The Complainant is Stripe, Inc., United States of America, represented by Taft, Stettinius & Hollister, LLP, United States of America.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Joy Okoro, 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 March 24, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 30, 2021 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 31, 2021. 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 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. An informal response was filed with the Center on March 30, 2021. The Center appointed Vincent Denoyelle as the sole panelist in this matter on June 3, 2021. 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 based on the submissions in the Complaint and the Annexes to the Complaint. The Complainant provides payment software services and solutions, with headquarters in the United States and in Ireland. The Complainant is the owner of several trade marks for STRIPE including the following: - European Union Trade Mark STRIPE No. 010112498, registered on December 14, 2011. The Complainant is also the owner of several domain names reflecting its trade marks. The Domain Name was registered on August 15, 2019 and is not resolving to an active page at the time of the Decision. The Domain Name used to point to an active website reproducing the Complainant’s STRIPE trade mark and offering services relating to the Complainant’s business. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the STRIPE trade mark in which the Complainant has rights as the Domain Name incorporates the entire STRIPE trade mark preceded by the generic term “verified” and that such addition to the Domain Name does not prevent a likelihood of confusion between the Domain Name and the Complainant’s trade mark. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent has never been commonly known by the STRIPE trade mark nor any variations thereof. The Complainant also contends that the Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the STRIPE trade marks. Moreover, the Complainant submits that the Respondent has never operated any bona fide or legitimate business under the Domain Name, and is not making a noncommercial or fair use of the Domain Name. The Complainant adds that the Respondent was using the Domain Name to direct Internet users to a website for “Verified Stripe” which advertised services which are claimed to be in association with the Complainant’s services in a manner that trades on Complainant’s goodwill and is likely to confuse users as to the affiliation with the Complainant and disrupt Complainant’s business. Lastly, the Complainant alleges that the intention of the Respondent was to use the Domain Name to carry out fraudulent activities. The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant submits that there is no reason for the Respondent to have registered the Domain Name other than to trade off the reputation and goodwill of the STRIPE trade mark. In addition, the Complainant submits that the Respondent’s use of the Domain Name for what appears to be a phishing website is clear-cut bad-faith registration and use. Finally, the Complainant argues that the Respondent has created a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or service on website and is an example of bad faith as contemplated by paragraph 4(b)(iv) of the Policy. B. Respondent The Center received an informal email communication on March 30, 2021 from the Respondent, stating: “I don’t understand this email. I don’t understand at all.” In addition, the Center received an informal email communication on March 31, 2021 from the Respondent forwarded by the Complainant, stating: “Ok, there are many websites that sell stripe accounts, verifiedstripe.com isn’t the only one. Please let me know if there’s anything else I can do. I’m not into law and I don’t understand much of the In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in STRIPE, which is reproduced in its entirety in the Domain Name. The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark STRIPE in which the Complainant has rights. At the second level, the Domain Name incorporates the Complainant’s STRIPE trade mark in its entirety preceded by the term “verified”. The Panel finds that the addition of the descriptive term “verified” before the STRIPE trade mark in the Domain Name does not prevent a finding of confusing similarity between the Complainant’s trade mark and the Domain Name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Then there is the addition of the generic Top-Level-Domain (“gTLD”) “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test. Thus, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely: Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to [the respondent] 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) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or (iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name. Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name. The Complainant has stated that it has not licensed or otherwise authorized the Respondent to make any use of its trade mark STRIPE. There is no indication that the Respondent is commonly known by the Domain Name. In addition, the content of the website to which the Domain Name used to point reproduced the Complainant’s STRIPE trade mark and deceivingly implied an affiliation with the Complainant and this cannot be considered as a legitimate use of the Domain Name. Furthermore, the nature of the Domain Name, comprising the Complainant’s trade mark in its entirety with the addition of a term within the Complainant’s field of commerce (the term “verified” is commonly used in relation to online payments which is the Complainant’s core business) is likely to trigger an inference of affiliation especially in light of the overall circumstances of the case including the past content of the website to which the Domain Name used to point. See section 2.5.1 of the WIPO Overview 3.0. Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely: (i) circumstances indicating that [the respondent has] registered or acquired [a disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location. Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith. The Domain Name reproduces the exact STRIPE trade mark of the Complainant and this cannot be a coincidence given the overall circumstances of the present case including (i) the renown of the Complainant’s STRIPE trade mark, (ii) the targeted choice of a descriptive term preceding the trade mark STRIPE in the Domain Name which is relevant to the core business of the Complainant, (iii) the choice of the Respondent to deceivingly imply an affiliation with the Complainant and (iv) the informal communications from the Respondent making it clear that the Respondent is well aware of the Complainant. Thus, the Panel finds that the Domain Name was registered in bad faith. As for use of the Domain Name in bad faith, given the circumstances described in the Complaint and the evidence provided by the Complainant, the Panel considers that the Domain Name is used in bad faith. The past use of the Domain Name to point to a website reproducing the Complainant’s STRIPE trade mark and offering services relating to the Complainant’s business and purporting to circumvent the Complainant’s services constitutes use in bad faith and is within the scope of Section 4(b)(iv) of the Policy. Thus, the Panel finds that the Domain Name has been registered and is also 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 Vincent Denoyelle
However, since they said it’s because their brand name “stripe “ is in the domain and might cause confusion
among consumers, I have proceeded to REMOVE the selling of stripe accounts on the website/domain name.
attachments but I understand they have a problem with the domain. Also, let my domain be reinstated if it’s on hold.
Regards.” 6. Discussion and Findings
Sole Panelist
Date: June 17, 2021
Full & Egal Universal Law Academy