PayPal, Inc. v. Nguyen Xuan Thanh
Claim Number: FA1712001764229
Complainant is PayPal, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas. Respondent is Nguyen Xuan Thanh (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paypalonetouch.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2017; the Forum received payment on December 22, 2017.
On December 27, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <paypalonetouch.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 January 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2018 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@paypalonetouch.com. Also on January 5, 2018, 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.
A timely Response was received and determined to be complete on January 26, 2018.
On January 29, 2018, a timely Additional Submission was received from Complainant.
On January 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
On February 6, 2018, the Panel issued a Procedural Order to the effect that as the Panel decides that the proceeding should be in English, Respondent is requested to submit an English translation of its Response by February 19, 2018.
In response to the Panel’s Order, Respondent submitted an English translation of its Response on February 18, 2018 which is timely.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. The Panel also notes that Respondent only submitted a Response in the Vietnamese language (neither Japanese nor English).
Complainant has alleged that Respondent is conversant and proficient in English, and the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent has a working knowledge of the English language because the domain name includes the PAYPAL trademark and the English language words “One Touch” which is a feature of PAYPAL and is also registered as a trademark in Vietnam. Additionally, Complainant alleges that another UDRP decision against this same Respondent has proceeded in the English language because it was found that Respondent has a level of familiarity with and knowledge of the English language. Finally, in outside correspondence with Complainant, Respondent made reference to another website located at the <hoankiem.com.vn> domain name, which is entirely in the English language. See Compl. Ex. G (correspondence with Respondent); see also Compl. Ex. N (website located at the <hoankiem.com.vn> domain name).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
i) Complainant was created in 1998 and has developed as a global company in the field of digital payments, money transfers, and financial services. It has 203 million active account holders and the platform is available in more than 200 markets around the world. The PAYPAL trademark was first registered in the United States in 2002 and a list of the worldwide registrations for the PAYPAL trademark, along with representative registrations in the United States are attached to the Complaint. Complainant also owns registrations for ONE TOUCH and PAYPAL ONE TOUCH, which is a feature that allows the user to make purchases and check out with ease. More information about PAYPAL ONE TOUCH is attached in Exhibit E. The marks PAYPAL and PAYPAL ONE TOUCH are also registered in various countries around the world, including in Vietnam where the Respondent resides.
The disputed domain name is confusingly similar to the PAYPAL trademark and identical to the PAYPAL ONE TOUCH trademark.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not making a noncommercial fair use of the disputed domain names, and Respondent has never been legitimately known as or referred to as PAYPAL, PAYPAL ONE TOUCH or any variation thereof. According to WHOIS, Respondent is known as Nguyen Xuan Thanh. See Exhibit A. Respondent is not commonly known by Complainant’s PAYPAL or PAYPAL ONE TOUCH marks or affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s PAYPAL or PAYPAL ONE TOUCH marks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
Respondent registered the disputed domain name on January 26, 2016, long after Complainant’s rights in the PAYPAL and PAYLPAL ONE TOUCH trademarks were well known around the world, including in Vietnam. Immediately upon discovering that Respondent had registered the disputed domain name, Complainant contacted it by email and requested that it voluntarily transfer the domain name to PayPal. While Complainant has used every reasonable effort to obtain a voluntary transfer of the disputed domain name, Respondent has refused.
The disputed domain name remains inactive and contains nothing other than the words in Vietnamese that say “this domain has not been configured.” “One does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” For the above reasons, Respondent has no rights or legitimate interests in the disputed domain name.
iii) Respondent registered and is using the disputed domain name in bad faith. At the time Respondent registered the disputed domain name, the PAYPAL trademark was familiar to countless consumers worldwide. The fact that Respondent selected this domain name after PAYPAL ONE TOUCH was in use, including in Vietnam, demonstrates without question that Respondent was not only familiar with Complainant’s PAYPAL mark at the time of registration of the domain name, but intentionally adopted this domain name in order to create an association with Complainant and its products and services. Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). Respondent’s nonuse of the domain name suggests its bad faith under Policy ¶ 4(a)(iii). Although Respondent has stated in communications with Complainant that it plans to use the domain in connection with some sort of hotel in Vietnam, Complainant suggests that this is simply not believable. Additionally, like this case, Respondent was passively holding a number of the disputed domain names.
