WorldPay Limited v. Mark Lazarus
Claim Number: FA0911001292534
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 <1worldpay.com>, registered with Namesdirect.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2009.
On November 2, 2009, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <1worldpay.com> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect has verified that Respondent is bound by the Namesdirect 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 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 25, 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@1worldpay.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 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <1worldpay.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <1worldpay.com> domain name.
3. Respondent registered and used the <1worldpay.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WorldPay
Limited, holds numerous trademark registrations for its WORLDPAY mark with the
United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,230,627 issued November 17, 2000), the EU Office
for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 1,945,310 issued March 4, 2002), and the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,245,537 issued May 18, 1999) in connection with a
wide range of products and services designed to meet the requirements of
business online, including services allowing merchants to accept payments over
the Internet and by phone, fax and mail.
Respondent, Mark Lazarus, registered the <1worldpay.com> domain name on July 22, 2009. The disputed domain name resolves to websites displaying various commerical links, including links to services similar to those offered by Complainant.
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 asserts rights in its WORLDPAY mark through its
holding of trademark registrations for the WORLDPAY mark with the UKIPO (e.g., Reg.
No. 2,230,627 issued November 17, 2000), the OHIM (e.g., Reg. No. 1,945,310 issued March 4, 2002), and the USPTO (e.g., Reg. No. 2,245,537 issued May 18,
1999). The Panel finds that Complainant
has established rights in the WORLDPAY mark under Policy ¶ 4(a)(i) through its
trademark registrations with the UKIPO, the OHIM, and the USPTO. See
Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29,
2005) (finding from a preponderance of the evidence that the complainant had
registered its mark with national trademark authorities, the Panel determined
that “such registrations present a prima
facie case of Complainant’s rights in the mark for purposes of Policy ¶
4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant argues that
Respondent’s <1worldpay.com> domain name is confusingly similar to Complainant’s WORLDPAY mark
pursuant to Policy ¶ 4(a)(i) because Respondent’s domain name incorporates the
entirety of Complainant’s mark and adds a nondistinctive number “1” and the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that the addition of the nondistinct number “1” creates
confusing similarity between the disputed domain name and Complainant’s
mark. See Am. Online,
Inc. v. garybush co
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Mark Lazarus.”
Complainant has not licensed or otherwise authorized Respondent to use
its WORLDPAY mark, or any variation thereof.
Without evidence to the contrary, the Panel finds that Respondent is not
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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);
see also
Respondent’s disputed domain name was registered on July 22, 2009. The disputed domain name resolves to websites displaying various commerical links, including links to services similar to those offered by Complainant. The Panel presumes that Respondent is profiting from this diversion through the collection of click-through fees and the Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommerical or fair use pursuant to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent attempts to attract Internet users interested in Complainant’s goods and services. Respondent then uses the disputed domain name to steer those users to the websites of Complainant’s competitors which the Panel finds is a disruption of Complainant’s business and is evidence of Respondent’s bad faith registration and use in violation of 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)).
The Panel finds Respondent’s competing use of the disputed
domain name and Respondent’s attempt to intentionally attract Internet users
and likely profit through the receipt of click-through fees by creating a
strong likelihood of confusion with Complainant’s WORLDPAY mark is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo!
Inc. v. Web Master, FA 127717 (Nat. Arb. Forum
Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a
name that infringes upon Complainant’s mark, Respondent is found to have
created circumstances indicating that Respondent, by using the domain name, has
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s website by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of the website
or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”);
see also
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 <1worldpay.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 17, 2009
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