The Complainant is VPay, Inc., United States of America (“United States”), represented by Smith & Hopen, P.A., United States.
The Respondent is Brokers Solutions Company Ltd., VPayment Company Limited, VPAYMENT CO.,LTD., Thailand. 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 31, 2021. On April 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2021, 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 April 14, 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 April 19, 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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. On April 18, 2021, the Center received an email communication from the Respondent. The Center notified the commencement of Panel appointment process on May 11, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 26, 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 According to the Complaint, the Complainant provides electronic processing services related to insurance claims and payments. It is a subsidiary of “Optum”, which is apparently a division of United Health Group. While the Complaint claims that the Complainant owns several trademark registration in the United States which constitute “a vast trademark portfolio”, the Complaint includes evidence that the Complainant is the owner of two registered trademarks in the United States: (a) United States Registered Trademark No. 3432014, VPAY, in respect of electronic processing of insurance claims and payment data in International Class 36 and which was registered on May 20, 2008; and The registration of the VPAY trademark was achieved claiming first use in commerce in January 2008. According to the Complainant, the disputed domain name was registered on October 15, 2016. The disputed domain name resolves to a website which may be described as a placeholder. After a notice about “cookies”, it states under a heading Home / A Few Words About Us: “We are the only professional consulting firm backed by a business association”. Then follows in the largest type on the page a heading or banner “ABOUT CMS PRO”. Underneath the page states “We are a single global partnership united by a strong set of values, focused on client impact and long term success.” Underneath that are two paragraphs of lorem ipsum placeholder text. Somehow, the site has apparently generated 3,250 “likes” according to a “button” on the page. Scrolling further down there are four boxes promoting four “greatful” clients: Frank’s Co, Retro Beats, Tourner and Retro Press. There is a copyright notice in the footer: “Copyright © 2021 VPAYMENT | Powered by CMS pro v5.00”. There is some other content on the site accessible by clicking links or buttons. The substantive content appears to promote the IT services of CMS Pro. The email received from the Respondent is in English. It provided a link to a Thai government registry maintained by the Ministry of Commerce Thailand. This registry confirmed that VPayment Co. Ltd registered, Registration No. 0105562136251. The company was registered on August 7, 2019. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the two registered trademarks referred to in section 4, VPAY and VPAYMENT. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7. Disregarding the “.cash” TLD, the disputed domain name consists of the Complainant’s first registered trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s VPAY trademark. It is therefore unnecessary to consider the second trademark. The Panel finds that the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. Contrary to the submission in the amended Complaint, the disputed domain name is an obvious derivation from the Respondent, VPayment Co. Ltd’s name. However, it appears that the disputed domain name was registered in 2016 and the Respondent VPayment Co. Ltd was registered only in 2019. The disputed domain name could not therefore have been derived from the Respondent’s name. There is no evidence that the Respondent VPayment Co. Ltd existed before 2016 or is in some way the successor of a business operating under the name VPayment. In fact, there is no evidence that this Respondent is in fact carrying on any business. Although an email was received from the Respondent pointing to the registration of the Respondent with the Ministry of Commerce in Thailand, the email does not provide any other substantive information. In these circumstances, the Panel cannot find that the disputed domain name derives from a name by which the Respondent was commonly known. Nor, as already noted, is there any evidence that a good faith business is being carried on. The Panel does not consider that mere registration of the company and the existence of a placeholder website are sufficient to show demonstrable preparation to use the disputed domain name in connection with a good faith offering. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name which the Respondent has not rebutted. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. The Complainant points out first that it has owned and been using its registered trademarks for at least eight years before the Respondent registered the disputed domain name. It says that its use has been so extensive that the fame and notoriety of both marks meant that the United States Patent and Trademark Office has accepted Declarations of Incontestability for them in 2015. The Complainant then contends that the Respondent “knew or should have known” this before it registered the disputed domain name. In reinforcement of the allegation of knowledge, the Complainant says further that the term VPAY is a coined term, not a dictionary word. The Respondent has not denied knowledge of the Complainant’s trademark or otherwise sought to explain how the disputed domain name was derived. So far as the evidence in the administrative proceeding goes, it shows that the Respondent VPayment Co. Ltd has been registered as a company, but it was registered only in 2019 after the disputed domain name was apparently registered. There is no evidence that the Respondent VPayment Co. Ltd actually carries on business or does anything. How the disputed domain name came into the Respondent VPayment Co. Ltd’s name has not been explained. The person identified in the Registrar’s Verification Response as the contact for this Respondent appears from media reports also to be the chief executive officer of the first named Respondent, Brokers Solutions Company Ltd. The evidence submitted with the Complaint shows further that the first named Respondent provides custom web application development services and in particular is involved in the finance industry providing services supporting “forex brokerage setup and website development”. Although the email received on behalf of the Respondent was received from this chief executive officer, it did not provide any explanation for the derivation of the disputed domain name or, apart from the incorporation of the Respondent VPayment Co. Ltd (several years later), any other explanation for the registration. In these circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith, bearing in mind that it has long been established that a passive registration without use can qualify as use in bad faith under the Policy. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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 Warwick A. Rothnie
(b) United States Registered Trademark No. 3839238, VPAYMENT, in respect of electronic processing of insurance claims and payment data in International Class 36 and which was registered on August 24, 2010.
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
In undertaking that comparison, it is permissible in the present circumstances to disregard the Top-Level Domain (“TLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Sole Panelist
Date: June 12, 2021
Full & Egal Universal Law Academy