B. Respondent
i) The disputed domain name had been registered on January 26, 2016 while Complainant's PAYPAL ONE TOUCH trademark was registered under trademark number 287966 on September 13, 2017. Thus, the disputed domain name had already been registered before the Complainant's trademark was granted.
ii) The disputed domain name was registered for the business of travel, investment in hotel and construction. Hoan Kiem Tourism has website: hoankiem.com.vn where Respondent was the founder from July 11, 2012 (see 'business license' by Appendix -2). Respondent registered relevant trademarks on May 4, 2016 at the Vietnam Intellectual Property Office (Phu luc - 3). Before Respondent received the notice of Mr. Tom's dispute via email: thanh@hoankiem.com.vn on 7 May 2016, it registered the relevant trademark on May 4, 2016 at Vietnam Intellectual Property Office. In response to Mr. Tom's notice, Respondent made its position clear on May 8, 2016. Respondent purchased the disputed domain name for the business of the company with registered occupations, and registered trademark protection.
iii) When exchanging mails with Complainant, Respondent expressed its intention to donate the disputed domain name if Mr. Olga came to Vietnam to see Respondent. Respondent is willing to give the disputed domain name back to enthusiastic and friendly people. Respondent's registration of the disputed domain name is not for the purpose of selling, renting or assigning a domain name registration to the Complainant who is the trademark owner or service mark or competitor of the Complainant. There is no evidence that Respondent prevents Complainant from affecting or disrupting Complainant's business. Complainant does not provide any evidence that Respondent has attempted to lure customers, taking advantage of the confusion to profit. Respondent does not intend to register the disputed domain name for resale to Complainant. Respondent responded to Complainant with a sincere and conciliatory attitude. Respondent has absolutely nothing to do with Complainant's business. As such, it cannot be said that Respondent registered and used the disputed domain name in bad faith.
C. Additional Submissions
Complainant's Additional Submission
i) Respondent argues that it registered the disputed domain name on January 16, 2016 and Complainant’s registration for the mark PAYPAL ONE TOUCH in Vietnam, while filed in 2015, did not issue to registration until September 13, 2017, after the registration date of the disputed domain name. Based on that, it argues that it has rights to the disputed domain name. Respondent also argues that it did not register the disputed domain name in bad faith because it purchased the domain on the open market and plans to use it for the name of a hotel and it also has a trademark for “PAYPALONETOUCH.COM.”
ii) The disputed domain name was registered on January 26, 2016 (See Exhibit A to Amended Complaint). Respondent argues that the trademark registration for PAYPAL ONE TOUCH in Vietnam did not register until September 13, 2017. While it is true that the application PayPal filed in 2015 in Vietnam for that mark did not issue until after the domain name was registered, the famous PAYPAL trademark was registered in Vietnam for many years prior to the disputed domain name. The first registration for PAYPAL in Vietnam issued on June 2, 2003, almost thirteen years before the disputed domain name was registered. A copy of that registration is attached to the Amended Complaint in Exhibit D. The ONE TOUCH mark was registered by Complainant in the United States on December 16, 2014, well prior to the registration of the disputed domain name. See Exhibits A and D to the Amended Complaint. There is no question that the PAYPAL trademark was well known in Vietnam prior to the registration of the disputed domain name and in fact, there was press in Vietnam prior to the registration of the disputed domain name regarding PAYPAL ONE TOUCH. See the attached Exhibit A.
The PAYPAL mark has been in use for decades and is one of the most famous trademarks in the world. Not only was the PAYPAL trademark registered in the United States, Europe, and Vietnam decades before the disputed domain name registered, the ONE TOUCH mark was also registered in various jurisdictions, including in the United States, before the disputed domain name was registered. See Exhibit A to the Amended Complaint. Complainant is only required to establish that it has trademark rights that predate the registration of the disputed domain name in ANY country, not in the country where the Respondent resides. There is no question but that Complainant has rights in the PAYPAL ONE TOUCH trademark and those rights were established long prior to January 26, 2016 when the disputed domain name was registered.
iii) Respondent attempts to argue that it registered the disputed domain name for a legitimate business as the name of a hotel. Interestingly, there is no evidence that Respondent is in the hotel business or has made any plans to actually open a hotel. It is now two years after the registration of the disputed domain name and Respondent has not used the domain for any legitimate business purpose. Complainant submits that Respondent cannot use this domain for any legitimate business purpose as it is identical to its trademark, PAYPAL ONE TOUCH. The fact that Complainant is in financial services and not hotels is irrelevant to these proceedings, especially in light of the fame of the PAYPAL trademark.
