PayPal, Inc. v. Anonymize, Inc.
Claim Number: FA2206001999827
Complainant is PayPal, Inc. (“Complainant”), represented by Karen A. Webb of Fenwick & West LLP, California, USA. Respondent is Anonymize, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <palpay.com>, registered with Epik Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2022; the Forum received payment on June 9, 2022.
On June 10, 2022, Epik Inc. confirmed by e-mail to the Forum that the <palpay.com> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik 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 June 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@palpay.com. Also on June 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in PAYPAL and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides online payment services by reference to the trademark, PAYPAL;
2. the trademark is registered with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 2,646,490, registered on November 5, 2002;
3. the disputed domain name was registered on February 12, 2000;
4. the domain name is for sale;
5. the domain name resolves to a webpage with the links, “SEND MONEY”, “RECEIVE MONEY” and “CREDIT CARDS”; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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 based on 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.[i]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Since Complainant provides evidence of its USPTO trademark registration the Panel is satisfied that it has rights in PAYPAL.
The gTLD, “.com”, can be ignored for the purposes of comparison of the domain name with the trademark. The term, “palpay” is an obvious transposition of the two syllables of the trademark and is visually, aurally and conceptually similar to the trademark. The Panel finds the disputed domain name to be confusingly similar to Complainant’s trademark[iii] and so finds that Complainant has satisfied the requirements of ¶ 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information for the domain name does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose. The evidence is that the disputed domain name is for sale and that it resolves to a parked webpage with click-through links to financial services broadly of the same description as those offered by Complainant under the trademark. Clearly this use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.[v]
Nonetheless, a question arises as to whether Respondent may have rights or a legitimate interest in the domain name since it was created in February 2000 whereas USPTO Reg. No. 2,646,490 dates from November 2002. Complainant does not squarely deal with this question but states that the trademark registration “issued well before Respondent purchased the disputed domain which, on information and belief, occurred on or around July 1, 2021.” Further, it states that Complainant “was founded in 1998 … [and since] its platform launched in 1999, [Complainant] has continuously used the [trademark] in connection with its goods and services.” Furthermore, Complainant provides evidence that the domain name is listed for sale on GoDaddy for a minimum offer of USD30,470. Finally, that Respondent has been involved in a great many prior proceedings under the Policy in which a panel found that it engaged in bad faith registration of domain names.[vi]
Albeit that there is no concrete evidence of the assertion that the domain name was acquired by Respondent on or around July 1, 2021, the Panel finds on the balance of the evidence that Complainant has made a prima facie case which has not been met by either a Response or by other evidence. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the compared terms to be confusingly similar and the Panel finds that the resolving website exists for commercial gain. Most likely, the disputed domain name resolves to a parked page that has been monetized with click-through advertisments. In terms of the Policy, the Panel finds that Respondent’s registered and used a confusing similar domain name intending to create the requisite confusion described by paragraph 4(b)(iv).
The Panel finds registration and use in bad faith[vii] and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <palpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: July 18, 2022
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 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; 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.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“… the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”); Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) finding that the transposition of the words "hourglass" and "angel" in the domain name <angelhourglass.com> failed to distinguish the domain from Complainant’s HOURGLASS ANGEL mark under Policy ¶ 4(a)(i); Boehringer Ingelheim Pharma GmbH & Co. KG v. Klinik Sari Padma, BAKTI HUSADA, D2014-0306 (WIPO April 28, 2014) finding <ingelheimboehringer.com> confusingly similar to complainant’s BOEHRINGER INGELHEIM mark.
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites.
[vi] See, for example, Morgan Stanley v. Anonymize, Inc. / Lucy Wilstone / Peter King, FA2107001953884 (Forum August 10, 2021); Charter Communications Holding Company, LLC v. Anonymize, Inc., FA2106001952245 (Forum July 20, 2021); Morgan Stanley v. Anonymize, Inc. / Sammy Smith, FA2107001956931 (Forum August 31, 2021); John Dilks v. PRIVACY ADMINISTRATOR / ANONYMIZE, INC., FA1506001623023 (Forum July 10, 2015).
[vii] See, for example, Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Were it necessary, the Panel would also find registration and use in bad faith under paragraph 4(b)(i) of the Policy but since there is no evidence of the actual or likely acquisition cost of the domain name from its asserted earlier owner, a finding under paragraph 4(b)(iv) is preferred.
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