WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Worldpay Limited v. Domains by Proxy, LLC / Oscar Vosco
Case No. D2017-1695
1. The Parties
Complainant is Worldpay Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by DLA Piper UK LLP, UK.
Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America ("US") / Oscar Vosco of Santo Domingo, Angola.
2. The Domain Name and Registrar
The disputed domain name <digitalworldpay.biz> (the "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 September 1, 2017. On September 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 5, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 11, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 15, 2017.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 9, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 20, 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
Complainant is a leading payments technology company providing payment processing services and facilitating face-to-face mail order and online payments, as well as a developer of anti-fraud systems. Complainant provides a gateway service allowing merchants to access payments online, security products and reporting services. Complainant has been in the payments industry for 30 years. Complainant first used the mark WORLDPAY in 1993, when it launched an electronic cash purse system in the European Union ("EU"). Complainant first provided Internet payments under the WORLDPAY mark in 1994.
Complainant processed 13.1 billion transactions in 2015 with a value of approximately £402 billion supporting around 400,000 merchants globally. In the first half of 2016, Complainant processed a further 7.2 billion transactions (an increase of approximately 15% from the same period in 2015). Complainant is part of the Worldpay Group, whose net revenue over 12 months in 2015 was £981.7 million (and for the first half of 2016, £539.7 million, an increase of around 16% from the same period in 2015). Using its network and technology, Complainant is able to process payments from 146 countries and 116 currencies, with customers able to accept more than 300 different payment types, and with solutions delivered by 5,000 colleagues across 25 offices in 13 countries. In 2015, Complainant listed its shares for trading on the main London Stock Exchange and in December 2015 became a member of the FTSE 100.
Approximately 40% of Complainant's gross profit is from online transactions. Complainant's ecommerce division, which is focused on the online market, has reported revenue and compound annual growth rate of 15% and 17% respectively between the years of 2012 to 2014, and a further 14% in 2015. During the course of 2014, Complainant successfully completed an acquisition giving it presence in Latin America, extended its operations in Japan, and incorporated a wholly foreign owned entity in Shanghai. In August 2016, Complainant expanded its operations to Australia after obtaining a regulatory license to process payments there.
Complainant owns a number of trademark registrations for the WORLDPAY mark, including:
- EU, trademark registration numbers 010315646 and 1229706, registered on March 9, 2012 and March 26, 2014, respectively;
- United Kingdom, trademark registration numbers 2230627 and 3045695, registered on November 17, 2000 and July 4, 2014, respectively; and
- US, trademark registration numbers 1139206, 1229706, 2245537 and 2414305, registered November 12, 2013, January 12, 2016, May 18, 1999, and December 19, 2000, respectively.
Complainant's primary website is located at "www.worldpay.com," while it also maintains a website at "www.worldpay.us". Complainant and its subsidiary, Worldpay (UK) Ltd, own numerous domain names.
The Domain Name was registered by Respondent on June 20, 2017.
5. Parties' Contentions
A. Complainant
(i) Identical or confusingly similar
Complainant has provided press releases and media articles from around the world relating to news of Complainant's services, collaborations and industry awards up to January 2017. Complainant states that these press releases demonstrate the worldwide reputation of the WORLDPAY brand established prior to Respondent's registration of the Domain Name. Complainant was named as "Best Merchant Acquiring Initiative" winner and "Best Initiative in Mobile Payments" winner at the Card & Payments Awards in 2014 and shortlisted in three categories for the 2015 awards. Complainant's "Worldpay eCommerce" division was shortlisted for "Payment Company of the Year," and its RiskGuardian product was nominated for "Innovation in Payments" and "Fraud and Compliance solution" following its re-launch in 2014 at the eGaming Review B2B Awards. The eGaming Review is the best read publication in the gambling industry and these awards recognize the achievements of leading industry suppliers.
Complainant refers to earlier UDRP decisions that have found that the WORLDPAY mark is well known internationally and associated with Complainant including, for example, Worldpay Limited v. PrivacyProtect.org, Domain Admin, ID#10760 / Steve Blanton, e-commerce world payments llc,
WIPO Case No. D2013-2147, and Worldpay Limited v. Noble Web Studio, WIPO Case No. D2017-0162.
Complainant states that the primary element of the Domain Name (aside from the generic Top-Level Domain ("gTLD") suffix ".biz") is "digitalworldpay," which comprises Complainant's trademark WORLDPAY in its entirety, with the additional generic word "digital." The word "digital" does not distinguish the Domain Name from Complainant's mark. On the contrary, Complainant states it merely describes the business sector in which Complainant operates and the manner in which it conducts its business. Complainant asserts that this would lead to confusion. Complainant states it has long been established that the incorporation of generic terms that have a relationship to a complainant's business actually increase the likelihood of confusion on the part of consumers.
