national arbitration forum

 

DECISION

 

WorldPay Limited v. Isa Gashi

Claim Number: FA1001001303270

 

PARTIES

Complainant is WorldPay Limited (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA.  Respondent is Isa Gashi (“Respondent”), Netherlands.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info>, registered with Godaddy.com, Inc.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 18, 2010.

 

On January 18, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> 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 21, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 10, 2010 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@worldpaypass.com, postmaster@worldpaypass.net, postmaster@worldpaypass.org, and postmaster@worldpaypass.info by e-mail.

 

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

 

On February 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names are confusingly similar to Complainant’s WORLDPAY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names.

 

3.      Respondent registered and used the <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names in bad faith.

 

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

 

FINDINGS

Complainant, WorldPay Limited, develops and markets electronic payment processing systems and has done so since 1993.  Complainant offers its products and services under it WORLDPAY mark.  Complainant operates numerous websites resolving from domain names containing Complainant’s mark, such as <worldpay.com> or <worldpay.net>.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,245,537 issued May 18, 1999).

 

Respondent registered the <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names no earlier then October 5, 2009.  The disputed domain names resolve to websites that feature hyperlinks to electronic payment processing system providers which compete with Complainant.

 

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

 

Complainant has established rights in the WORLDPAY mark through its registrations with the USPTO.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).  Previous panels have also found that a complainant is not required to register its mark within the country of the respondent.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Complainant holds multiple trademark registrations of the WORLDPAY mark with the USPTO (e.g., Reg. No. 2,245,537 issued May 18, 1999).  Therefore, the Panel finds Complainant has established rights in the WORLDPAY mark under Policy ¶ 4(a)(i).

 

Respondent’s <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names are confusingly similar to Complainant’s WORLDPAY mark.  The disputed domain names combine Complainant’s entire WORLDPAY mark with the generic term “pass” and the generic top-level domains (“gTLDs”) “.com,” “.net,” “.org,” or “.info” respectively.  The Panel finds the addition of a generic term and a gTLD fail to sufficiently distinguish the disputed domain names from Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s WORLDPAY mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names.  The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) after Complainant makes a prima facie case in support of its allegations.  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain names.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  See 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, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).

 

Complainant asserts that Respondent has never been authorized to use the WORLDPAY mark.  Respondent has failed to provide evidence that it is commonly known by the <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names.  The WHOIS information lists the registrant of the domain names as “Isa Gashi.”  The Panel finds no evidence in the record suggesting that Respondent is commonly known by the disputed domain names.  Therefore, the Panel finds Respondent is not commonly known by the disputed domain names and has not established rights or legitimate interests in the <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Respondent’s <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names resolves to directory websites containing hyperlinks to Complainant’s competitors in the electronic payment processing system business.  Respondent likely profits from click-through fees from the aforementioned hyperlinks.  Therefore, the Panel finds Respondent’s use of the confusingly similar disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The websites resolving from Respondent’s <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names contain hyperlinks to electronic payment processing providers that compete with Complainant.  Complainant’s competitors may receive business that, except for Respondent’s confusingly similar disputed domain names, Complainant would have received from Internet users interested in Complainant’s electronic payment processing system products and services.  The Panel finds Respondent’s use of the confusingly similar disputed domain names disrupts Complainant’s electronic payment processing system business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See 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)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).

 

Respondent’s use of the <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names is for the purpose of attracting, for commercial gain, Internet users to the resolving websites.  The Panel infers Respondent receives click-through fees from the aforementioned hyperlinks.  Respondent’s use of Complainant’s WORLDPAY mark may confuse Internet users, interested in Complainant and Complainant’s electronic payment processing system products and services, as to Complainant’s sponsorship and affiliation with the resolving website.  Respondent attempts to profit from this confusion.  The Panel finds Respondent’s use of the confusingly similar disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Therefore, the Panel finds 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 <worldpaypass.com>, <worldpaypass.net>, <worldpaypass.org>, and <worldpaypass.info> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  March 4, 2010

 

 

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