The Complainant is Payoneer, Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Quinv S.A., Luxembourg. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2019. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 25, 2019, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2019. In accordance with the Regulations, article 7.1, the due date for Response was December 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2020. The Center appointed Wolter Wefers Bettink as the panelist in this matter on January 8, 2020. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background The Complainant is a financial services company founded in the United States in 2005, providing online money transfer and digital payment services, particularly facilitating multinational B2B payments. The Complainant holds, inter alia, the following trade mark registrations (the “Trade Marks”): - United States word mark PAYONEER registered on February 12, 2008, under No. 3380029; - International word mark PAYONEER, covering the European Union, registered on May 9, 2016, under No. 1303506. The Domain Name was registered on July 5, 2007. The Domain Name resolves to a pay-per-click (“PPC”) webpage containing links such as “Payoneer Prepaid Mastercard”, “Payoneer Account” and “Payoneer Credit Card”, to websites of competitors of the Complainant. 5. Parties’ Contentions A. Complainant According to the Complainant the Disputed Domain Name is identical to its Trade Marks, as it contains PAYONEER without alteration or adornment, while the country-code Top-Level Domain (“ccTLD”) “.nl”, should be disregarded as it is a standard registration requirement. The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name as, to the best of its knowledge, the Respondent has not registered a trade mark for PAYONEER and is not commonly known by the term “Payoneer”. In addition, the Complainant points out, since the Domain Name resolves to a PPC webpage containing links to websites of competitors of the Complainant, there is no good faith offering of goods or services, nor is he making a legitimate noncommercial or fair use of the Domain Name, as the Respondent derives a commercial gain through PPC revenues and thus benefits from the confusion caused by the identical name by capturing traffic intended for the Complainant, and redirecting that to competitors of the Complainant. The Complainant states that, while PPC advertising links are not per se illegitimate, they cannot constitute noncommercial or fair use where those links exploit the goodwill and reputation of the Trade Marks, by redirecting users to websites competitive to the Complainant. Furthermore, the Complainant contends, the term “Payoneer” has no generic meaning, and is not a term a trader would legitimately choose unless seeking to create an impression of association with the Complainant. The Complainant submits that the Respondent is using the Domain Name in bad faith in accordance with Article 2.1(c) of the Regulations, since it is holding the Domain Name to prevent the Complainant from reflecting the Trade Marks in a corresponding “.nl” domain name. The Complainant points out that the Respondent has registered multiple domain names containing the “Payoneer” term, including but not limited to: The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the mark PAYONEER in its entirety (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). The ccTLD “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.2). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests Under article 3.1 of the Regulations, the Complainant has to make out a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Name upon which the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights to or legitimate interests in the Domain Name (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name and that it is not an authorized retailer or distributor of the Complainant’s products or otherwise authorized to use the Trade Marks. The Respondent has not provided evidence, nor is there any indication in the record of this case that the Respondent is commonly known by the Domain Name (article 3.1(b) of the Regulations). Furthermore, in view of the fact that the Domain Name resolves to a website which features links which lead to websites of competitors of the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Panel concludes that the Complainant have met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith In accordance with article 3.2 of the Regulations, the Complainant has to show that the Domain Name was registered or is being used in bad faith. Based on the information and the evidence provided by the Complainant, the Panel notes (i) the Respondent has registered multiple domain names containing the “Payoneer” term, some of which have been transferred to the Complainant at the order of panelists in previous cases; (ii) the Respondent has registered a number of domain names containing (misspellings of) well-known third-party trade marks; (iii) the element PAYONEER of which the Trade Marks consists, is incorporated in its entirety in the Domain Name, and does not appear to be a name of which the Respondent was likely to spontaneously or accidentally think; (iv) the Respondent has used the Domain Name for a website which features links which lead to websites of competitors of the Complainant; (v) the Domain Name is offered for sale on a third party website; and (vi) the Respondent did not file a Response. The Panel concludes that the Domain Name has been registered and is being used in bad faith. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name Wolter Wefers Bettink
Panelist
Date: January 22, 2020
Full & Egal Universal Law Academy