WorldPay Limited v. Daniel Ferries
Claim Number: FA0901001245391
Complainant is Worldpay Limited (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vpp-worldpay.com>, registered with Enom, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 2, 2009.
On February 2, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <vpp-worldpay.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 2, 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@vpp-worldpay.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vpp-worldpay.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <vpp-worldpay.com> domain name.
3. Respondent registered and used the <vpp-worldpay.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WorldPay Limited, is an electronic payment
processing company that was founded in 1993.
Complainant provides a wide range of online payment services to
businesses around the world. Complainant
holds numerous trademarks for its WORLDPAY mark, which was registered with the
United States Patent and
Trademark Office (“USPTO”) on May 18, 1999 (Reg. No. 2,245,537), the
United Kingdom Intellectual Property Office (“UKIPO”) on November 17, 2000
(Reg. No. 2,230,627), and the European Union Office for Harmonization in the
Internal Market (“OHIM”) on March 4, 2002 (Reg. No. 1,945,310). Complainant has also registered and continues
to use numerous domain names to conduct its business online, including
<worldpay.com>, <worldpay.net>, <worldpay.org>, and
<worldpay.info>, all of which resolve to Complainant’s website at
<worldpay.com>.
Respondent registered the disputed <vpp-worldpay.com> domain name on November 8, 2008. Respondent’s domain name resolves to a website that imitates Complainant’s official website by displaying Complainant’s name, marks, and logos. Internet users are then asked to sign into an account using their username and password, and to provide their e-mail address and other personal information.
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
provided the Panel with evidence of the registration of its WORLDPAY mark with
the USPTO, the UKIPO and the OHIM. The Panel finds that these
registrations establish Complainant’s rights in its WORLDPAY mark pursuant to
Policy ¶ 4(a)(i). See Mason
Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4,
2008) (“The Panel also concludes that Complainant’s trademark registration of
its mark provides ample basis to conclude that it has rights in the mark.”); see also Google,
Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004)
(finding that the complainant had established rights in the GOOGLE mark through
its holding of numerous trademark registrations around the world).
Respondent’s
<vpp-worldpay.com>
domain name contains the letters “vpp” and a hyphen preceding Complainant’s
WORLDPAY mark, and the generic top-level domain (“gTLD”) “.com” following the
mark. These changes are inconsequential
in the Panel’s mind under an analysis of Policy ¶ 4(a)(i),
which considers whether the domain name is confusingly similar to Complainant’s
mark. It is clear to the naked eye that
Complainant’s WORLDPAY mark is the only intelligible, and thus dominant,
portion of the <vpp-worldpay.com>
domain name. Adding three random
letters, a hyphen, and the gTLD does not add any distinctions or
source-identifying significance, especially considering that Respondent failed
to respond to the Complaint and attempt to explain why these additions
matter. Therefore, the Panel concludes
that Respondent’s <vpp-worldpay.com>
domain name is confusingly similar to Complainant’s WORLDPAY mark pursuant to
Policy ¶ 4(a)(i) See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb.
Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was
confusingly similar to the complainant’s AOL mark because “…the addition of a
string of indiscriminate letters to a famous mark in a second level domain does
not differentiate the domain name from the mark.”); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must initially establish a prima facie case that Respondent lacks rights and legitimate interests in the <vpp-worldpay.com> domain name. Based upon the allegations in the Complaint, the Panel finds that Complainant has established such a prima facie case, thus shifting the burden of proof with respect to this element of the Policy to Respondent. Since Respondent has not responded to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the <vpp-worldpay.com> domain name. However, for the sake of rendering a complete analysis, the Panel in its discretion chooses to analyze the elements of Policy ¶ 4(c) before making a final determination with respect to rights and legitimate interests under Policy ¶ 4(a)(ii). As a consequence of Respondent’s failure to respond, the Panel shall consider all allegations in the Complaint as true unless they are clearly contradicted by other evidence in the record. See 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 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.”).
Complainant contends Respondent’s <vpp-worldpay.com> domain name resolves to a website that
imitates Complainant’s official website by displaying Complainant’s name,
marks, and logos. Respondent’s resolving
website also encourages Internet users to log in to their accounts. This gives Internet users, and specifically
Complainant’s customers, the impression that they have reached Complainant’s
website when, in fact, they have not. In
the world of domain name disputes, this practice is referred to as “passing
off,” meaning that Respondent is attempting to convince Internet users that it
is Complainant. Furthermore,
Respondent’s resolving website asks Internet users for their e-mail address and
other personal information. This
practice is commonly referred to as “phishing,” meaning that Respondent is
improperly attempting to collect Complainant’s customers’ confidential
information under the guise of impersonating Complainant. Many previous panels have held, and this
Panel finds without equivocation, that Respondent’s use of the <vpp-worldpay.com> domain name to
pass itself off as Complainant and phish for customers’ confidential
information does not constitute a bona
fide offering of goods or services, nor does it exhibit a legitimate
noncommercial or fair use. Therefore,
Respondent lacks rights and legitimate interests in the <vpp-worldpay.com> domain name
pursuant to Policy ¶¶ 4(c)(i) and (iii). See 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); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb.
Forum Mar. 13, 2002) (stating that, where the respondent copied the
complainant’s website in order to steal account information from the
complainant’s customers, the respondent’s “exploitation of the goodwill and
consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal
activities is prima facie evidence of a lack of rights and legitimate
interests in the disputed domain name”).
Complainant also alleges that Respondent is not commonly
known by the <vpp-worldpay.com>
domain name. Absent a response, it is
certainly hard for the Panel to find otherwise since Respondent has not
provided a counter-argument. However,
Complainant indicates and the Panel takes notice of the fact that the WHOIS
domain name registration information identifies Respondent as “Daniel Ferries,”
which does not advance any basis upon which to find that Respondent could be
commonly known by the <vpp-worldpay.com>
domain name. It is obvious that
Respondent does not have permission or a license from Complainant to use the <vpp-worldpay.com> domain name, so
Respondent’s use of Complainant’s WORLDPAY mark in the domain name is not
authorized. Based on these findings, the
Panel concludes that Respondent lacks rights and legitimate interests pursuant
to Policy ¶ 4(c)(ii).
See Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not
commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see also
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent uses the <vpp-worldpay.com> domain name to divert Internet users seeking Complainant’s services to Respondent’s website, where Respondent attempts to pass itself off as Complainant. This clearly creates a likelihood of confusion as to the source of the <vpp-worldpay.com> domain name and resolving website; customers will believe they have reached Complainant’s official website when, in fact, they have not. Respondent is attempting to profit from the goodwill associated with Complainant’s WORLDPAY mark, which is confusingly similar to Respondent’s <vpp-worldpay.com> domain name. The Panel finds this to be clear evidence that Respondent registered and is using the <vpp-worldpay.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also 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”).
Respondent uses the <vpp-worldpay.com> domain name to engage in a phishing scam, misdirecting Internet users seeking Complainant’s genuine website to Respondent’s misleading website. By imitating Complainant’s website, Respondent is deceiving Complainant’s Internet customers and manipulating them into divulging sensitive personal information. Thus, Respondent registered and is using the <vpp-worldpay.com> domain name in bad faith pursuant to a general analysis under Policy ¶ 4(a)(iii). See 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); 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 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 <vpp-worldpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 24, 2009
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