Respondent has also attached a copy of what it refers to as its trademark “registration” for PAYPALONTOUCH.COM (See what is attached as “Phu Luc – 3” to its email of January 26, 2017) which it apparently filed with the trademark office in Vietnam to cover hotel services. This is actually a pending application which has not issued to registration and in fact, has been opposed by PayPal before the applicable Vietnamese trademark office. See the attached Exhibit B. This pending application does not make Respondent’s bad faith become good faith.
iv) Complainant has established that Respondent registered and used the disputed domain name in bad faith. The domain name <paypalonetouch.com> is clearly identical to Complainant’s PAYPAL ONE TOUCH trademark and Respondent is not known by the name PAYPAL or ONE TOUCH. In fact, Respondent has acknowledged in its communications that PayPal is known in the world for financial transactions. Complainant has established that it has rights to the mark PAYPAL and ONE TOUCH prior to the registration of the disputed domain name and that Respondent registered the domain name in bad faith. Complainant has met its burden of establishing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain. Respondent has failed to meet its burden to establish that it has rights and legitimate interests in the disputed domain name. The evidence is clear that Respondent registered and used the domain name in bad faith and the domain should be transferred to Complainant.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.
i) Complainant contends that Complainant's PAYPAL trademark was first registered in the United States in 2002 and a list of the worldwide registrations for the PAYPAL trademark, along with representative registrations in the United States are attached to the Complaint. See Exhibit D. Complainant also owns registrations for ONE TOUCH and PAYPAL ONE TOUCH, which is a feature that allows the user to make purchases and check out with ease. More information about PAYPAL ONE TOUCH is attached in Exhibit E. The marks PAYPAL and PAYPAL ONE TOUCH are also registered in various countries around the world, including in Vietnam where the Respondent resides, as shown in Exhibit D. Respondent argues that the disputed domain name was registered on January 26, 2016 (See Exhibit A to Amended Complaint) while Complainant's trademark registration for PAYPAL ONE TOUCH in Vietnam did not register until September 13, 2017. Complainant rebuts Respondent's argument by stating that while it is true that the application PayPal filed in 2015 in Vietnam for that mark did not issue until after the domain name was registered, the famous PAYPAL trademark was registered in Vietnam for many years prior to the disputed domain name. The first registration for PAYPAL in Vietnam issued on June 2, 2003, almost thirteen years before the disputed domain name was registered. A copy of that registration is attached to the Amended Complaint in Exhibit D. The ONE TOUCH mark was registered by Complainant in the United States on December 16, 2014, well prior to the registration of the disputed domain name. See Exhibits A and D to the Amended Complaint. Complainant further contends that there is no question that the PAYPAL trademark was well known in Vietnam prior to the registration of the disputed domain name and in fact, there was press in Vietnam prior to the registration of the disputed domain name regarding PAYPAL ONE TOUCH. See the attached Exhibit A. Complainant additionally avers that its PAYPAL mark has been in use for decades and is one of the most famous trademarks in the world. Not only was the PAYPAL trademark registered in the United States, Europe, and Vietnam decades before the disputed domain name registered, the ONE TOUCH mark was also registered in various jurisdictions, including in the United States, before the disputed domain name was registered. See Exhibit A to the Amended Complaint. Complainant also argues that Complainant is only required to establish that it has trademark rights that predate the registration of the disputed domain name in ANY country, not in the country where the Respondent resides.
