WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Worldpay Limited v. Dell Pop
Case No. D2017-0161
1. The Parties
The Complainant is Worldpay Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Dell Pop of Los Angeles, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <worldpaymentinc.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2017.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 28, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a payment technology company that provides payment processing services, facilitates face-to-face mail order and online payments, and develops anti-fraud systems. The Complainant operates its business in 146 countries worldwide. The Complainant owns several trade mark registrations for the WORLDPAY trade mark, including in China, Hong Kong China, the European Union, India, Japan, Malaysia, Singapore, United Kingdom and the United States. The Complainant’s United States trade mark, registration no. 2,245,537, was registered on May 18, 1999.
The Respondent appears to have a place of business in California, United States and Hong Kong China. The Respondent registered the Disputed Domain Name on January 6, 2016. The Disputed Domain Name resolves to a website that appears to be offering online payment services (the “Respondent Website”).
5. Parties’ Contentions
A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant has registered rights in the WORLDPAY trade mark in multiple jurisdictions, including China, Hong Kong China, the European Union, India, Japan, Malaysia, Singapore, United Kingdom and the United States. The Complainant first began using the WORLDPAY trade mark in 1993. The Complainant’s WORLDPAY trade mark was previously found in other UDRP proceedings to be well-known internationally and associated with the Complainant (see Worldpay Limited v. PrivacyProtect.org, Domain Admin, ID#10760 / Steve Blanton, e-commerce world payments llc,
WIPO Case No. D2013-2147).
(b) The Complainant has been in the payments industry for 30 years. In 2015, the Complainant became listed on the London Stock Exchange and a member of the FTSE100. The Complainant processed 13.1 billion transactions in 2015, and 7.2 billion transactions in the first half of 2016. The Complainant has also won several awards throughout the years.
(c) The dominant part of the Disputed Domain Name is “worldpayment”, which comprises the Complainant’s WORLDPAY trade mark in its entirety, save that it uses the noun “payment”, instead of the verb “pay”. However, “pay” and “payment” have the same meaning, and the substitution of the word “pay” with the word “payment” is insufficient to distinguish the Disputed Domain Name from the Complainant’s WORLDPAY trade mark. The suffix “inc” does nothing to distinguish the Disputed Domain Name from the Complainant’s trade mark, as it is a generic corporate identifier.
(d) The Complainant has no relationship with the Respondent, and has not authorized the Respondent to use the Complainant’s WORLDPAY trade mark. The Disputed Domain Name resolves to a website that appears to offer online payment services. However, the Complainant does not believe that it is a legitimate business (e.g., the prominent “get started now!” link is broken and resolves to a parking page, the “about us” page actually displays an image of Visa Inc.’s Moscow office, etc). The website to which the Disputed Domain Name resolves also copies verbatim the content of several unrelated third-party websites (e.g., GlobeBill Inc., Transact Fast, etc.). The Respondent therefore has no rights or legitimate interests in the Disputed Domain Name.
(e) The Complainant and its WORLDPAY trade mark are well-known worldwide, and the Complainant has numerous trade mark registrations for WORLDPAY. The Respondent must have been aware of the Complainant at the time it registered the Disputed Domain Name on January 6, 2016. The Respondent is using the Disputed Domain Name to confuse users and to deceive them into thinking that the website is associated with the Complainant, and will disrupt the Complainant’s business.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,
WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the WORLDPAY trade mark, based on its registrations in China, Hong Kong China, the European Union, India, Japan, Malaysia, Singapore, United Kingdom and the United States.
The Disputed Domain Name incorporates the Complainant’s WORLDPAY trade mark in its entirety, the only difference being the use of the noun “payment” (instead of the verb “pay”) and the suffix “inc”. The word “inc” is a generic term. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (See Oakley, Inc. v. Joel Wong/BlueHost.com- INC,
WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,
WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,
WIPO Case No. D2010-0088).
The Panel finds that “worldpayment” is the distinctive component of the Disputed Domain Name for purposes of the Policy, and the addition of “inc”, and the use of the noun “payment” instead of the verb “pay” is insufficient to distinguish it from the Complainant’s trade mark.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extensions, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the WORLDPAY trade mark many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name, or a name corresponding to it. The Disputed Domain Name resolves to a website that appears to be offering online payment services.
However, the Panel finds that the Respondent is not using the Respondent Website to make a bona fide offering of services, based on the following:
(a) The following tagline appears on the Respondent Website: “No matter what you business, we make payments simply”. This is the exact same tagline that appears on the Complainant’s official website found at “www.worldpay.com”.
(b) Some of the text that appears in the Respondent Website has been copied from third-party websites.
(c) The image used on the “about us” page of Respondent Website is an image taken from Visa Inc.’s website, and shows Visa Inc.’s office in Moscow.
(d) Parts of the Respondent Website (e.g., the “get started now!” button and the “sign up” button), resolve to a parking page that includes a number of pay-per-click links relating to payment processing.
Even if the Respondent could demonstrate that it was actually offering payment services via the Respondent Website, it cannot be said that such would amount to a bona fide offering of services based on the above, and also because it would be in direct competition with the business of the Complainant.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith for the following reasons:
The Complainant has been using the WORLDPAY trade mark for decades, prior to the registration of the Disputed Domain Name, and is well-known worldwide. Further, the Respondent Website purports to provide online payment services, which is in direct competition with the Complainant. The Respondent Website also features the same tagline as the Complainant’s official website (i.e., “No matter what you business, we make payments simply”). Parts of the Respondent Website resolve to a parking page, which include sponsored links related to the Complainant’s industry and competitors of the Complainant. The Respondent has also copied the content of third-party websites and incorporated them into the Respondent Website.
The foregoing serves as evidence that the Respondent must have been aware of the Complainant at the time it registered the Disputed Domain Name, and did so with the intent of misleading users into believing that the Disputed Domain Name and Respondent Website are associated with the Complainant, for commercial gain.
The Panel finds paragraph 4(a)(iii) of the Policy is satisfied.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <worldpaymentinc.com>, be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: March 9, 2017
