PayPal, Inc. and Hyperwallet Systems, Inc. v. Kabir S Rawat
Claim Number: FA1912001875638
Complainant is PayPal, Inc. and Hyperwallet Systems, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Kabir S Rawat (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hyperwallet.org>, registered with GoDaddy.com, LLC..
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2019; the Forum received payment on December 17, 2019.
On December 18, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hyperwallet.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2020 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@hyperwallet.org. Also on December 18, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
Preliminary Issue: Multiple Complainants
There are two (2) Complainants in this matter: PayPal Inc. and Hyperwallet Systems, Inc. Complainants argue that Hyperwallet Systems Inc. is a wholly owned subsidiary of PayPal.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119, (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
The Panel accepts that the uncontested evidence in the Complaint establishes a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant provides pay-out technology via an international pay-out platform. Complainant has rights in the HYPERWALLET mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,912,613, registered Dec. 21, 2004). Respondent’s <hyperwallet.org> domain name is identical or confusingly similar to Complainant’s HYPERWALLET mark. Respondent incorporates the HYPERWALLET mark in its entirety and adds the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interest in the <hyperwallet.org> domain name as Respondent is not commonly known by HYPERWALLET mark. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is offering to sell the disputed domain name.
Respondent registered and used the <hyperwallet.org> domain name in bad faith as Respondent attempts to sell the disputed domain name. Respondent also has engaged in a pattern of bad faith registration and use through prior UDRP cases. Lastly, Respondent had actual knowledge of Complainant’s rights in the HYPERWALLET mark as Respondent reached out to Complainant in an attempt to sell the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <hyperwallet.org> domain name.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the HYPERWALLET mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided the Panel with a copy of its USPTO registration for the HYPERWALLET mark (e.g. Reg. No. 2,912,613, registered Dec. 21, 2004). The Panel finds that Complainant has adequately shown rights in the HYPERWALLET mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <hyperwallet.org> domain name is identical or confusingly similar to Complainant’s HYPERWALLET mark. Registration of a domain name that incorporates a mark in its entirety and adds a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Complainant argues that Respondent incorporates the HYPERWALLET mark in its entirety and adds the “.org.” The Panel finds that Respondent’s <hyperwallet.org> domain name is confusingly similar or identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proven this 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), 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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <hyperwallet.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the HYPERWALLET mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Kabir S. Rawat” and there is no other evidence to suggest that Respondent was authorized to use the HYPERWALLET mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is offering to sell the <hyperwallet.org> domain name. A general offer to sell a disputed domain may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per 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 has provided the Panel a screenshot of Respondent’s disputed domain name’s resolving webpage that shows the domain name is for sale. The Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proven this element.
Complainant argues that Respondent registered and uses the <hyperwallet.org> domain name in bad faith as Respondent attempts to sell the disputed domain name. Evidence of a Respondent’s attempt to sell a disputed domain name may be show of bad faith registration and use per Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant has provided the Panel a screenshot of Respondent’s disputed domain name’s resolving webpage that shows the domain name is for sale. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also contends that Respondent has engaged in a pattern of bad faith as Respondent has been engaged in such behavior in prior UDRP cases. Prior UDRP decisions which resulted in the transfer of the domain names may be evidence of a history of bad faith registration per Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant has provided the Panel with previous cases where Respondent was found to have engaged and registered disputed domain names in bad faith. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017), see also Cantor Fitzgerald Securities v. Kabir S Rawat, D2013-1257 (WIPO Aug. 30, 2013). The Panel finds that Respondent has engaged in a pattern of bad faith registration and use per Policy ¶ 4(b)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the HYPERWALLET mark as Respondent reached out to Complainant in an attempt to sell the disputed domain name. Actual knowledge of a complainant’s trademark rights prior to registration can evince bad faith registration per Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also 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)”). Complainant has provided the Panel with an email chain where Respondent seeks out Complainant in an attempt to sell the disputed domain name. Complainant argues this correspondence shows Respondent had actual knowledge of Complainant’s trademark rights prior to registration. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark and registered and uses the domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <hyperwallet.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
January 16, 2020
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