PayPal, Inc. v. ppb
Claim Number: FA2211002020641
Complainant is PayPal, Inc. (“Complainant”), represented by Fenwick & West LLP, United States of America (“United States”). Respondent is ppb (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ppbpaypal.com> (the “disputed domain name”), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on November 16, 2022; Forum received payment on November 16, 2022.
On November 18, 2022, the Registrar confirmed by e-mail to Forum that the disputed domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 November 22, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2022 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@ppbpaypal.com. Also on November 22, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant was founded in 1998 and is a leading global online payment company. Through its various websites and software, Complainant provides a fast, secure and easy way for users to send and receive payments online without sharing financial information, and with the flexibility to pay using their account balances, bank accounts, credit cards or promotional financing. Since its platform launched in 1999, Complainant has continuously used the PAYPAL trademark in connection with its goods and services. Complainant registered the PAYPAL trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 2,879,561, registered on August 31, 2004). Complainant owns registrations for the PAYPAL trademark in the United States and in 200 other jurisdictions worldwide (hereinafter collectively referred to as the “PAYPAL Mark”). Complainant owns the domain name <paypal.com>, which resolves to its official website at “www.paypal.com”.
Complainant claims that Respondent’s disputed domain name is confusingly similar to Complainant’s PAYPAL Mark as it wholly incorporates the PAYPAL Mark, preceded by the “ppb” acronym (abbreviation for “PayPal Business”), and followed by the “.com” generic top-level-domain (“gTLD”).
Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the PAYPAL Mark. Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because Respondent passes off as Complainant to offer services similar to those offered by Complainant.
The disputed domain name was registered on September 14, 2022 and initially resolved to a website that mimicked Complainant’s official site. As of the writing of this Decision, however, the disputed domain name resolves to an error landing page that states: “Your connection is not private. Attackers might be trying to steal your information from www.ppbpaypal.com (for example, passwords, messages, or credit cards). Learn more.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has registered trademark rights in the PAYPAL Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to Complainant’s PAYPAL Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that Complainant has rights in the PAYPAL Mark through its registration with the USPTO (e.g., United States Registration No. 2,879,561, registered on August 31, 2004). Registration of a trademark with the USPTO, is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish complainant’s rights in the HOME DEPOT mark).
The Panel also finds that Respondent’s disputed domain name is confusingly similar to the PAYPAL Mark under Policy ¶ 4(a)(i), as the disputed domain name incorporates the trademark in its entirety, preceded by the acronym “ppb” (abbreviation for PayPal Business), and followed by the “.com” gTLD.
The addition of a term or abbreviation and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s PAYPAL Mark under Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it 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 that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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 interests 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.”).
Further, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized, licensed or otherwise permitted Respondent to use the PAYPAL Mark. Moreover, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name initially resolved to a website that was designed to mislead users to believe that the site was affiliated with or sponsored by Complainant. Respondent’s resolving website advertised a service called “PPB”— purportedly an abbreviation for “PayPal Business” — that offered a payment system that was allegedly affiliated with or sponsored by Complainant. To further mislead users into thinking that the site was related to Complainant, Respondent intentionally displayed the PAYPAL Mark and PAYPAL logos throughout the site.
The Panel also finds that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent attempted to pass off as Complainant for Respondent’s commercial gain. Passing off for commercial gain can represent a failure to use a disputed domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate, noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (Respondent’s use of Complainant’s NETFLIX trademark in relation to audio visual services is not fair use as the site does not make it clear that there is no commercial connection to Complainant and thus amounts to passing off.
Additionally, Respondent’s resolving website displayed photos that Respondent intentionally copied from Complainant’s official website, including photos of Complainant’s headquarters and employees. Moreover, Respondent’s resolving website displayed the names and photos of Complainant’s executives, which Respondent intentionally copied from Complainant’s official website, falsely identified as being the executive team for the “PPB Association.”
In its complaint, Complainant provided screenshots of Respondent’s resolving website for the disputed domain name along with screenshots of Complainant’s official website to demonstrate such intentional copying by Respondent.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy as set forth below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the fame of the PAYPAL Mark, which was registered and used by Complainant many years before Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the PAYPAL Mark, constituting bad faith under Policy ¶ 4(a)(iii). Prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Third, Complainant claims that Respondent registered and was using the disputed domain in bad faith as Respondent attempted to pass off as Complainant for Respondent’s commercial gain. Use of a disputed domain name in connection with passing off to commercially benefit a respondent can evince bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ppbpaypal.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: December 28, 2022
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