PayPal, Inc. v. waqas Sher
Claim Number: FA1910001865500
Complainant is PayPal, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is waqas Sher (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paypalbuys.com>, registered with GoDaddy.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2019; the Forum received payment on October 4, 2019.
On October 7, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <paypalbuys.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2019 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@paypalbuys.com. Also on October 7, 2019, 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 October 29, 2029 to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the PAYPAL trademark established through its portfolio of registered trademarks described below and the goodwill established by Complainant through the use of the mark in its payments, money transfer and financial services since it was created in 1998.
Complainant submits that the disputed domain name is confusingly similar to its PAYPAL trademark arguing that the disputed domain incorporates the PAYPAL mark in its entirety, merely adding the term “buys” along with the most common generic top-level domain <.com> extension. Complainant submits that these additions to its trademark do not negate confusing similarity, citing several decisions of panels established under the Policy including eBay Inc. and PayPal, Inc. v. Noorinet and Linecom, D2016-0045(WIPO, April 11, 2016) (finding <paypalcn.com> confusingly similar to the PAYPAL trademark).
Complainant submits that prior to the filing of this Complaint, Respondent was using the disputed domain name to sell a variety of consumer goods using a logo that was clearly a copy of the PayPal Logo. After receipt of Complainant’s cease and desist letter dated September 9, 2019, complaining about Respondents use of the PAYPAL trademark on the website to which the disputed domain name resolves, Respondent removed the copy of the PayPal logo from his website but continues to use the PayPal logo as a favicon on the site and uses the PayPal trademark in the domain and throughout the site to drive traffic to Respondent’s own site where it offers products unrelated to Complainant and without Complainant’s authorization. Complainant submits that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Complainant submits that given the fame of the PAYPAL trademark, there is no use that Respondent could make of the disputed domain name that would be legitimate.
Complainant submits that Respondent registered and is using the disputed domain name in bad faith.
Complainant submits that since it was established in 1999 it has developed as a global company in the field of digital payments, money transfers, and financial services with over 286 million active users and revenue of over USD $15 billion in more than 200 markets worldwide, with an Internet presence at its <paypal.com> address.
Complainant argues that the fact that Respondent selected the disputed domain name that incorporates the PAYPAL mark in its entirety demonstrates without question that Respondent was not only familiar with Complainant’s PAYPAL mark at the time of registration of the domain name, but intentionally adopted this domain name in order to create an association with Complainant and its products and services.
Complainant submits that by using the famous PAYPAL mark to attract consumers to Respondent’s unrelated commercial business, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). In support of this submission Complainant refers to a number of decisions under the Policy, including V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”).
Complainant argues that by incorporating Complainant’s famous PAYPAL trademark into the disputed domain and continually referring to itself as “PayPal Buys” throughout the site, Respondent creates the false impression of a site that is sponsored by or otherwise endorsed by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on a global business for digital payments, money transfers, and financial services and is the owner of a portfolio of trademark registrations for the PAYPAL dating back to 2002 including: United States registered trademark PAYPAL, registration number 2646490, registered on November 5, 2002.
Complainant has an Internet presence and maintains its website at the <paypal.com> address.
The disputed domain name was registered on July 8, 2018 and resolves to a website which offers consumer goods including consumer products, handbags, wallets, phones, tablets, sport and outdoor equipment for sale under the name “PayPalBuys”.
There is no information available about Respondent except for that found in the Complainant, the Registrar’s WhoIs and the Registrar’s verification of the registration details which was requested by the Center in this proceeding. Respondent had used a proxy registration service to conceal his name. There was a response to the cease and desist letter sent by Complainant sent on September 19, 2019 from a person with a different name from a Hotmail email address. The person who responded stated that he assumed that he was in a “sort of partnership” with Complainant “by only accepting paypall payments” and refused to cease using the disputed domain name and allow it to expire as demanded 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."
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the PAYPAL trademark acquired through its ownership of the abovementioned portfolio of registered trademarks and its extensive use of the mark in its payments and financial services business.
The disputed domain name <paypalbuys.com> consists of Complainant’s trademark in its entirety, together with the word “buys” and the gTLD <.com> extension. Complainant’s trademark is the first, dominant and only distinctive element of the disputed domain name. The word “buys” is generic and the gTLD extension may be ignored in the context of this proceeding.
This Panel finds that the disputed domain name <paypalbuys.com> is confusingly similar to Complainant’s PAYPAL trademark. Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i).
Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name, arguing that Respondent has never been legitimately known as, or referred to as, PAYPAL or any variation thereof; that Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s PAYPAL mark; that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services; and that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because Respondent is using Complainant’s trademark without authority to advertise goods on his website; that Respondent is not making a noncommercial fair use of the disputed domain name.
In the circumstances, the burden of production shifts to Respondent to prove that he has rights or legitimate interests in the disputed domain name. Respondent has failed to discharge this burden and therefore this Panel finds that Complainant has succeeded in the second element of the test in Policy paragraph 4(a)(ii).
Complainant has provided evidence that it has acquired a global reputation in the use of the PAYPAL trademark and this Panel accepts that it is implausible that the registrant of the disputed domain name was unaware of Complainant, its rights in the PAYPAL mark and its business when the disputed domain name was registered. Respondent’s subsequent use of the disputed domain name confirms this. In correspondence adduced by Complainant, the reply received to Complainant’s cease and desist letter shows that Respondent the disputed domain name was linked to a website that intentionally referenced Complainant and its trademark.
This Panel finds that the disputed domain name was registered in order to take predatory advantage of Complainant’s reputation and goodwill in the PAYPAL mark and that Respondent has used the PAYPAL trademark on his website in order to create the false impression that there was a connection with Complainant.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and Complainant has therefore succeeded in the third and final element of the test in Policy paragraph 4(a)(iii) and is entitled to succeed in its application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paypalbuys.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 30, 2019
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