DECISION

 

PayPal, Inc. v. Dev HD / 4ae

Claim Number: FA2310002065460

 

PARTIES

Complainant is PayPal, Inc. ("Complainant"), represented by Karen A. Webb of Fenwick & West LLP, California, USA. Respondent is Dev HD / 4ae ("Respondent"), Alabama, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <xpaypal.xyz>, <czpaypal.com>, <xpaypal.finance>, <dogepaypal.com>, <elonpaypal.com>, <pepepaypal.com> and <shibapaypal.com> (collectively "Domain Names"), registered with PDR Ltd. d/b/a PublicDomainRegistry.com and PSI-USA, Inc. dba Domain Robot (collectively "Registrars").

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 9, 2023; Forum received payment on October 9, 2023.

 

On October 10, 2023, the Registrars confirmed by e-mail to Forum that the <xpaypal.xyz>, <czpaypal.com>, <xpaypal.finance>, <dogepaypal.com>, <elonpaypal.com>, <pepepaypal.com> and <shibapaypal.com> domain names are registered with them and that Respondent is the current registrant of the names. Each of the Registrars has verified that Respondent is bound by their registration agreements 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 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2023 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@xpaypal.xyz, postmaster@czpaypal.com, postmaster@xpaypal.finance, postmaster@dogepaypal.com, postmaster@elonpaypal.com, postmaster@pepepaypal.com, and postmaster@shibapaypal.com. Also on October 12, 2023, 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 November 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, PayPal, Inc. is an online payment company, founded in 1998 that under its PAYPAL mark and related PAYPAL logo, offers a way for users to pay for goods and services online. On August 7, 2023, Complainant announced the launch of a cryptocurrency stablecoin that can be used by its users to make payments through its services.  Complainant has rights in the PAYPAL mark through Complainant's registration of the mark with multiple international government agencies, including the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 2,959,971, registered on June 7, 2005). Respondent's <xpaypal.xyz>, <czpaypal.com>, <xpaypal.finance>, <dogepaypal.com>, <elonpaypal.com>, <pepepaypal.com> and <shibapaypal.com> domain names are identical or confusingly similar to Complainant's PAYPAL mark as they merely add a letter ('x'), name or initials of an individual associated with public figures ("cz" being the initials of Changpeng Zhao, the cofounder of cryptocurrency exchange Binance and "elon" being the first name of Elon Musk, a prominent supporter of cryptocurrency) or names of cryptocurrency coins ("Doge", "Pepe" and "Shiba" each refer to prominent cryptocurrency coins) and a generic top-level-domain ("gTLD") to the wholly incorporated mark.

 

Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Respondent been authorized by Complainant to use the PAYPAL mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by advertising competing cryptocurrency payment services or holds the Domain Names inactively pending use for the purposes outlined above.

 

Respondent registered and uses the Domain Names in bad faith. Respondent disrupts Complainant's business as Respondent uses the Domain Names to either pass off as Complainant while purporting to offer competing services or holds the Domain Names inactively pending use for such a purpose. Additionally, Respondent had actual knowledge of Complainant's rights to the PAYPAL mark prior to registering the Domain Names based on the content of the resolving websites.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the PAYPAL mark.  Each of the Domain Names is confusingly similar to Complainant's PAYPAL mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has rights in the PAYPAL mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 2,959,971, registered on June 7, 2005). Registration of a mark with a nation's trademark agency is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, "Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)").

 

The Panel finds that each of the Domain Names is confusingly similar to the PAYPAL mark as they each incorporate the entire PAYPAL mark while adding various additional elements associated with the cryptocurrency industry, such as "doge" and "cz", and a gTLD.  Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis.  See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).

 

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

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. 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 Domain Names 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) 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 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."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the PAYPAL mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS information of record lists "Dev HD / 4ae" as the registrants of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).

 

Based on the material contained in the Complainant and uncontradicted by the Respondent, the Domain Names <xpaypal.xyz>, <czpaypal.com>, <elonpaypal.com>, <pepepaypal.com> and <shibapaypal.com>  ("Active Domain Names") resolve or have resolved to various websites ("Respondent's Websites") which, through the reproduction of the PAYPAL Mark, Complainant's logo and reference to payment services and cryptocurrency payment services, pass themselves off as official websites of the Complainant for the purpose of offering services in direct competition with Complainant's payment services. The use of a confusingly similar domain name to resolve to a webpage that directly offers services that directly compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum February 16, 2018) ("The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests."). See also Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

The Domain Names <xpaypal.finance> and <dogepaypal.com> ("Inactive Domain Names") are presently inactive. Passively holding a disputed domain name does not establish rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii). See TMP Int'l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) ("[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii)."). Furthermore, in the present case the Panel considers it likely that the Inactive Domain Names are being held pending use in a similar manner to the Active Domain Names.

 

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

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (August 2023), Respondent had actual knowledge of Complainant's PAYPAL mark since the Respondent's Websites pass themselves off as official websites of the Complainant and make repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register seven domain names that contain the PAYPAL mark and use five of them (with the remaining domain names being inactively held) to redirect visitors to websites that either offer services in direct competition with Complainant under the PAYPAL mark or otherwise make reference to the Complainant other than to take advantage of Complainant's reputation in the PAYPAL mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant's PAYPAL mark for commercial gain by using the confusingly similar Active Domain Names (the Inactive Domain names likely being passively held pending similar use) to resolve to websites that, through the use of the PAYPAL mark and logo, pass off as Complainant and purport to offer services in direct competition with the Complainant's services.  Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.").

 

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 <xpaypal.xyz>, <czpaypal.com>, <xpaypal.finance>, <dogepaypal.com>, <elonpaypal.com>, <pepepaypal.com> and <shibapaypal.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: November 2, 2023