national arbitration forum

 

DECISION

 

WorldPay Limited v. xiaowen

Claim Number: FA0805001191023

 

PARTIES

Complainant is WorldPay Limited (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA.  Respondent is xiaowen (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <world-paymotors.com> and <worldpay-vehicles.com>, registered with Xin Net Technology Corporation, and <worldpayautos.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2008. The Complaint was submitted in both Chinese and English.

 

On May 19, 2008, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <world-paymotors.com> and <worldpay-vehicles.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names.  Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 11, 2008, Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <worldpayautos.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn and that Respondent is the current registrant of the name.  Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 18, 2008, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@world-paymotors.com, postmaster@worldpay-vehicles.com, and postmaster@worldpayautos.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <world-paymotors.com>, <worldpay-vehicles.com> and <worldpayautos.com> domain names are confusingly similar to Complainant’s WORLDPAY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <world-paymotors.com>, <worldpay-vehicles.com> and <worldpayautos.com> domain names.

 

3.      Respondent registered and used the <world-paymotors.com>, <worldpay-vehicles.com> and <worldpayautos.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, WorldPay Limited, was founded in 1993.  It provides electronic payment processing systems and currently has over 20,000 customers doing business over the Internet and more than 1,200 banking and e-commerce partners worldwide.  Complainant’s electronic payment system under the WORLDPAY mark allows customers to accept payments over the Internet, phone, fax or post mail. The system allows any major credit card, debit card, local payment scheme, bank transfer, installment, standing-order or direct-debit style payment to be made in any currency or language, anywhere in the world.  A critical component of Complainant’s business requires the Internet, and Complainant accordingly owns numerous domain name registrations incorporating the WORLDPAY mark, all of which resolve to Complainant’s main website located at the <worldpay.com> domain name.

 

Complainant holds numerous trademark registrations for the WORLDPAY mark in multiple jurisdictions worldwide, including with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,230,627 issued November 17, 2000), the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,945,310 issued March 4, 2002), and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,245,537 issued May 18, 1999). 

 

Respondent’s <world-paymotors.com> domain name was registered on March 19, 2008, and the <worldpay-vehicles.com> domain name was registered on April 22, 2008.  The <world-paymotors.com> and <worldpay-vehicles.com> domain names resolve to websites that imitate the website at Complainant’s <worldpay.com> domain name.  In both cases, the websites substantially duplicate the content from Complainant’s website, along with the colors, graphics, and general appearance.  They each display prominently Complainant’s WORLDPAY mark and logo.  Additionally, Internet users who engage either the “contact us” or “apply online today” links on these websites are redirected to another site where the user is asked to enter their e-mail address. 

 

Respondent’s <worldpayautos.com> domain name was registered on April 24, 2008.  No active use is being made of the this disputed domain name. 

 

DISCUSSION

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."

 

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(e), 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 (Nat. Arb. 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.”).

 

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has sufficiently established rights in the WORLDPAY mark pursuant to Policy ¶ 4(a)(i) through its various governmental registrations, including, but not limited to, with the UKIPO, the OHIM, and the USPTO.  See Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy); see also Ferring B.V. & Bio-Tech. Gen. (Israel) Ltd. v. Ferland, FA 1139912 (Nat. Arb. Forum Mar. 18, 2008) (holding that registration alone with the OHIM would be sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

The <world-paymotors.com>, <worldpay-vehicles.com> and <worldpayautos.com> domain names all include the generic top-level domain (“gTLD”) “.com.”  Additionally, the <world-paymotors.com> and <worldpay-vehicles.com> domain names incorporate a hyphen.  It is well-established that the inclusion of a gTLD and punctuation such as hyphens are irrelevant for a Policy ¶ 4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. 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).”).  Each disputed domain name also uses Complainant’s WORLDPAY mark followed by the generic terms “motors,” “vehicles,” or “autos.”  However, the addition of a generic term does not distinguish a disputed domain name under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also WorldPay Ltd. v. Farris, FA 1142584 (Nat. Arb. Forum Mar. 13, 2008) (finding that the “minor” addition of the generic term “shipping” is not “capable of overcoming a confusingly similar analysis as set forth in Policy ¶ 4(a)(i)”).  For all of the aforementioned reasons, the Panel finds that the <world-paymotors.com>, <worldpay-vehicles.com> and <worldpayautos.com> domain names are confusingly similar to Complainant’s WORLDPAY mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must present a prima facie case that Respondent lacks all rights and legitimate interests in the disputed domain names.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).  The Panel finds that Complainant’s Complaint meets this threshold, and accordingly the burden shifts to Respondent to demonstrate rights or legitimate interests in the disputed domain names.  Despite Respondent’s failure to respond to the Complaint, the Panel will examine all the evidence in the record in consideration of the elements of Policy ¶ 4(c) before determining whether Respondent possesses rights or legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Complainant asserts that Respondent has never used the disputed domain names in connection with any business named or referred to by the disputed domain names.  Moreover, the WHOIS record for each disputed domain name only lists “xiaowen.”  Without any additional evidence, the Panel is unable to find that Respondent is or ever was commonly known be any of the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The <world-paymotors.com> and <worldpay-vehicles.com> domain names resolve to websites that imitating the website at Complainant’s <worldpay.com> domain name, and feature the Complainant’s WORLDPAY mark and logo prominently.  Additionally, there are “contact us” and “apply online today” links on these websites that when engaged redirected Internet users to another site that asks users to enter their e-mail address.  The Panel presumes this to be a “phishing” scheme in an attempt to fraudulently personal information from Internet users.  See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”).  Consequently, the Panel finds Respondent’s use of the <world-paymotors.com> and <worldpay-vehicles.com> domain names to be neither 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).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).

 

The <worldpayautos.com> domain name is not currently being put to an active use.  The Panel finds that this constitutes evidence that Respondent lacks rights and legitimate interests in the <worldpayautos.com> domain name.  Accordingly, the Panel finds that Respondent’s inactive use of the <worldpayautos.com> domain name is neither 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).  See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [inactive use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely [inactively] held the domain name).

 

The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

All three <world-paymotors.com>, <worldpay-vehicles.com> and <worldpayautos.com> domain names incorporate Complainant’s WORLDPAY mark in its entirety.  These three different registrations of confusingly similar domain names is sufficient to establish that Respondent is engaging in a pattern of registering infringing domain names.  As a result, the Panel finds this to establish that Respondent registered and is using the <world-paymotors.com>, <worldpay-vehicles.com> and <worldpayautos.com> domain names in bad faith pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark).

 

Moreover, the <world-paymotors.com> and <worldpay-vehicles.com> domain names resolve to web pages that imitate Complainant’s website at the <worldpay.com> domain name.  The Panel finds that this “phishing” attempt to try and fraudulently acquire the personal information of Internet users is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith where the respondent registered the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). 

 

And finally, the Panel finds that Respondent’s inactive use of the <worldpayautos.com> domain name likewise establishes further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

The Panel concludes that Complainant has sufficiently established 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 <world-paymotors.com>, <worldpay-vehicles.com> and <worldpayautos.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: July 24, 2008

 

 

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