WorldPay Limited v. Super Super Store ltd
Claim Number: FA0708001067449
Complainant is WorldPay Limited (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <worldepay.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 22, 2007.
On August 22, 2007, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <worldepay.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@worldepay.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <worldepay.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <worldepay.com> domain name.
3. Respondent registered and used the <worldepay.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WorldPay
Limited, is a wholly-owned subsidary of The Royal Bank of Scotland Group
plc. Complainant is a market-leading
payment service provider that conducts business worldwide. Complainant provides a wide range of products
and services designed to meet the requirements of trading online. Complainant holds numerous trademark
registrations for its WORLDPAY mark, including with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,414,305 issued December 19,
2000). Complainant also operates a
website at the <worldpay.com> domain name.
Respondent registered the <worldepay.com> domain name on December 13, 2006. Respondent’s disputed domain name resolves to a website that displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant. Additionally, Respondent has offered to sell the disputed domain name to Complainant for an undisclosed “substantial amount.”
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the WORLDPAY mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <worldepay.com>
domain name is confusingly similar to Complainant’s WORLDPAY mark as the
disputed domain name contains Complainant’s mark in its entirety with the
additions of the letter “e” and the generic top-level domain “.com.” Such additions do not negate the confusing
similarity between Complainant’s mark and Respondent’s disputed domain name
pursuant to Policy ¶ 4(a)(i). See
Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct.
19, 2000) (finding that the domain names <ecanadiantire.com> and
<e-canadiantire.com> are confusingly similar to Canadian Tire’s
trademarks); see also Int’l Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June
26, 2000) (finding that the domain name <ecomputerworld.com> is
confusingly similar to the complainant’s mark, COMPUTERWORLD); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant
when establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <worldepay.com> domain name. Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving this allegation, and then the burden shifts to Respondent once Complainant has made a prima facie case. The Panel finds that, in the present case, Complainant made a prima facie showing under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint allows the
Panel to presume that Respondent has no rights or legitimate interests in the
disputed domain name. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the
Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with
the rules ‘as it considers appropriate.”); see
also Am. Express Co. v.
Fang Suhendro, FA 129120 (Nat. Arb. Forum
Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.”). However, the Panel will
examine the record to determine if Respondent has rights or legitimate interests
under Policy ¶ 4(c).
Respondent is using the disputed domain name to operate a website that displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant. The Panel infers that such use is for Respondent’s own commercial benefit through the accrual of click-through fees. Such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Moreover, the Panel finds that Respondent is not commonly known by the <worldepay.com> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name and there is no other evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. Complainant asserts that Respondent is not authorized to use Complainant’s WORLDPAY mark and Respondent is not associated with Complainant in any way. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Furthermore, Respondent offered to sell the disputed domain name registration to Complainant. Respondent’s offer to sell the disputed domain name, which is confusingly similar to Complainant’s mark, evidences its lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the <worldepay.com> domain name to
redirect Internet users to a website that contains hyperlinks to third-party
websites, some of which are in direct competition with Complainant. Under Policy ¶ 4(b)(iii), such use
constitutes a disruption of Complainant’s business and is evidence of bad faith
registration and use. See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Additionally, the Panel
finds based on the uncontested evidence presented by Complainant that
Respondent receives click-through fees for the hyperlinks displayed on the
website that resolves from the disputed domain name. The Panel also finds that Respondent’s <worldepay.com> domain name is
capable of creating a likelihood of confusion as to the source and affiliation
of Complainant with the disputed domain name and corresponding website. In Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000), the panel found bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain. See also
Associated Newspapers Ltd. v. Domain Manager,
FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”). The
Panel thus finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant contends that
Respondent’s offer to transfer the disputed domain name to Complainant
demonstrates Respondent’s bad faith registration and use of the domain
name. The Panel finds that Respondent’s
offer insinuates that the domain name was registered primarily for the purpose
of selling the domain name registration to Complainant for valuable
consideration in excess of Respondent’s out-of-pocket costs directly related to
the domain name, which evidences registration and use in bad faith under Policy
¶ 4(b)(i). See Little Six, Inc v. Domain For
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <worldepay.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 5, 2007
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