national arbitration forum

 

DECISION

 

WorldPay Limited v. xiaowen

Claim Number: FA0811001232655

 

PARTIES

Complainant is Worldpay Limited (“Complainant”), represented by James A. Thomas, North Carolina, USA.  Respondent is xiaowen (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <worldpaymotor.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2008. The Complaint was submitted in both Chinese and English.

 

On November 18, 2008, Beijing Innovative Linkage Technology Ltd. d/b/a Dns confirmed by e-mail to the National Arbitration Forum that the <worldpaymotor.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns and that Respondent is the current registrant of the name.  Beijing Innovative Linkage Technology Ltd. d/b/a Dns has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a Dns 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 November 26, 2008, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 16, 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@worldpaymotor.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <worldpaymotor.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <worldpaymotor.com> domain name.

 

3.      Respondent registered and used the <worldpaymotor.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, WorldPay Limited, is the owner of numerous trademark registrations for the WORLDPAY mark in various jurisdictions across the globe. For example: United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,245,537 issued May 18, 1999); United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,230,627 issued November 17, 2000); European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,945,310 issued April 3, 2002). Complainant uses the WORLDPAY mark in connection with promoting and providing online payment services throughout the world.

 

Respondent’s <worldpaymotor.com> domain name was registered on September 24, 2008 and currently resolves to an Internet error message. Additionally, Respondent has been the subject of previous UDRP proceedings in which the then-disputed domain names were transferred away from Respondent, including a case with the current Complainant. See e.g., WorldPay Ltd. v. xiaowen, FA 1191023 (Nat. Arb. Forum July 24, 2008). 

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has sufficiently established rights in the WORLDPAY mark through evidence of its registrations with the USPTO, UKIPO and 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 Policy ¶ 4(a)(i).”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).

 

Respondent’s <worldpaymotor.com> domain name contains Complainant’s WORLDPAY mark in its entirety followed by the generic term “motor” and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the additions of a gTLD and a generic term do not adequately distinguish a disputed domain name pursuant to Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel also takes note that an earlier UDRP Panel found Respondent’s then <world-paymotors.com>, <worldpay-vehicles.com> and <worldpayautors.com> domain names confusingly similar to the WORLDPAY mark and transferred them from Respondent to Complainant. See WorldPay Ltd. v. xiaowen, FA 1191023 (Nat. Arb. Forum July 24, 2008). These disputed domain names each contained Complainant’s WORLDPAY mark followed by a term similar to “motor” such as “motors” and “vehicles.” Under the above precedent, the Panel finds that the <worldpaymotor.com> domain name is confusingly similar to Complainant’s WORLDPAY mark pursuant to Policy ¶ 4(a)(i).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

As a preliminary matter under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has demonstrated a prima facie case against Respondent, and that it is now incumbent upon Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).

 

No Response has been filed in this case. Accordingly, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name, but will nonetheless proceed to examine the record in consideration of the elements listed under Policy ¶ 4(c). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).

 

The WHOIS information identifies Respondent solely as “xiaowen” and Complainant states that it has not granted permission or otherwise authorized Respondent to use its WORLDPAY mark in any way. Without any additional evidence, the Panel determines that Respondent is not commonly known by the <worldpaymotor.com> domain name pursuant to Policy ¶ 4(c)(ii). 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 Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

The <worldpaymotor.com> domain name resolves to an Internet error message. The Panel finds that Respondent has failed to make any active use of the disputed domain name. As a consequence, the Panel concludes that Respondent has not made either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

As previously established, there is at least one previous UDRP case in which Respondent was found to have registered and used an infringing domain name. This case in particular incorporated a similar disputed domain name and was additionally between the same parties. The Panel finds that Respondent is engaging in a pattern of registering infringing domain names. Consequently, the Panel finds that Respondent has registered and is using the <worldpaymotor.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”).

 

Furthermore, Respondent has failed to make any active use of the disputed domain name. This is sufficient to demonstrate bad faith. 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 Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Moreover, in light of the previous UDRP precedent against Respondent, the Panel considers this to be especially indicative of bad faith. Respondent’s previous disputed domain name resolved to websites that fraudulently mimicked Complainant’s mark and logo in an attempt to obtain personal information from Complainant’s customers. Although Respondent has not yet engaged in this behavior with the current disputed domain name, the Panel finds that it makes no sense to wait until Respondent repeats this unlawful behavior again. As a result, the Panel concludes that the current inactive use of the disputed domain name further demonstrates that Respondent registered and is using the <worldpaymotor.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith even though the respondent has not used the domain name because “[i]t makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

 

 

 

 

Accordingly, it is Ordered that the <worldpaymotor.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

John J. Upchurch, Panelist

Dated:  January 5, 2009

 

 

 

 

 

National Arbitration Forum