The Complainant is Stripe, Inc., United States of America (“United States” or “US”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Tyler Vasquez, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 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 July 15, 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 July 15, 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 July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2021. The Center appointed William R. Towns as the sole panelist in this matter on August 20, 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 Complainant is a provider of online financial services including credit card payment and transaction processing of bills and payments. The Complainant adopted and has used STRIPE as an indicator of source since as early as 2011, and holds multiple trademark registrations for its STRIPE mark issued in multiple jurisdictions, including among them the US, Canada (“CA”), Australia (“AU”) and the European Union (“EU”): − US Reg. No. 4451679, applied for January 11, 2011, and registered December 17, 2013; − EU Reg. No. 010112498, applied for July 11, 2011, and registered December 14, 2011; − EU Reg. No. 016270134, applied for January 20, 2017, and registered August 28, 2017; − EU Reg. No. 016272304, applied for January 20, 2017, and registered August 3, 2017; − EU Reg. No. 018309741, applied for September 9, 2020, and registered January 29, 2021; − EU Reg. No. 018309744, applied for September 18, 2020, and registered January 29, 2021; - CA Reg. No. TMA84397, applied for June 28, 2011, and registered February 20, 2013; - AU Reg. No.1487267, applied for/registered from April 24, 2012, entered on register January 7, 2014; and − International Trademark Reg. No. 1255080, registered January 14, 2015 (related to US. Serial No. 85214873). The disputed domain name was registered by the Respondent on February 20, 2021. The disputed domain name resolves to a website, “www.youtube.com/tylerofheartland”, which the Respondent uses to promote payment processing services similar to those of the Complainant, including payroll and customer service management. The Complainant’s legal representative on March 23, 2021, spoke with the Respondent. According to the Complainant, the Respondent was unwilling to voluntarily transfer the disputed domain name to the Complainant, but offered to sell the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has not been licensed, permitted, or otherwise authorized to register or use any domain names that are confusingly similar to the Complainant’s STRIPE mark. The Complainant further explains that the Respondent is using the disputed domain name to redirect Internet users to the “www.youtube.com/tylerofheartland” website (“Respondent’s website”), which promotes payment processing and other related payroll and customer service management in competition with the services of the Complainant. According to the Complainant, the Respondent’s use of the disputed domain name intentionally trades off the goodwill and reputation of the Complainant’s STRIPE mark, and as such the Respondent is neither making a bona fide offering of goods or services nor making any legitimate noncommercial or other fair use of the disputed domain name. The Complainant asserts that the Respondent has not been commonly known by the disputed domain name. The Complainant concludes that the disputed domain name was registered and is being used by the Respondent in bad faith. The Complainant reiterates that the Respondent had no reason to register the disputed domain name other than to trade off of the reputation and goodwill associated with the Complainant’s STRIPE mark. Citing Charles Jorden Holding AG v. AAIM,WIPO Case No. D2000-0403, the Complainant submits that the disputed domain name is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith”. According to the Complainant, the Respondent was aware of the Complainant’s widely-known STRIPE mark when registering the disputed domain name, in and of itself giving rise to a presumption of bad faith. The Complainant further assigns bad faith to the Respondent’s offer to sell the disputed domain name for valuable consideration in excess of the out-of-pocket expenses directly related to the disputed domain name. The Complainant also concludes that the Respondent has used the disputed domain name intentionally to attract for commercial gain Internet users to the Respondent’s website, which includes the Respondent’s intentional redirection of website traffic to services competing directly with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain name”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the STRIPE mark, in which the Complainant has demonstrated rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. The Complainant’s STRIPE mark is clearly recognizable in the disputed domain name.1 The first element test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.2 Applying this comparison, the Complainant’s mark is recognizable. The inclusion in the disputed domain name of descriptive words such as “payment” and “processing” does not prevent a finding of the confusing similarity between the disputed domain name and the Complainant’s mark.3 When at least a dominant feature of the relevant trademark is recognizable in the disputed domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.4 See Autodesk, Inc. v. Brian Byrne, meshIP, LLC,WIPO Case No. D2017-0191 (addition in disputed domain names Top-Level Domains (“TLDs”), in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.5 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s STRIPE mark. Regardless, the Respondent has registered the disputed domain name, appropriating the Complainant’s distinctive STRIPE mark, and has pointed the disputed domain name to a website on which the Respondent promotes payment processing services comparable to those of the Complainant, including payroll and customer service management. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following: (i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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. The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. It is evident to the Panel that the Respondent was aware of the Complainant and had the Complainant’s STRIPE mark in mind when registering the disputed domain name. To the extent, the Respondent might claim to be making a fair use of the disputed domain name, any reliance by the Respondent on decisions such as Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 would be misplaced. Fundamentally, a respondent’s use of a domain name would not be considered “fair” if it falsely suggests affiliation with the trademark owner. UDRP panels generally have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.6 And the use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick,WIPO Case No. D2014-1359; Project Management Institute v. CMN.com,WIPO Case No. D2013-2035. The Respondent’s registration and use of the disputed domain name appropriating the Complainant’s STRIPE mark in its entirety strongly suggests an attempt by the Respondent to deprive the Complainant of the ability of reflect its own mark in the disputed domain name. The Respondent insofar as the record reflects has made no effort to accurately disclose its relationship if any to the Complainant. Internet users seeking the Complainant’s website but redirected to the Respondent’s website could easily conclude the website they have arrived at is affiliated with, endorsed or otherwise sponsored by the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. See Autodesk, Inc. v. Brian Byrne, meshIP, LLC,WIPO Case No. D2017-0191. Further, and for the reasons discussed above, the Panel holds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. As noted, the Respondent has not been authorized to use the Complainant’s STRIPE mark. The Panel finds no indication in the record that the Respondent has been commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy, and nothing in the record supports a claim by the Respondent of rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, comprising the Complainant’s STRIPE mark with the additional terms “payment processing”, carries a risk of implied affiliation and cannot constitute a fair use when it impersonates or suggests sponsorship or endorsement by the Complainant.7 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the Respondent’ documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.> The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain name in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. The record is convincing that the Respondent had the Complainant’s STRIPE mark firmly in mind when registering the disputed domain name. The Respondent’s registration and use of a domain name appropriating the Complainant’s STRIPE mark as set forth above clearly demonstrates bad faith in the attendant circumstances of this case. The Respondent by all appearances sought to capitalize on the Complainant’s trademark rights, using the disputed domain name to create a likelihood of confusion with the Complainant’s mark. 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 William R. Towns 1 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
Sole Panelist
Date: September 1, 2021
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