PayPal, Inc. v. Super Privacy Service c/o Dynadot / JVPAYS LTD
Claim Number: FA1703001722305
Complainant is PayPal, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Super Privacy Service c/o Dynadot / JVPAYS LTD (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xoomwallet.com>, registered with eNom, Inc.; and <wwwxoomwallet.com>, <walletxoom.com>, <xoomwaallet.com>, <xoomwalet.com>, <xoomwalle.com>, <xoomwaller.com>, <xoom-wallet.com>, <xoomwallets.com>, <xoomwalllet.com>, <xoomwallt.com>, <xoomwllet.com>, registered with Dynadot, LLC.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2017; the Forum received payment on March 17, 2017.
On March 17, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <xoomwallet.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 20, 2017, Dynadot, LLC confirmed by e-mail to the Forum that the <wwwxoomwallet.com>, <walletxoom.com>, <xoomwaallet.com>, <xoomwalet.com>, <xoomwalle.com>, <xoomwaller.com>, <xoom-wallet.com>, <xoomwallets.com>, <xoomwalllet.com>, <xoomwallt.com>, and <xoomwllet.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On March 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@xoomwallet.com, postmaster@wwwxoomwallet.com, postmaster@walletxoom.com, postmaster@xoomwaallet.com, postmaster@xoomwalet.com, postmaster@xoomwalle.com, postmaster@xoomwaller.com, postmaster@xoom-wallet.com, postmaster@xoomwallets.com, postmaster@xoomwalllet.com, postmaster@xoomwallt.com, and postmaster@xoomwllet.com. Also on March 24, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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(s) be transferred from Respondent to Complainant.
A. Complainant
i) Complainant registered its XOOM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,909,931, registered Dec. 14, 2004), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s domain names are confusingly similar to Complainant’s mark because they each include the mark fully, and the domain names merely add correct and incorrect spellings of the descriptive term “wallet(s),” a hyphen, the “www” prefix, and the “.com” general top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, and uses multiple privacy shields to conceal its identity. Further, Respondent is using the websites to purportedly offer “Hassle-free payment processing.” Respondent’s use of the XOOM mark in connection with payment processing and related services on the resolving websites demonstrates neither a bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
iii) Respondent has registered and is using the <xoomwallet.com>, <wwwxoomwallet.com>, <walletxoom.com>, <xoomwaallet.com>, <xoomwalet.com>, <xoomwalle.com>, <xoomwaller.com>, <xoom-wallet.com>, <xoomwallets.com>, <xoomwalllet.com>, <xoomwallt.com>, <xoomwllet.com> domain names in bad faith. While twelve domain names are at issue here, Policy ¶ 4(b)(ii) bad faith is imputed. Next, while Respondent is promoting competing payment processing services in direct competition with Complainant, this use is disruptive and Respondent likely profits from the confusion associated with the confusingly similar domain names, demonstrating bad faith under both Policy ¶¶ 4(b)(iii) and (iv). Respondent also registered and used the domain names with actual knowledge of Complainant’s marks and its rights in the marks. Finally, Respondent’s use of privacy shields constitutes bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response. The Panel notes the following registration dates for the domain names:
<xoomwallet.com>........................................................................... January 27, 2016;
<wwwxoomwallet.com>................................................................ February 14, 2017;
<walletxoom.com>.......................................................................... February 14, 2017;
<xoomwaallet.com>........................................................................ February 14, 2017;
<xoomwalet.com>........................................................................... February 14, 2017;
<xoomwalle.com>........................................................................... February 14, 2017;
<xoomwaller.com>.......................................................................... February 14, 2017;
<xoom-wallet.com>......................................................................... February 14, 2017;
<xoomwallets.com>........................................................................ February 14, 2017;
<xoomwalllet.com>......................................................................... February 14, 2017;
<xoomwallt.com>.................................................................... February 14, 2017; and
<xoomwllet.com>............................................................................ February 14, 2017.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the domain names are owned by the same individual or entity for the following reasons:
- All of the domains except xoomwallet.com resolve to the same “create an account” page on the same website. The domain xoomwallet.com resolves to the landing-page for the same website as the other disputed domains. All of the domains except xoomwallet.com were registered on February 14, 2017. All of the domains except for xoomwallet.com are registered with the same privacy provider, Super Privacy Service c/o Dynadot. Id.
- All of the domains have the same structure, namely combining PayPal’s XOOM trademark with “wallet” or a misspelling of “wallet”.
