PayPal, Inc. v. ALEXANDRU COSTAN
Claim Number: FA1812001822103
Complainant is PayPal, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is ALEXANDRU COSTAN (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paypal.ro>, registered with EXTREME SOLUTIONS SRL.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2018; the Forum received payment on December 20, 2018.
On December 21, 2018, EXTREME SOLUTIONS SRL confirmed by e-mail to the Forum that the <paypal.ro> domain name is registered with EXTREME SOLUTIONS SRL and that Respondent is the current registrant of the name. EXTREME SOLUTIONS SRL has verified that Respondent is bound by the EXTREME SOLUTIONS SRL 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 December 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2019 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@paypal.ro. Also on December 31, 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 2, 2019.
A timely Additional Submission was received from the Complainant on January 4, 2019, and Respondent submitted a timely Additional Submission on January 9, 2019
On January 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Katalin Szamosi 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant argues that under Policy ¶ 4(a)(i) Respondent’s <paypal.ro> domain name is identical to Complainant’s “PAYPAL” mark. In support of this Complainant asserts that:
· Complainant was created in 1998 and has developed as a global company in the field of digital payments, money transfers, and financial services;
· Complainant has rights in the PAYPAL mark through its trademark registrations;
· The PAYPAL trademark was first registered in the United States in 2002 and in various jurisdictions worldwide including Romania.
· The disputed domain incorporates the PAYPAL mark in its entirety, merely adding the ccTLD “.ro”.
2. Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In support of this Complainant asserts that:
· Respondent is not licensed or otherwise authorized to use Complainant’s PAYPAL mark;
· Respondent is not commonly known by the disputed domain name;
· Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use;
· Respondent’s disputed domain name resolves to a parked website with unrelated content;
· Respondent’s disputed domain name was once listed for sale.
3. Complainant argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In support of this Complainant contends that:
· Respondent attempted to sell the disputed domain name for more than out-of-pocket costs;
· Respondent reached out to Complainant to determine whether Complainant would be interested in purchasing the domain name for an undisclosed sum that is approximately “a five figure offer.”;
· Prior to the current page being displayed, the disputed domain name was listed for sale.
· Respondent had actual and constructive knowledge of Complainant’s rights in the PAYPAL mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent claims that the <paypal.ro> domain name had various owners throughout the years, but Complainant was not one of those owners. Respondent’s disputed domain name is not identical or confusingly similar to Complainant’s PAYPAL mark as it is clearly for a different topic and use.
Complainant's failure to capture and manage some of its digital properties shows that Complainant had no interest in this particular domain name, and they are trying to take advantage of a person, instead of enforcing this type of request with any other entities that owned the domain name prior to the Respondent.
Respondent has rights and legitimate interests in the <paypal.ro> domain name. Respondent uses the disputed domain name to dedicate a website to its deceased dog. Respondent also plans to continue building the website to allow other owners of dogs share their “in memoriams.”
Respondent contests Complainant statement in relation to the sale of the website and asserts that he did not have an official broker or representative nor instructed anyone to sell the disputed domain name. Respondent asserts that the website’s offer for sale message was automatically generated when Respondent registered the disputed domain name.
Respondent contends that he did not register or used the <paypal.ro> domain name in bad faith.
C. Additional Submissions
Complainant
Respondent registered this domain name on November 12, 2018, thus, the relevant time period is as of November 12, 2018 and whether Complainant had rights to the PAYPAL trademark prior to that date and whether this Respondent has any legitimate rights to the domain name or whether he registered and uses the domain name in bad faith.
Respondent does not dispute that he is not known by the name PAYPAL.
Respondent does not dispute that Complainant has trademark rights in the PAYPAL trademark.
Complainant asserts that Respondent’s claim that it did not attempt to sell the disputed domain name is false as the disputed domain name indicated three days after registration that, “the owner of paypal.ro has chosen to receive offer inquiries regarding this domain name.”.
Complainant asserts that within two days after registration, Complainant received an email purporting to act on Respondent’s behalf.
Respondent’s post-hoc excuse for the domain name selection also fails to demonstrate any rights or legitimate interests in the disputed domain name.
The domain name <ypal.ro> was available until January 2, 2019, well after this complaint was filed.
Respondent
Respondent is making a legitimate noncommercial and 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.
