Worldpay Limited v. li wen
Claim Number: FA0811001235052
Complainant is Worldpay Limited (“Complainant”), represented by James
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldpay-motor.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 November 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 21, 2008. The Complaint was submitted in both Chinese and English.
On November 20, 2008, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <worldpay-motor.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 December 2, 2008, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 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 email@example.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 23, 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.
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 <worldpay-motor.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <worldpay-motor.com> domain name.
3. Respondent registered and used the <worldpay-motor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Worldpay Limited, provides electronic payment processing systems to consumers. Complainant markets its product and services under its WORLDPAY mark. Complainant registered its WORLDPAY mark with the United Kingdom Intellectual Property Office (“UKIPO”) on November 17, 2000 (Reg. No. 2,230,627); the European Union Office for Harmonization in the Internal Market (“OHIM”) on March 4, 2002 (Reg. No. 1,945,310); and the United States Patent and Trademark Office (“USPTO”) on May 18, 1999 (Reg. No. 2,245,537). Complainant operates a website for its products and services at its <worldpay.com> domain name.
Respondent registered the <worldpay-motor.com> domain name on September 14, 2008. Respondent’s disputed domain name resolves to a website that imitates Complainant’s website resolving from its <worldpay.com> domain name. Respondent’s website also prompts Internet users to disclose personal information such as 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.
Complainant has produced evidence of the registrations of
its WORLDPAY mark with the UKIPO, the OHIM and the USPTO. The Panel finds each of these registrations
are adequate to establish Complainant’s right in its WORLDPAY mark pursuant to
Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does
not require that the mark be registered in the country in which the respondent
operates; therefore it is sufficient that the complainant can demonstrate a
mark in some jurisdiction); see also
Complainant contends Respondent’s <worldpay-motor.com> domain name is confusingly similar to its WORLDPAY mark
because it contains the mark with the additions of a hyphen, the term “motor,”
and the generic top-level domain “.com.”
The Panel finds that the additions of punctuation such as hyphens,
generic terms and top-level domains do not sufficiently distinguish
Respondent’s disputed domain name from Complainant’s mark for the purposes of
Policy ¶ 4(a)(i), and thus the two are confusingly similar. See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and
top-level domains are irrelevant for purposes of the Policy); see also
Arthur Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove otherwise. 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”). The Panel finds Complainant has presented an adequate prima facie case to support its allegations and Respondent has failed to respond to these proceedings. Therefore, the Panel may conclude Respondent does not possess rights or legitimate interests in the disputed domain name. See 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 Panel, however, will examine the record and determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent’s disputed domain name resolves to a website that
mimics Complainant’s website resolving from its <worldpay.com> domain
name and asks Internet users to divulge sensitive personal information. The Panel finds Respondent is attempting to
“pass itself off” as Complainant in order to “phish” for Internet users’
personal information. The Panel finds
this use of the disputed domain name is 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). See Kmart of
Complainant maintains Respondent is not commonly known by the disputed domain name. The WHOIS information lists Respondent as “li wen,” and Complainant has not authorized Respondent to use its WORLDPAY mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to 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 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.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website which imitates Complainant’s primary website resolving from its <worldpay.com> domain name. Respondent is using the <worldpay-motor.com> domain name in an attempt to pass itself off as Complainant and phish for Internet users’ personal information. The Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also 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).
In addition, the Panel finds Respondent is using the confusingly similar <worldpay-motor.com> domain name pass itself off as Complainant in order to profit from the goodwill Complainant has established in its WORLDPAY mark by phishing for Internet users’ personal information. Thus, the Panel finds Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); 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).
The Panel find 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 <worldpay-motor.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 5, 2009
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