The Panel agrees that Complainant has rights in the PAYPAL ONE TOUCH trademark and those rights were established long prior to January 26, 2016 when the disputed domain name was registered. See Bloomberg Finance LP v. WHOIS Protected VCN, FA 1560980 (Forum July 10, 2014)(finding that it is not relevant under Policy ¶ 4(a)(i) whether Complainant holds a trademark registration in the country of Respondent’s residence, so long as it can establish rights in the mark in another jurisdiction); See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Next, Complainant contends that the disputed domain name is confusingly similar to the PAYPAL trademark and identical to the PAYPAL ONE TOUCH trademark. The Panel finds that the disputed domain incorporates the PAYPAL and PAYPAL ONE TOUCH marks in their entireties along with the most common generic top-level domain “.com.” These changes do not negate confusing similarity. See PayPal, Inc. v. Lin Zong Xing, FA 1758899 (Forum Dec. 18, 2017)(finding <paypalmoneypools.com> confusingly similar to the PAYPAL mark, especially when combined with MONEYPOOLS which is a service offered by PayPal); eBay Inc. and PayPal, Inc. v. Noorinet and Linecom, D2016-0045(WIPO, April 11, 2016) (finding <paypalcn.com> confusingly similar to the PAYPAL trademark); PayPal, Inc. v. Super Privacy Service c/o Dynadot/JVPAYS LTD, FA 1722305 (Forum May 1, 2017) (finding various domains that add the word “wallet” to Complainant’s mark to be confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (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.”). As such, the Panel concludes that the disputed domain name is identical to the PAYPAL ONE TOUCH mark and confusingly similar to the PAYPAL trademark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not making a noncommercial fair use of the disputed domain name, and Respondent has never been legitimately known as or referred to as PAYPAL, PAYPAL ONE TOUCH or any variation thereof. As a result, Respondent does not have a legitimate interest in the disputed domain name, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
Complainant specifically contends that according to WHOIS, Respondent is known as Nguyen Xuan Thanh. See Exhibit A. Respondent is not commonly known by Complainant’s PAYPAL or PAYPAL ONE TOUCH marks or affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s PAYPAL or PAYPAL ONE TOUCH marks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
The Panel notes that the WHOIS identifies “Nguyen Xuan Thanh” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the PAYPAL or PAYPAL ONE TOUCH mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent argues that the disputed domain name was registered for the business of travel, investment in hotel and construction. Hoan Kiem Tourism has website: hoankiem.com.vn where Respondent was the founder from July 11, 2012 (see 'business license' by Appendix -2). Respondent registered relevant trademarks on May 4, 2016 at the Vietnam Intellectual Property Office (Phu luc - 3). Before Respondent received the notice of Mr. Tom's dispute via email: thanh@hoankiem.com.vn on 7 May 2016, it registered the relevant trademark on May 4, 2016 at Vietnam Intellectual Property Office. In response to Mr. Tom's notice, Respondent made its position clear on May 8, 2016. Respondent purchased the disputed domain name for the business of the company with registered occupations, and registered trademark protection. Respondent further contends that it responded to Complainant with a sincere and conciliatory attitude, and it wrote a letter indicating its intention to donate the disputed domain name if Mr. Olga came to Vietnam to see Respondent and that Respondent has absolutely nothing to do with Complainant's business.
In rebutting Respondent's arguments above, Complainant emphasizes that Respondent registered the disputed domain name on January 26, 2016, long after Complainant’s rights in the PAYPAL and PAYLPAL ONE TOUCH trademarks were well known around the world, including in Vietnam. Complainant contends that immediately upon discovering that Respondent had registered this domain name, Complainant contacted Respondent by email and requested that it voluntarily transfer the domain name to PayPal. See Exhibit F. Complainant avers that Respondent replied, stating that it bought the disputed domain name and purchased it to do business in the hotel and tourism sector. See Exhibit G. Complainant again wrote to Respondent explaining that when it registered the disputed domain name, it had the responsibility, rather than the Registrar, to make sure that the domain doesn’t infringe on any trademark rights. See Exhibit H. Complainant argues that while Complainant has used every reasonable effort to obtain a voluntary transfer of the disputed domain name, Respondent has refused. See Exhibits I, J and K.
Complainant further contends that the disputed domain name is inactive and contains nothing other than the words in Vietnamese that say “this domain has not been configured.” See Exhibit L. Complainant cites precedents stating that “One does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Nike, Inc. v. Fang Wei et al., FA 1272458 (Forum August 21, 2009)(citations omitted). Complainant states that prior panels have found that inactive use or passive holding of a domain name violates the Policy.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. However, the Panel finds that Respondent has failed to rebut the prima facie case against it, and thus the Panel determines that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant submits that Respondent registered and is using the disputed domain name in bad faith. At the time Respondent registered the disputed domain name, the PAYPAL trademark was familiar to countless consumers worldwide. Since at least 1999, Complainant has continuously promoted its various types of digital payments, financial services, and other related products and services under the PAYPAL mark on its website at <paypal.com> and in advertising in print, on television and through the Internet. The PAYPAL® mark is featured in a wide variety of media, including print ads, television commercials, online videos, social media, on advertising banners, and on the <paypal.com> website. The fact that Respondent selected the disputed domain name after PAYPAL ONE TOUCH was in use, including in Vietnam, demonstrates without question that Respondent was not only familiar with Complainant’s PAYPAL mark at the time of registration of the disputed domain name, but intentionally adopted the disputed domain name in order to create an association with Complainant and its products and services. In fact, Respondent has acknowledged in its communications that Complainant is known in the world for financial transactions.
