WorldPay Limited v. xiaowen
Claim Number: FA0811001232655
Complainant is Worldpay Limited (“Complainant”), represented by James
A.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <worldpaymotor.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2008. The Complaint was submitted in both Chinese and English.
On November 18, 2008, Beijing Innovative Linkage Technology Ltd. d/b/a Dns confirmed by e-mail to the National Arbitration Forum that the <worldpaymotor.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. d/b/a Dns has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a Dns 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 26, 2008, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 16, 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@worldpaymotor.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 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <worldpaymotor.com> domain name is confusingly similar to Complainant’s WORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <worldpaymotor.com> domain name.
3. Respondent registered and used the <worldpaymotor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WorldPay Limited, is the owner of numerous trademark registrations for the WORLDPAY mark in various jurisdictions across the globe. For example: United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,245,537 issued May 18, 1999); United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,230,627 issued November 17, 2000); European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,945,310 issued April 3, 2002). Complainant uses the WORLDPAY mark in connection with promoting and providing online payment services throughout the world.
Respondent’s <worldpaymotor.com> domain name
was registered on September 24, 2008 and currently resolves to an Internet
error message. Additionally, Respondent has been the subject of previous UDRP
proceedings in which the then-disputed domain names were transferred away from
Respondent, including a case with the current Complainant. See e.g., WorldPay Ltd. v. xiaowen, FA 1191023 (Nat. Arb. Forum
July 24, 2008).
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 evidence of its registrations
with the USPTO, UKIPO and OHIM pursuant to Policy ¶ 4(a)(i).
See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum
May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark
throughout the world are sufficient to establish Complainant’s rights in the
HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also ESPN, Inc. v.
MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5,
2000) (concluding that the complainant demonstrated its rights in the
SPORTSCENTER mark through its valid trademark registrations with the USPTO and
similar offices around the world).
Respondent’s <worldpaymotor.com> domain name
contains Complainant’s WORLDPAY mark in its entirety followed by the generic
term “motor” and the generic top-level domain (“gTLD”) “.com.” Previous panels
have found that the additions of a gTLD and a generic term do not adequately
distinguish a disputed domain name pursuant to Policy ¶ 4(a)(i).
See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27,
2005) (finding that the domain name <suttonpromo.com> is confusingly
similar to the SUTTON mark because the addition of descriptive or
non-distinctive elements to the distinctive element in a domain name is
immaterial to the analysis under Policy ¶ 4(a)(i)); see also Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25,
2000) (finding the <generalelectricsex.com> domain name to be confusingly
similar to the complainant’s GENERAL ELECTRIC mark); see also 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.”). The
Panel also takes note that an earlier UDRP Panel found Respondent’s then
<world-paymotors.com>, <worldpay-vehicles.com> and
<worldpayautors.com> domain names confusingly similar to the WORLDPAY
mark and transferred them from Respondent to Complainant. See WorldPay Ltd. v. xiaowen,
FA 1191023 (Nat. Arb. Forum July 24, 2008). These disputed domain names each
contained Complainant’s WORLDPAY mark followed by a term similar to “motor”
such as “motors” and “vehicles.” Under the above precedent, the Panel finds
that the <worldpaymotor.com> domain name is confusingly similar to
Complainant’s WORLDPAY mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
As a preliminary matter under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name. The Panel finds that Complainant has demonstrated a prima facie case against Respondent, and
that it is now incumbent upon Respondent to prove that it does have rights or
legitimate interests in the disputed domain name. See
Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13,
2001) (finding that even when the respondent does file a response, the
complainant must allege facts, which if true, would establish that the
respondent does not have any rights or legitimate interests in the disputed
domain name); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13,
2007) (finding that once a prima facie case has been established by the
complainant under Policy ¶ 4(c), the burden then shifts to the respondent to
demonstrate its rights or legitimate interests in the disputed domain name).
No Response has been filed in this case. Accordingly, the
Panel may presume that Respondent lacks rights and legitimate interests in the
disputed domain name, but will nonetheless proceed to examine the record in
consideration of the elements listed under Policy ¶ 4(c). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21,
2000) (finding that failing to respond allows a presumption that the
complainant’s allegations are true unless clearly contradicted by the
evidence); see also Broadcom Corp. v. Ibecom PLC, FA
361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure
to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all
reasonable allegations set forth…as true.”).
The WHOIS information identifies Respondent solely as
“xiaowen” and Complainant states that it has not granted permission or
otherwise authorized Respondent to use its WORLDPAY mark in any way. Without
any additional evidence, the Panel determines that Respondent is not commonly
known by the <worldpaymotor.com> domain name pursuant to Policy ¶
4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other
evidence in the record); see also IndyMac
Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name).
The <worldpaymotor.com> domain name resolves to
an Internet error message. The Panel finds that Respondent has failed to make
any active use of the disputed domain name. As a consequence, the Panel
concludes that Respondent has not made 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
George Weston Bakeries Inc. v. McBroom,
FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the
respondent had no rights or legitimate interests in a domain name under either
Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use
of the domain name); see also VICORP
Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the
respondent’s failure to use the disputed domain name for several years was not
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)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
As previously established, there is at least one previous
UDRP case in which Respondent was found to have registered and used an
infringing domain name. This case in particular incorporated a similar disputed
domain name and was additionally between the same parties. The Panel finds that
Respondent is engaging in a pattern of registering infringing domain names.
Consequently, the Panel finds that Respondent has registered and is using the <worldpaymotor.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
See Arai Helmet
Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the
disputed domain name, <aria.com>, to prevent Complainant from registering
it” and taking notice of another Policy proceeding against the respondent to
find that “this is part of a pattern of such registrations”); see also Stevens v. Modern
Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent
Complainant from reflecting its mark in a corresponding domain name through a
pattern of such conduct evidences bad faith registration and use of a domain
name pursuant to Policy 4(b)(ii).”).
Furthermore, Respondent has failed to make any active use of
the disputed domain name. This is sufficient to demonstrate bad faith. 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 Disney Enters. Inc.
v. Meyers, FA 697818 (Nat. Arb. Forum
June 26, 2006) (holding that the non-use of a disputed domain name for several
years constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Moreover, in light of the previous UDRP precedent
against Respondent, the Panel considers this to be especially indicative of bad
faith. Respondent’s previous disputed domain name resolved to websites that
fraudulently mimicked Complainant’s mark and logo in an attempt to obtain
personal information from Complainant’s customers. Although Respondent has not
yet engaged in this behavior with the current disputed domain name, the Panel
finds that it makes no sense to wait until Respondent repeats this unlawful
behavior again. As a result, the Panel concludes that the current inactive use
of the disputed domain name further demonstrates that Respondent registered and
is using the <worldpaymotor.com> domain name in bad faith pursuant
to Policy ¶ 4(a)(iii). See Phat Fashions
v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith even
though the respondent has not used the domain name because “[i]t makes no sense
whatever to wait until it actually ‘uses’ the name, when inevitably, when there
is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260
(WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the
domain name in question and there are no other indications that the respondent
could have registered and used the domain name in question for any
non-infringing purpose).
The Panel concludes that Complainant has satisfied 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 <worldpaymotor.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 5, 2009
National
Arbitration Forum