WorldPay Limited v. Julie Warnement
Claim Number: FA0802001142602
Complainant is WorldPay Limited (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldpaytrust.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 5, 2008.
On February 5, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <worldpaytrust.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 February 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 27, 2008 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <worldpaytrust.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <worldpaytrust.com> domain name.
3. Respondent registered and used the <worldpaytrust.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WorldPay Limited, has developed secure electronic payment processing systems since 1993. Complainant provides services allowing merchants to accept payments over the Internet and by phone, fax, and mail. Complainant’s products enable customers to accept all major credit cards, debit cards and local payment schemes, bank transfers, installments, standing-order and direct-debit style payments from anywhere in the world. Complainant registered the WORLDPAY mark with the United Kingdom Intellectual Property Office (“UKIPO”) on November 17, 2000 (Reg. No. 2,230,627); with the European Union Office for Harmonization in the Internal Market (“OHIM”) on April 3, 2002 (Reg. No. 1,945,310); and with the United States Patent and Trademark Office (“USPTO”) on May 18, 1995 (Reg. No. 2,245,537). Complainant also owns the <worldpay.net>, <worldpay.org>, and <worldpay.info> domain names.
Respondent registered the <worldpaytrust.com> domain name on November 8, 2007. Respondent was previously using the disputed domain name to operate a website that redirected Internet users to Complainant’s <worldpay.com> domain name. The disputed domain name does not currently resolve to an active website.
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.
Complainant has registered the WORLDPAY mark with the UKIPO, the OHIM, and the USPTO, thereby establishing rights to the mark pursuant to Policy ¶ 4(a)(i). See 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."); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The <worldpaytrust.com> domain name is confusingly similar to Complainant’s WORLDPAY mark because it incorporates the entire mark and merely adds the generic term “trust,” a term capable of describing Complainant’s business. The panel in L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) found that combining the generic word “shop” with the complainant’s registered mark “llbean” did not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the Policy. Here, the generic term “trust” does not distinguish the disputed domain name for the purposes of confusing similarity under Policy ¶ 4(a)(i). Moreover, all domain names are required to have a top-level domain. In Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel stated that “it is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.” Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the <worldpaytrust.com> domain name from Complainant’s WORLDPAY mark. Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of making a prima facie case showing that Respondent lacks all rights and legitimate interests in the disputed domain name. Complainant asserts that Respondent has no rights or legitimate interests in the <worldpaytrust.com> domain name. In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel held that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and therefore, the burden shifts to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The Panel presumes that Respondent lacks all rights and legitimate interests because Respondent has not responded to the Complaint. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel found that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence. However, the Panel will examine all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c). See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”).
Complainant contends that Respondent has not been authorized or licensed to use the WORLDPAY mark. Absent licensing, if a respondent is commonly known by the disputed domain name, a panel may find that a respondent has rights or legitimate interests. Here, however, the WHOIS information indicates that the registrant of the <worldpaytrust.com> domain name is “Julie Warnement, WorldPay Inc.” Although the WHOIS information seems to indicate that Respondent is commonly known by the disputed domain name, there is no additional evidence to support such a finding. In City News and Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004), the panel concluded that “[a]lthough Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).” Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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).
Respondent was previously using the disputed domain name to redirect Internet users to Complainant’s official website. The Panel finds that using the disputed domain name without Complainant’s authorization to redirect Internet users to Complainant’s website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a noncommercial or fair use under Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
The disputed domain name does not
currently resolve to an active website.
Previous panels have held that non-active use of a disputed domain name
demonstrates lack of rights and legitimate interests. See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes
that Respondent's [non-active use] of the domain name does not establish rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also State Fair of
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent previously used the disputed domain name to redirect Internet users to Complainant’s official website, thereby earning a fee for the referral. Respondent was commercially benefiting from the good will associated with Complainant’s WORLDPAY mark. The panel in Sports Authority Michigan, Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) found that “[r]edirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.” As a result, the Panel finds that Respondent’s previous use of the <worldpaytrust.com> domain name was evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See CSC Holdings, Inc. v. cablevision-lightpath.com Inc. D2004-1057 (WIPO March 10, 2005) (the panel found bad faith when the disputed domain name redirected Internet users to the complainant’s website because where “ownership of the domain name at issue remains with the respondent, it can obviously be re-directed to another website of Respondent’s choosing”).
Moreover, the <worldpaytrust.com> domain name does not currently resolve to an active website. Previous panels have concluded that such use is evidence of registration and use in bad faith under Policy ¶ 4(a)(iii). See Clerical Medical Investment Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s non-active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel concludes that Respondent’s non-active use of the <worldpaytrust.com> domain name is evidence of registration and use in bad faith under Policy ¶ 4(a)(iii).
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 <worldpaytrust.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated March 20, 2008
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