In light of the fact that Complainant submitted above, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights, and that it constitutes bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark it knows to be similar to another, one can infer an intent to confuse”); and Skype v. Caruso, FA 1431445 (Forum May 4, 2012) (“Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶ 4(a)(iii)”); Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith); Twitter, Inc. v. Accueil des Solutions, Inc, Case No. D2014-0645 (WIPO June 15, 2014) (“The Panel finds that, taking into account the significant reputation associated with the Trade Mark, there is no conceivable legitimate use of the Disputed Domain Name by the Respondent”); and Twitter, Inc. v. Ozkan, (WIPO D2014-0469) (WIPO June 15, 2014) (“Under the circumstances, the Panel does not hesitate in ruling that Respondent registered the disputed domain name in bad faith. Complainant’s trademark is famous, and there are few conceivable good faith uses for the disputed domain name by others. The Panel infers that Respondent knew of Complainant’s trademarks and Respondent registered its confusingly similar domain name in an attempt to draw Internet users to its own website”).
Complainant also contends that Respondent’s nonuse of the disputed domain name suggests its bad faith under Policy ¶ 4(a)(iii). The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.) The particular circumstances of this case that the Panel has considered are:
i) Complainant was created in 1998 and has developed as a global company in the field of digital payments, money transfers, and financial services. It has 203 million active account holders and the platform is available in more than 200 markets around the world. As such, Complainant’s relevant marks are considered as being a well-known and reputable trademark; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Respondent argues that it registered and used the disputed domain name not in bad faith on the grounds that when exchanging mails with Complainant, Respondent expressed its intention to donate the disputed domain name if Mr. Olga came to Vietnam to see Respondent; Respondent is willing to give the disputed domain name back to enthusiastic and friendly people; Respondent's registration of the disputed domain name is not for the purpose of selling, renting or assigning a domain name registration to the Complainant who is the trademark owner or service mark or competitor of the Complainant; there is no evidence that Respondent prevents Complainant from affecting or disrupting Complainant's business; Complainant does not provide any evidence that Respondent has attempted to lure customers, taking advantage of the confusion to profit. Respondent does not intend to register the disputed domain name for resale to Complainant; and Respondent responded to Complainant with a sincere and conciliatory attitude, and it wrote a letter indicating its intention to donate the disputed domain name if Mr. Olga came to Vietnam to see Respondent. Respondent has absolutely nothing to do with Complainant's business.
In rebutting Respondent's arguments, Complainant contends that although Respondent attempts to argue that it registered the disputed domain name for a legitimate business as the name of a hotel, there is no evidence that Respondent is in the hotel business or has made any plans to actually open a hotel. Complainant also contends that it is now two years after the registration of the disputed domain name and Respondent has not used the disputed domain name for any legitimate business purpose. Complainant submits that Respondent cannot use the disputed domain name for any legitimate business purpose as it is identical to its trademark, PAYPAL ONE TOUCH. The fact that Complainant is in financial services and not hotels is irrelevant to these proceedings, especially in light of the fame of the PAYPAL trademark. Complainant submits that Respondent has also attached a copy of what it refers to as its trademark “registration” for PAYPALONTOUCH.COM (See what is attached as “Phu Luc – 3” to its email of January 26, 2017) which it apparently filed with the trademark office in Vietnam to cover hotel services. This is actually a pending application which has not issued to registration and in fact, has been opposed by PayPal before the applicable Vietnamese trademark office. See the attached Exhibit B. This pending application does not make Respondent’s bad faith become good faith.
Although Respondent argues that it registered and has plans to use the disputed domain name in good faith, the Panel finds that it failed to establish its arguments by persuasive evidence while Complainant's arguments are well supported by adequate exhibits. In addition, the Panel recalls Complainant's arguments that while Complainant has used every reasonable effort to obtain a voluntary transfer of the disputed domain name, Respondent has refused. See Exhibits I, J and K. Therefore, the Panel concludes that Respondent registered and is using the disputed the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paypalonetouch.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 21, 2018
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