WorldPay Limited v.
remarkableliving llc c/o Jose Arango
Claim Number: FA0807001213444
PARTIES
Complainant is Worldpay Limited, (“Complainant”) represented by James A. Thomas, of Troutman
Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <world-paymotors.us>, <worldpay-auto.us>,
<worldpayauto.us>, <worldpayvehicles.us>, <worldpay-vehicles.us>, <worldpayautos.us> and <worldpay-autos.us>,
registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
PANEL
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.
Judge Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On July 2, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a
Publicdomainregistry.com confirmed by e-mail to the Forum that
the <world-paymotors.us>, <worldpay-auto.us>, <worldpayauto.us>,
<worldpayvehicles.us>, <worldpay-vehicles.us>, <worldpayautos.us> and <worldpay-autos.us> domain names are registered with Directi
Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that
Respondent is the current registrant of the names. Directi
Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified
that Respondent is bound by the Directi Internet
Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On July 8, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 28, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in accordance
with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <world-paymotors.us>, <worldpay-auto.us>, <worldpayauto.us>, <worldpayvehicles.us>, <worldpay-vehicles.us>, <worldpayautos.us> and <worldpay-autos.us> domain names are confusingly similar to Complainant’s WORLDPAY mark.
2.
Respondent does not have any rights or
legitimate interests in the <world-paymotors.us>, <worldpay-auto.us>, <worldpayauto.us>,
<worldpayvehicles.us>, <worldpay-vehicles.us>, <worldpayautos.us> and <worldpay-autos.us> domain
names.
3.
Respondent registered and used the <world-paymotors.us>, <worldpay-auto.us>,
<worldpayauto.us>, <worldpayvehicles.us>, <worldpay-vehicles.us>, <worldpayautos.us> and <worldpay-autos.us> domain
names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, WorldPay Limited, was founded in
1993 and develops comprehensive electronic payment processing systems. Complainant has over 20,000 customers, as
well as 1,200 banking and e-commerce partners worldwide. Complainant has registered its WORLDPAY mark
with numerous governmental trademark authorities worldwide, including the
United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,230,627
issued November 17, 2000), United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,245,537 issued May 18, 1999), and the European Union Office for
Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,945,310 issued March
4, 2002).
Respondent registered the following disputed
domain names on their respective dates: <world-paymotors.us> (
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds that Complainant has
established its rights in the WORLDPAY mark through its predating registrations
of the mark with numerous governmental trademark authorities worldwide,
including the UKIPO, USPTO, and the OHIM pursuant to Policy ¶ 4(a)(i). See
Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005)
(“Complainant’s numerous registrations for its HONEYWELL mark throughout the
world are sufficient to establish Complainant’s rights in the HONEYWELL mark
under the [UDRP] Policy ¶ 4(a)(i).”); see
also ESPN, Inc. v. MySportCenter.com,
FA 95326 (Nat. Arb. Forum
Respondent’s
disputed domain names include Complainant’s entire and unaltered WORLDPAY mark
with the addition of hyphens, generic terms such as “motors,” “auto,” “autos,”
or “vehicles,” as well as the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the ccTLD and hyphen
additions are irrelevant under Policy ¶ 4(a)(i). Moreover, the Panel finds that the addition
of generic words such as these do nothing to differentiate the disputed domain
names. Therefore, the Panel finds that
all of the disputed domain names are confusingly similar to Complainant’s mark
under Policy ¶ 4(a)(i). See Future
Steel Holdings Ltd. v. Majercik, FA 224964 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights
or Legitimate Interests
The Panel finds that Complainant has met its
burden of setting forth a prima facie case
supporting its allegation that Respondent lacks rights and legitimate interests
in the dispute domain names. Therefore,
Respondent receives the burden of demonstrating its rights or legitimate
interests. See SEMCO Prods., LLC
v. dmg world media (
There is no evidence in the record to conclude that Respondent owns any
service marks or trademarks that reflect the disputed domain name. Therefore the Panel finds that Respondent does not have rights and
legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum
There is no information in the
record indicating that Respondent is commonly known by any of the disputed
domain names. Respondent is listed in
the WHOIS registration as “remarkableliving llc c/o Jose Arango.”
Moreover, Complainant has not authorized Respondent to use the WORLDPAY
mark in any fashion. Therefore, the
Panel finds that Respondent is not commonly known by the disputed domain names
under Policy ¶ 4(c)(iii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under UDRP Policy
¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Educ. Broad. Corp. v. DomainWorks
Inc., FA 882172 (Nat. Arb. Forum
Respondent is currently using the <world-paymotors.us>, <worldpayauto.us>
and <worldpay-vehicles.us> domain
names to resolve to websites that fraudulently imitate Complainant’s legitimate
website at the <worldpay.com> domain name, presumably to receive commercial
benefit by stealing Internet users’ private date through a phishing
scheme. Moreover, Respondent is not
making any active use of the <worldpay-auto.us>, <worldpayautos.us>, <worldpayvehicles.us>
and <worldpay-autos.us>
domain names. The Panel therefore finds
that Respondent cannot show any actual use or demonstrable preparation to use
any of the disputed domain names for a bona
fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iv). See 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 Bloomberg L.P. v. SC
Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has
been satisfied.
Registration
or Use in Bad Faith
Respondent is currently using the <world-paymotors.us>, <worldpayauto.us> and <worldpay-vehicles.us domain names to resolve to websites that fraudulently imitate Complainant’s legitimate website. The Panel finds that Respondent has intentionally attempted to manipulate the confusing similarity between the mark and these disputed domain names for fraudulent commercial gain, which constitutes bad faith registration or use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Moreover, the Panel
finds that Respondent’s attempts to engage in phishing via the <world-paymotors.us>, <worldpayauto.us>
and <worldpay-vehicles.us domain
names constitutes bad faith registration or use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v.
Moreover,
Respondent is not making any active use of the <worldpay-auto.us>, <worldpayautos.us>, <worldpayvehicles.us>
and <worldpay-autos.us>
domain names. The Panel finds that
Respondent’s inactive holding of these disputed domain names constitutes bad
faith registration or use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s
failure to make active use of its domain name in the three months after its
registration indicated that the respondent registered the disputed domain name
in bad faith); see also Pirelli & C. S.p.A. v.
The Panel finds that Policy ¶ 4(a)(iii) has
been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <world-paymotors.us>, <worldpay-auto.us>, <worldpayauto.us>, <worldpayvehicles.us>, <worldpay-vehicles.us>, <worldpayautos.us> and <worldpay-autos.us> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
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