WorldPay Limited v. Private Person
Claim Number: FA0805001189981
Complainant is WorldPay Limited (“Complainant”), represented by James
A. Thomas,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <cgi-worldpay.com>, registered with Tucows Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 13, 2008.
On May 12, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <cgi-worldpay.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 May
14, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 3, 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 postmaster@cgi-worldpay.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <cgi-worldpay.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <cgi-worldpay.com> domain name.
3. Respondent registered and used the <cgi-worldpay.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant develops comprehensive electronic payment processing systems for doing business online. Complainant registered the WORLDPAY mark with the United States Patent and Trademark Office (“USPTO”) on May 18, 1999 (Reg. No. 2,245,537). Complainant is the world’s leading payment service provider with over 20,000 customers doing business via the Internet and more than 1,200 banking and e-commerce partners worldwide.
Responded registered the <cgi-worldpay.com> domain name on March 14, 2008. The disputed domain name resolves to a website that displays Complainant’s WORLDPAY mark and logo, mirrors language at Complainant’s <worldpay.com> website, and contains a field for Internet visitors to enter their e-mail addresses.
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 has established rights in
the WORLDPAY mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. 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 U.S. Office of
Pers. Mgmt. v. MS Tech. Inc., FA 198898
(Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that
a mark is registrable, by so issuing a registration, as indeed was the case
here, an ICANN panel is not empowered to nor should it disturb that
determination.”).
Complainant contends that
Respondent’s <cgi-worldpay.com> domain name is confusingly similar to its WORLDPAY mark. The <cgi-worldpay.com> domain name differs from Complainant’s mark in three ways:
(1) the letters “CGI” have been added to the beginning of the mark; (2) a
hyphen has been added between the letters “CGI” and the mark; and (3) the
generic top-level domain (“gTLD”) “.com” has been added. Neither the addition of random letters nor
the addition of a hyphen sufficiently distinguishes a domain name from an
incorporated mark for the purposes of Policy ¶ 4(a)(i). The addition of a gTLD
also does not reduce the likelihood of confusion between the domain name and
the mark because every domain name must contain a gTLD. Therefore, the Panel finds that these changes
do not minimize or eliminate the resulting likelihood of confusion, and so
Respondent’s disputed domain name is not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Kelson Physician Partners, Inc. v.
Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or
confusingly similar to the complainant’s federally registered service mark,
KELSON); see
also Sports Auth. Mich. Inc.
v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a
hyphen to Complainant's mark does not create a distinct characteristic capable
of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); 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 contends that Respondent lacks all rights and legitimate interests in the <cgi-worldpay.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding 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”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Complainant contends that Respondent is not commonly known
by the <cgi-worldpay.com>
domain name, nor has it ever been the owner or licensee of the WORLDPAY mark.
The WHOIS record for the disputed domain name lists Respondent as
“Private Person.” This evidence, along
with the fact that Respondent has failed to show any evidence contrary to
Complainant’s contentions, compels the Panel to find that Respondent is not
commonly known as <cgi-worldpay.com> pursuant to Policy
¶ 4(c)(ii). See MRA Holding, LLC v.
Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that the respondent was not “commonly known by” the name “girls gon
wild” or <girlsgonwild.com>); 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").
Respondent maintains a website at the <cgi-worldpay.com> domain name that displays Complainant’s WORLDPAY mark and logo, and mirrors language at Complainant’s <worldpay.com> website in an apparent attempt to pass itself off as Complainant’s legitimate website. Respondent’s website at the <cgi-worldpay.com> domain name also contains a field that prompts Internet visitors to enter their e-mail address in an apparent attempt to get access to confidential personal information, a practice known as “phishing.” The Panel finds that these uses of the <cgi-worldpay.com> domain name are neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is disrupting Complainant’s business by passing off the website at the <cgi-worldpay.com> domain name as Complainant’s legitimate website. Internet visitors are likely to be confused by the similarity between the WORLDPAY mark and the <cgi-worldpay.com> domain name, the use of Complainant’s WORLDPAY mark and logo on Respondent’s website at the <cgi-worldpay.com> domain name, and the imitation of language that is on Complainant’s <worldpay.com> website. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Complainant also contends that Respondent in engaging in a “phishing” scheme to get access to the confidential personal information of Internet visitors who mistake Respondent’s website at the <cgi-worldpay.com> domain name for Complainant’s legitimate website. Because Respondent is taking advantage of a likelihood of confusion to engage in fraudulent activity, the Panel finds that this is an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(a)(iii), this use is also evidence of registration and use in bad faith. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
Respondent is also attempting to gain commercially through this diversion, both through the likelihood of confusion with Complainant’s mark and through Respondent’s phishing activity. The Panel finds that this is also an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in bad faith. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
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 <cgi-worldpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 23, 2008
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