Respondent argues that the website under the disputed domain name is a personal page, showing tribute to the deceased dog of the Respondent, whose name was YPAL. “PA” in Romanian means “bye”, the term being an informal and friendly “goodbye”, as opposed to a hurtful Goodbye forever (adio). Respondent asserts that the domain name PA YPAL means “Bye YPAL”
The existence of the dog and its name “Ypal” is proven with photos
Respondent asserts that, Exhibit F of the Complainant is not accurate and cannot be taken as evidence, firstly because no date is shown on the print screen taken and secondly because the nameservers were changed on November 18, 2018. Respondent argues that Complainant stated that the print screen was taken on November 15, 2018 therefore it is with no doubt that the print screen relates to a content that did not belong to the Respondent.
1. Respondent registered this domain name on November 12, 2018, which was substantiated by Exhibit A filed by the Complainant.
2. Complainant is the owner of numerous trademarks around the world protecting PAYPAL trademark which was first registered in the United States in 2002 and in various jurisdictions worldwide including Romania, which was substantiated by Exhibit D filed by the Complainant.
3. The disputed domain name was listed for sale, which was substantiated by Exhibit F filed by the Complainant.
4. The domain name <ypal.ro> was available until January 2, 2019, well after this complaint was filed, which was substantiated by Exhibit A in the additional submission of the Complainant.
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.
Complainant has rights in the PAYPAL mark based upon registration of the mark with the USPTO and other Offices including Romania. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the PAYPAL mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <paypal.ro> domain name is identical to the PAYPAL mark, as the name incorporates the mark in its entirety with the addition of a “.ro” ccTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). The Panel is on the opinion that the <paypal.ro> domain name is confusingly similar to the PAYPAL mark per Policy ¶ 4(a)(i).
As to the second element, 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 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 argues that Respondent has no rights or legitimate interests in the <paypal.ro> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PAYPAL mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “ALEXANDRU COSTAN,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <paypal.ro> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <paypal.ro> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent’s disputed domain name currently resolves to a website that contains photographs dedicated to the memory of a dog. Use of a disputed domain name to feature content unrelated to a complainant’s incorporated mark may not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Complainant provides screenshots of the disputed domain name’s resolving website which features photographs of a dog along with text written in Romanian, which translated reads, “Pa Ypal- stay well” and “in memoriam: Ypal, the dog akita.” See Compl. Ex. E. The Panel therefore finds Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant contends Respondent previously offered to sell the disputed domain name for “a five figure offer.” Attempting to sell a disputed domain name for more than its out-of-pocket costs may not indicate any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot of the disputed domain name’s prior, resolving website which offers the disputed domain name for sale.
Complainant stated that the print screen relates to a content that did not belong to the Respondent because the name servers were changed on November 18, 2018 whereas the print screen was made on November 15, 2018. The Panel is on the opinion that the Respondent had control over the disputed domain name as early as November 12, 2018 therefore was responsible for the content and the name servers under the domain name.
Respondent asserts that the website’s offer for sale message was automatically generated when Respondent registered the disputed domain name, however did not submit any evidence in support of this argument.
The Panel notes that the Respondent did not question or offer any explanation regarding Complainants argument that the domain name <ypal.ro> was available until January 2, 2019 which could have been used by the Respondent for the same purpose as argued by the Respondent.
Therefore, assessing all the submitted evidence and the arguments of the parties the Panel finds Respondent’s attempts to sell the disputed domain name shows it lacks rights or legitimate interests therein per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends Respondent’s only purpose in registering the <paypal.ro> domain name was to gain commercially from the sale of the same, indicating its registration and use of the name in bad faith. The Panel is on the opinion that the fact that Respondent's changed the content of the website does not negate the initial intent to offer for sale the website. The intent to sale the website was sufficiently substantiated therefore the Panel made its decision based on the first content of the website since that can be regarded as the Respondent's mindset at the time of the registration. A general offer to sell a domain name can be evidence the Respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant contends that given its longstanding trademark registration of the PAYPAL mark, and Respondent’s prior use of the domain name to offer to sell the name, it is evident Respondent’s purpose for registering and using the domain name was and is to sell the name for a profit. Therefore, the Panel finds Respondent to have registered and used the <paypal.ro> domain name in bad faith per Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paypal.ro> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi Panelist
Dated: January 22, 2019
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