WorldPay Limited v. He Yong
Claim Number: FA0807001218044
Complainant is WorldPay Limited (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA. Respondent is He Yong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <world-payautos.com>, registered with Xin Net Technology Corporation.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2008. The Complaint was submitted in both Chinese and English.
On July 30, 2008, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <world-payautos.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 August 12, 2008, a Chinese Language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 2, 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@world-payautos.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 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <world-payautos.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <world-payautos.com> domain name.
3. Respondent registered and used the <world-payautos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WorldPay Limited, was founded in 1993 as a developer of an electronic payment processing system. Complainant has grown to become the world’s leading payment services provider with over 20,000 customers doing business via the Internet. Complainant owns trademark registrations in the WORLDPAY mark for the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,245,537 issued May 18, 1999); the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,230,627 issued Nov. 17, 2000); and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,945,310 issued April 3, 2002).
Respondent registered the <world-payautos.com> domain name on May 15, 2008. Respondent’s domain name resolves to a website that fraudulently imitates Complainant’s own website by duplicating the content, color scheme, and general appearance of Complainant’s site in addition to attempting to gather personal information from Internet users that navigate to the “Contact Us” page of Respondent’s 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 established rights in the WORLDPAY mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. 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 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.”).
Respondent’s <world-payautos.com> domain name domain name is confusingly similar to Complainant’s WORLDPAY mark as it simply adds a hyphen, the term “autos,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that such distinctions are not a sufficient means of distinguishing Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
contends that Respondent lacks any rights to or legitimate interests in the <world-payautos.com> domain
name. Where Complainant makes a prima facie case under Policy ¶
4(a)(ii), as it has here, the burden shifts to Respondent to set forth evidence
that it does possess rights to or legitimate interests in the disputed domain
name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no
rights or legitimate interests in respect of the Domain Name requires the
Complainant to prove a negative. For the purposes of this sub paragraph,
however, it is sufficient for the Complainant to show a prima facie case and
the burden of proof is then shifted on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.”); 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”).
Complainant contends that Respondent is using the <world-payautos.com> domain name to operate a website that fraudulently imitates Complainant’s own website, duplicating the content, color scheme, and general appearance. What is more, Respondent invites Internet users to enter in their e-mail address and other contact information upon navigating to the “Contact Us” portion of the website. The Panel finds that this practice and use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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 Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
There is no evidence in the record to suggest that Respondent is either commonly known by the <world-payautos.com> domain name or licensed to register domain names featuring Complainant’s WORLDPAY mark. The Panel 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <world-payautos.com> domain name to operate a website that imitates Complainant’s own website and invites Internet users to enter in their personal information when attempting to contact what Internet users think is Complainant. The Panel finds that this practice of “phishing” is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See 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); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
Respondent is attempting to pass itself off as Complainant
by imitating Complainant’s website and displaying Complainant’s mark and
content. This use of the domain name is
further evidence of Respondent’s bad faith in registration and use of the <world-payautos.com> domain name
under 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).
Finally, Respondent’s use of the disputed domain name to operate a website similar in appearance and content to Complainant’s website suggests that Respondent knew of Complainant’s trademark and intended to use the domain name in a “phishing” scheme. The Panel finds that registration of a domain name that is confusingly similar to a mark with knowledge of the mark holder’s prior rights is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").
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 <world-payautos.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 22, 2008
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