of registration of the Domain Name in bad faith (see AB Gustaf Kähr v. Prasanth sp, inet,WIPO Case No. D2011-1455; Real Madrid Club De Futbol v. Michele Dinoia,WIPO Case No. D2010-0261; and Advance Magazine Publishers Inc. v. Pablo Palermao,WIPO Case No. D2008-0026). Moreover, the Domain Name is used for identical services as provided by the Complainant, and there are clearly similarities between the Website and the website of the Complainant, e.g. the colors used, certain boxes and wording. The Panel finds that it can be assumed that the Respondent had the Trademark and/or the Complainant in mind when registering the Domain Name. The Panel finds that, in accordance with section 3.1.4 of WIPO Overview 3.0, the facts of the case point to an intent on the part of the Respondent to unfairly profit from the Complainant’s rights in this regard. Therefore, the Panel finds that the Respondent has registered the Domain Name in bad faith. The Domain Name is designed to imply that there is an affiliation between the Respondent and the Complainant, or that the Complainant endorses the Respondent’s activities even though no such affiliation or endorsement exists. UDRP panels have consistently held that it is bad faith to misrepresent an affiliation with a third party where none exists (Caterpillar Inc. v. Matthew Quin,WIPO Case No. D2000-0314). The Panel finds that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Website. The Panel also takes into consideration that the inherent risk exists that the Domain Name will be used for phishing schemes, in particular as the Respondent has not convinced the Panel that it is engaged in the bona fide offering of these services. Internet users receiving email from accounts associated with the Domain Name are likely to verify the authenticity of the email by checking the website that is associated with the Domain Name. Given the similarities between the Website and the website of the Complainant, the Internet user can easily be misled. Moreover, the Panel finds that the use of the Domain Name disrupts the Complainant’s business. Therefore, the Panel finds that the Respondent uses the Domain Name in bad faith. In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was 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 Domain Name, Willem J. H. Leppink
Sole Panelist
Date: January 5, 2021
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