WorldPay Limited v. Kristian
Claim Number: FA0811001232575
Complainant is WorldPay Limited (“Complainant”), represented by James
A.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <autosworldpay.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2008.
On November 6, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <autosworldpay.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 November 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@autosworldpay.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <autosworldpay.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <autosworldpay.com> domain name.
3. Respondent registered and used the <autosworldpay.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an electronic payment service provider that markets its services under the WORLDPAY mark, which Complainant registered with the United Kingdom Intellectual Property Office (“UKIPO”) on November 17, 2000 (Reg. No. 2,230,627), with the European Union Office for Harmonization in the Internal Market (“OHIM”) on March 4, 2002 (Reg. No. 1,945,310) and with the United States Patent and Trademark Office (“USPTO”) on May 18, 1999 (Reg. No. 2,245,537). Complainant has used the WORLDPAY mark continuously in commerce since at least as early as 1993, when Complainant was founded. Complainant now has over 20,000 customers doing business via the Internet and more than 1,200 banking and e-commerce partners worldwide.
Respondent registered the <autosworldpay.com> domain name on August 17, 2008. The disputed domain name resolves to a website that imitates Complainant’s own website that resolves from the <worldpay.com> domain name, incorporating the WORLDPAY mark as well as the color scheme and designs used on Complainant’s website. The website resolving from the disputed domain name also features a “Contact Us” link that leads Internet users to a web page that solicits the Internet users’ confidential personal information through a form.
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.
The Panel finds that Complainant has sufficiently
established rights in the WORLDPAY mark through registration with the UKIPO,
the OHIM, and the USPTO pursuant to Policy ¶ 4(a)(i). See Royal Bank of Scot. Group plc v. TRB,
FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s
registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom
Patent Office as evidence of Complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i).”); see also Orange
Glo Int’l v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21,
2005) (finding the complainant had established rights in the OXICLEAN mark by
virtue of trademark registrations with entities including the Office for
Harmonization in the Internal Market (“OHIM”)); see also Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO).
Complainant contends that Respondent’s <autosworldpay.com> domain name is
confusingly similar to Complainant’s WORLDPAY mark. The <autosworldpay.com>
domain name differs from Complainant’s mark in two ways: (1) the generic term
“autos” has been added to the beginning of the mark; and (2) the generic
top-level domain (“gTLD”) “.com” has been added to the end of the mark. The addition of a generic term does not
distinguish a disputed domain name. See Am. Online Inc. v. Neticq.com Ltd.,
D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word
“Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name
confusingly similar to the complainant’s mark).
Additionally, the inclusion of a gTLD is irrelevant to a Policy ¶
4(a)(i) analysis. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th
Cir. 2002) (“Internet users searching for a company’s Web site often assume, as
a rule of thumb, that the domain name of a particular company will be the
company name or trademark followed by ‘.com.’”). As a result of these findings, the Panel
determines that the <autosworldpay.com>
domain name is confusingly similar to Complainant’s WORLDPAY mark pursuant to
Policy ¶ 4(a)(i).
The Panel concludes that Complainant has established Policy ¶ 4(a)(i).
The first step in a Policy ¶ 4(a)(ii) analysis is to
determine whether Complainant has established a prima facie case against Respondent demonstrating that Respondent
lacks rights and legitimate interests in the disputed domain name. The Panel finds that this threshold has been
met, and that accordingly, the burden is shifted upon Respondent to prove that
it does have rights or legitimate interests in the disputed domain name. See Towmaster, Inc. v. Hale, FA
973506 (Nat. Arb. Forum June 4, 2007) (“Complainant 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 it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii)
of the Policy shows that the burden of proof shifts from the Complainant to the
Respondent once the Complainant has made out a prima facie case that the
Respondent has no rights or interests in the domain names.”).
The WHOIS information for the <autosworldpay.com> domain name lists Respondent under
the alias “Kristian Shannon.” Furthermore, Complainant states that it has at
no time authorized or otherwise given permission to Respondent to use the WORLDPAY
mark in any way. Without any additional
information from Respondent, the Panel finds that Respondent is not commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Reese v. Morgan, FA 917029 (Nat.
Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known
by the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including
the WHOIS information as well as the complainant’s assertion that it did not
authorize or license the respondent’s use of its mark in a domain name); see also Educ. Broad. Corp. v. DomainWorks
Inc., FA 882172 (Nat. Arb. Forum
Respondent’s <autosworldpay.com>
domain name resolves to a website that is attempting to pass itself off as
Complainant. The website incorporates
the WORLDPAY mark, as well as the color scheme and designs used on
Complainant’s website. The website also
features a “Contact Us” link that leads Internet users to a web page that
solicits the Internet users’ confidential personal information through a form. Complainant contends that this constitutes an
attempt at “phishing” by Respondent. See HOPE
worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004)
(defining “phishing” as fooling “Internet users into sharing personal financial
data so that identities can be stolen, fraudulent bills are run up, and spam
e-mail is sent”). The Panel finds that
this does not constitute either a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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)); see also Capital One Fin.
Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding
that using a domain name to redirect Internet users to a website that imitated
the complainant’s credit application website and attempted to fraudulently
acquire personal information from the complainant’s clients was not a bona
fide offering of goods or services or a legitimate noncommercial or fair
use).
The Panel concludes that Complainant has established Policy ¶ 4(a)(ii).
With the <autosworldpay.com>
domain name, Respondent is attempting to pass itself off as Complainant. The disputed domain name resolves to a
website purporting to be Complainant, containing Complainant’s WORLDPAY mark
and logo, and additional information about how to contact Complainant that is
false and misleading. The Panel
determines that this establishes that Respondent registered and used the <autosworldpay.com> domain name in
bad faith for the purpose of disrupting Complainant’s business pursuant to
Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum
Additionally, this fraudulent use of the disputed domain
name is part of a phishing scheme, by which Respondent is attempting to
financially benefit from the personal financial information obtained through
this scheme. Consequently, the Panel
finds that this is further evidence of Respondent’s bad faith registration and
use of the <autosworldpay.com>
domain name pursuant to Policy ¶ 4(b)(iv).
See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a
domain name that incorporates another's mark with the intent to deceive
Internet users in regard to the source or affiliation of the domain name is
evidence of bad faith [under Policy ¶ 4(b)(iv).”); see also H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding
that the disputed domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through the respondent’s registration and use of the
infringing domain name to intentionally attempt to attract Internet users to
its fraudulent website by using the complainant’s famous marks and likeness); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum
Moreover, besides the examples given in Policy ¶¶ 4(b)(iii) and (iv), Respondent’s passing off and phishing scheme is sufficient on its own under Policy ¶ 4(a)(iii) to establish bad faith registration and use of the <autosworldpay.com> domain name. See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
The Panel concludes that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autosworldpay.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 10, 2008
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