WorldPay Limited v. george todt
Claim Number: FA0812001240490
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 <limitlessoneworldpay.com> and <limitlessworldpay.com>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 2, 2009.
On December 31, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <limitlessoneworldpay.com> and <limitlessworldpay.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 January 5, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of January 26, 2009
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@limitlessoneworldpay.com
and postmaster@limitlessworldpay.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2009, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <limitlessoneworldpay.com> and <limitlessworldpay.com> domain names are confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <limitlessoneworldpay.com> and <limitlessworldpay.com> domain names.
3. Respondent registered and used the <limitlessoneworldpay.com> and <limitlessworldpay.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WorldPay Limited, founded in 1993, has developed and operated an electronic payment processing system under the WORLDPAY mark. Complainant registered the WORLDPAY mark (Reg. No. 2,245,537, issued May 18, 1999) 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: <worldpay.com>, <worldpay.net>, <worldpay.org> and <worldpay.info>, among others.
Respondent registered the disputed <limitlessoneworldpay.com> and <limitlessworldpay.com> domain names on September 26, 2008. The disputed domain names resolve to parked web pages that display third-party links and advertisements. Some of these third parties compete with Complainant’s business operations.
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’s registrations of the WORLDPAY mark with the USPTO and UKIPO each satisfy the requirement under Policy ¶ 4(a)(i) that Complainant demonstrate its rights in the mark. See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s disputed <limitlessoneworldpay.com> and <limitlessworldpay.com> domain names contain Complainant’s entire WORLDPAY mark with the following changes: (1) the generic words “limitless” and/or “one” have been added; and (2) the generic top-level domain “.com” has been added. The Panel aligns itself with prior precedent providing that the addition of a top-level domain is without merit. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This leaves the sole additions of the generic words for consideration by the Panel. The Panel notes that, despite these additions, Complainant’s mark remains the dominant element in the disputed domain names. Therefore, the additions of “limitless” and/or “one” do not create a meaningful distinction so as to thwart a finding of confusing similarity. See Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)). Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
In this case, Respondent has failed to set forth a response to the Complaint, much less any evidence to indicate that it has been, or is, commonly known by the disputed domain names. The WHOIS information unveils Respondent’s identity: “george todt.” Bolstering the patent implications of the WHOIS information is Complainant’s contentions that Respondent is indeed not commonly known by these domain names, and that Respondent lacks permission or authorization to use the mark in any form. The Panel chooses to follow the logical conclusion of the evidence in the record to find that Respondent is not and has never been commonly known by the disputed domain names. This consequently demonstrates Respondent’s lack of rights and legitimate interests under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also 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).
Complainant has alleged that the disputed domain names
merely resolve to parked web pages wherein third-party links and advertisements
are shown for Complainant’s competitors and unrelated businesses. The Panel notes that the submitted
screenshots wholly support these allegations.
Despite Respondent’s short tenure with these domain names, there is
clearly no other use being made with them, and it is beyond the Panel’s ability
to forecast or predict any other future use—intended or planned. Typically, parked web pages are utilized to
garner the referral fee revenue that flows through “sponsored” advertisements
and listings that populate these displays.
Without evidence or contentions to the contrary, the Panel presumes that
Respondent engaged in this activity for commercial gain. And while such may not necessarily be
indicative of a lack of a proper use, the Panel wholeheartedly notes that
Respondent cannot misappropriate Complainant’s mark to accomplish its ends,
whatever they may be. Therefore, the
Panel finds that Respondent has failed to create 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar.
27, 2007) (holding that the operation of a pay-per-click website at a
confusingly similar domain name was 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 also Meyerson v. Speedy
Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a
respondent has failed to offer any goods or services on its website other than
links to a variety of third-party websites, it was not using a domain name in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As the Panel noted previously, the disputed domain names resolve to parked web pages that display links and advertisements. That some of these links and advertisements lead Internet users to Complainant’s competitors is entirely relevant under Policy ¶ 4(b)(iii), which aptly and succinctly provides that Respondent can be found to have registered and used a disputed domain name in bad faith by disrupting Complainant’s business. The Panel can hardly be led away from the conclusion that diverting Internet users from their search for Complainant to the virtual doorstep of not one, but multiple, competitors through the display of hyperlinks likely disrupts Complainant’s operations. With this analysis, there is little choice but to find that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, this use of confusingly similar disputed domain
names to reroute these unsuspecting Internet users is not done as a mere lark. As discussed in Policy ¶ 4(a)(ii), the Panel presumes that Respondent seeks commercial
benefit: the tacit and implicit referral fees that are engendered when Internet
users choose to follow through with the displayed links on the corresponding
web pages. That this has been
intentionally created leads to the finding that Respondent has sought to
transfix Internet users into the resulting likelihood of confusion as to
Complainant’s source, endorsement, affiliation or sponsorship of the disputed
domain names and corresponding web pages.
This conclusion necessarily settles the foundation for a finding, which
the Panel so holds, that Respondent engaged in bad faith registration and use
under Policy ¶ 4(b)(iv). See
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 <limitlessoneworldpay.com> and <limitlessworldpay.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 13, 2009
National
Arbitration Forum