WorldPay Limited v. Yi Feng
Claim Number: FA0805001195389
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 <worldpayauto.com>, registered with Xin Net Technology Corporation.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 28, 2008.
On May 29, 2008, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <worldpayauto.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 June 3, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of June 23, 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@worldpayauto.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 27, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <worldpayauto.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <worldpayauto.com> domain name.
3. Respondent registered and used the <worldpayauto.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WorldPay Limited, operates an electronic payment processing system. Complainant has run its business since 1993 under the WORLDPAY mark (Reg. No. 2,245,537, issued May 18, 1999), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant has also registered the mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,230,627, issued November 17, 2000). Complainant works with over 1,200 banking and e-commerce partners worldwide, and operates the following domain names in connection with its business, including the <worldpay.com>, <worldpay.net>, <worldpay.org> and <worldpay.info> domain names.
Respondent registered the <worldpayauto.com> domain name on April 16, 2008. Respondent is currently using the disputed domain name to resolve to a website that imitates Complainant’s website in layout and design, and displays features designed to glean private Internet user information. This website also displays Complainant’s logo and WORLDPAY mark.
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 asserted numerous registrations of the
WORLDPAY mark, all of which predate Complainant’s domain name
registration. The Panel finds that these
registrations with such governmental bodies such as the USPTO and UKIPO confer
upon Complainant sufficient rights in the WORLDPAY mark pursuant to Policy ¶
4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); 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 <worldpayauto.com> domain name includes
Complainant’s entire and unaltered WORLDPAY mark while adding the descriptive
word “auto” and the generic top-level domain (“gTLD”) “.com.” The addition of the gTLD is immaterial under
Policy ¶ 4(a)(i) because there is no way to register a domain name without such
an element. As for the generic word
“auto,” it is presumed that the word is the equivalent of “automobile.” Regardless of whether a car has anything to
do with Complainant, the dominant feature remains Complainant’s established
WORLDPAY mark. Simple put, the Panel
cannot find that “auto” distinguishes the disputed domain name from the mark
for the purposes of Policy ¶ 4(a)(i). As
such, the Panel finds that the disputed domain name is confusingly similar to
the mark under Policy ¶ 4(a)(i). See
Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ."); see also 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.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <worldpayauto.com> domain name under
Policy ¶ 4(a)(ii). The Panel finds that
Complainant has successfully discharged its burden of setting forth a prima facie case supporting its
allegations, and that Respondent now receives the burden of demonstrating its
rights or legitimate interests. 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).”); see also
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”).
The evidence before the Panel plainly works against
Respondent under Policy ¶ 4(c)(ii), in that nothing suggests that Respondent is
commonly known by the <worldpayauto.com> domain name. The WHOIS domain name registration
information lists the registrant as “Yi Feng,” and there is no license or
authority to use Complainant’s mark alleged by Respondent. The Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see
also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s prior rights in the domain name precede the respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question).
What Respondent has created in its registration of the
disputed domain name is a website that fraudulently imitates Complainant’s own
website. The layout and design match up
quite thoroughly, and Respondent even provides input fields for Internet users
who happened across the disputed domain name and website to enter their private
information. The activity of using sheer
deception and fraud to invite unsuspecting Internet users to divulge their rightfully
private information, such as account or social security numbers, is defined as
“phishing.” The Panel does not hesitate
in finding that Respondent has engaged in such an activity. What makes this scenario even more
distressing is that Complainant operates in the electronic payment
industry. Thus Respondent has attempted
to target a seemingly lucrative market for deception. It is beyond the grasp of logic and propriety
for this Panel to attempt to infer rights or legitimate interests in an exercise
of phishing, and it is with no trepidation that the Panel finds that
Respondent’s engagement in phishing is positively void of rights or legitimate
interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii), as it
constitutes neither a bona fide
offering of goods or services, nor a legitimate noncommercial or fair use. See Capital One Fin. Corp. v. Howel,
FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice
that is intended to defraud consumers into revealing personal and proprietary
information”); 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) ;
see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain name resolves to a website that imitates
Complainant’s website, and displays Complainant’s mark and logo. Internet users would likely be confounded as
to whether or not they are dealing with Complainant, and such deception heightens
the dilemma when it comes to the Internet users deciding whether to submit
personal information on the website.
Therefore Respondent has created a likelihood of confusion as to
Complainant’s affiliation with the disputed domain name and corresponding
website. Such is evidence of
Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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”).
The Panel finds that Respondent’s engagement in phishing
constitutes evidence of bad faith registration and use under Policy ¶
4(a)(iii), in that Respondent has attempted to fraudulently deceive Internet
users to divulging private information. See Capital
One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004)
(finding bad faith registration and use because the respondent used the domain
name to redirect Internet users to a website that imitated the complainant’s
website and to fraudulently acquire personal information from the complainant’s
clients); see also 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.”).
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 <worldpayauto.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 11, 2008
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