- The modus operandi of all the domains is the same – i.e., to attract consumers to the same online payment processing service called XOOM WALLET.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are all jointly controlled. The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
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."
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.
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(f), 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 (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.”).
Complainant registered its XOOM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,909,931, registered Dec. 14, 2004), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s domain names are confusingly similar to Complainant’s mark because they each include the mark fully, and the domain names merely add correct and incorrect spellings of the descriptive term “wallet(s),” a hyphen, the “www” prefix, and the “.com” general top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, and uses multiple privacy shields to conceal its identity. Further, Respondent is using the websites to purportedly offer “Hassle-free payment processing.” Respondent’s use of the XOOM mark in connection with payment processing and related services on the resolving websites demonstrates neither a bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
Respondent has registered and is using the <xoomwallet.com>, <wwwxoomwallet.com>, <walletxoom.com>, <xoomwaallet.com>, <xoomwalet.com>, <xoomwalle.com>, <xoomwaller.com>, <xoom-wallet.com>, <xoomwallets.com>, <xoomwalllet.com>, <xoomwallt.com>, <xoomwllet.com> domain names in bad faith. While twelve domain names are at issue here, Policy ¶ 4(b)(ii) bad faith is imputed. Next, while Respondent is promoting competing payment processing services in direct competition with Complainant, this use is disruptive and Respondent likely profits from the confusion associated with the confusingly similar domain names, demonstrating bad faith under both Policy ¶¶ 4(b)(iii) and (iv). Respondent also registered and used the domain names with actual knowledge of Complainant’s marks and its rights in the marks. Finally, Respondent’s use of privacy shields constitutes bad faith under Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a response. The Panel may note the following registration dates for the domain names:
<xoomwallet.com>........................................................................... January 27, 2016;
<wwwxoomwallet.com>................................................................ February 14, 2017;
<walletxoom.com>.......................................................................... February 14, 2017;
<xoomwaallet.com>........................................................................ February 14, 2017;
<xoomwalet.com>........................................................................... February 14, 2017;
<xoomwalle.com>........................................................................... February 14, 2017;
<xoomwaller.com>.......................................................................... February 14, 2017;
<xoom-wallet.com>......................................................................... February 14, 2017;
<xoomwallets.com>........................................................................ February 14, 2017;
<xoomwalllet.com>......................................................................... February 14, 2017;
<xoomwallt.com>.................................................................... February 14, 2017; and
<xoomwllet.com>............................................................................ February 14, 2017.
Complainant registered its XOOM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,909,931, Registered Dec. 14, 2004), and has rights in the mark under Policy ¶ 4(a)(i). A USPTO registration confers rights in a mark. T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the XOOM mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain names are confusingly similar to Complainant’s mark because the domain names merely add correct and incorrect spellings of the descriptive term “WALLET” to the fully incorporated mark and append the “.com” gTLD. In addition to these alterations, one of the domain names also includes a hyphen and another also incorporates the letters “WWW” before the mark. Such alterations have not been considered distinguishing under Policy ¶ 4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (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.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”) see also Shoebuy.com, Inc. v. Domain Administrator, FA 1497256 (Forum June 25, 2013) (finding that the addition of the prefix “www” does not differentiate the domain name from the mark). As such, the Panel holds that the disputed domain names are confusingly similar to Complainant’s XOOM mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first 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 interests in the subject domain
names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its XOOM mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel notes that the disputed domain names’ WHOIS information lists “WHOISGAURD PROTECTED” or “SUPER PRIVACY SERVICE C/O DYNADOT” or “JVPAYS, LTD.” Therefore, the Panel holds that the Respondent is not commonly known by the disputed domain names.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent is using the resolving websites in a competitive manner or to conjure a false association with Complainant. Attempts to compete with a complainant, presumably for commercial gain, may not evince rights or legitimate interests. See CheapCaribbean.com,Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Complainant argues that Respondent is using the websites to purportedly offer “Hassle-free payment processing.” The Panel agrees that Respondent’s use of the XOOM mark in connection with payment processing and related services on the resolving websites demonstrates neither a bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xoomwallet.com>, <wwwxoomwallet.com>, <walletxoom.com>, <xoomwaallet.com>, <xoomwalet.com>, <xoomwalle.com>, <xoomwaller.com>, <xoom-wallet.com>, <xoomwallets.com>, <xoomwalllet.com>, <xoomwallt.com>, and <xoomwllet.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: May 1, 2017
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