(ii) Rights or legitimate interests
Complainant states there is no relation between Complainant and Respondent; Complainant has not authorized Respondent to use its trademark or register the Domain Name and, to the best of Complainant's knowledge, Respondent has not made any attempt to seek any such authorization from Complainant.
Complainant states that Respondent's website superficially appears to represent a legitimate business, operating in the financial services sector (the same as Complainant). However, on closer analysis, there are a number of factors that illustrate it is not a legitimate business, including:
(1) Respondent's website includes a number of simple spelling and grammatical errors, for example: "AOBOUT ME"; "Join us the biggest online money aking service"; "LESTNEWS"; "Best refral program for leaders"; "Enlarge you knowledge about Bitcoin trading"; "Digital World Pay is having team of experienced and well trained advanced trader …"; "Singe! Leg income 2861$"; "2 Direct Refrel Necessary For Singal Leg Income". These errors are typical of illegitimate websites;
(2) the "About Us" page of the site includes the statements "Why do more than half million traders choose Digital World Pay as their provider?" and "Over 10 years in the market". These statements directly contradict statements elsewhere on the site which announce that the alleged business behind the website is yet to launch. Furthermore, it is not possible for anyone to have "over 10 years" experience in Bitcoin trading, as the Bitcoin did not exist until late 2008, i.e., less than nine years ago. This suggests that Respondent is making false statements to support its proposed launch to attract potential customers dishonestly;
(3) Respondent's website further claims that the alleged business is the "biggest online money makking [sic] website", "critically acclaimed", "certified by UK government" and that it provides a "zero risk business opportunity". It does not attempt to provide any justification for these assertions and, Complainant suspects, it is not possible to do so (for example, searches have been carried out against "digitalworldpay", and some variations, on the Financial Services Register maintained by the UK's Financial Conduct Authority and Prudential Regulation Authority, with zero results bearing any resemblance to the alleged business behind this website). Complainant asserts these are not the actions of a legitimate business;
(4) the footer of each page on Respondent's website includes icons which appear to be links to social media and other related accounts (Skype, YouTube, Twitter); however, they all appear to be broken links, only leading the user to the same page of the website;
(5) Respondent's website does not include any of the detailed regulatory information, which is typically required of businesses in the highly regulated financial services industries (in particular, in the UK).
Complainant notes that Google has marked the website as "Dangerous" and has detected phishing activity on it. Finally, to the best of Complainant's knowledge, there is no evidence of Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services; that Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name; or that Respondent is making a legitimate non-commercial or fair use of the Domain Name.
(iii) Registered and used in bad faith
Complainant submits that having regard to the significant investment it has put into advertising, promoting and protecting its WORLDPAY brand and its status as a leading and recognized safe payments provider, and the wealth of media coverage of Complainant's brand, Respondent must have been aware of Complainant at the time of registering the Domain Name in June 2017 (nearly 25 years after Complainant's first use of the brand).
Complainant states the Domain Name is confusingly similar to Complainant's existing brand. Use of the Domain Name will cause confusion for customers and partners by deceiving them into thinking that the website is operated by or associated with Complainant, and will disrupt Complainant's business. It is highly unlikely that the choice of name combined with the purported business services are mere coincidence. The only logical conclusion is that Respondent has registered and is using the Domain Name with the intent of trading on the reputation of Complainant's brand to attract Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's brand, for commercial gain. This is clearly use in bad faith.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel determines that Complainant has strong and well-established rights in its WORLDPAY trademarks, holding registrations in numerous countries and conducting operations on a global scale. See Worldpay Limited v. PrivacyProtect.org, Domain Admin, ID#10760 / Steve Blanton, e-commerce world payments llc,WIPO Case No. D2013-2147 ("The Panel also finds that the mark WORLDPAY is well-known internationally and associated with the Complainant.")
The Domain Name incorporates the Complainant's WORLDPAY mark in its entirety, with the difference being the addition of the prefix "digital." The word "digital" is a dictionary term, which does nothing to distinguish the Domain Name from the Complainant's trade mark. Worldpay Limited v. Noble Web Studio,
WIPO Case No. D2017-0162 ("The Panel finds that "worldpayment" is the distinctive component of the Disputed Domain Name for purposes of the Policy, and the addition of "recharge" does nothing to distinguish it from the Complainant's trade mark"). Instead, the word "digital," when used with the Domain Name, reinforces a possible connection to Complainant and its business operations.
It is also well established that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the gTLD extensions, in this case ".biz", may be disregarded. Worldpay Limited v. Noble Web Studio,
WIPO Case No. D2017-0162.
Accordingly, the Panel finds that that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1, states that "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Here, the Panel finds that Complainant has made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainant has not authorized Respondent to use its WORLDPAY trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name is linked to a website that provides false information concerning the offering of purported financial services; and that Complainant's WORLDPAY mark is well known and has been used for more than 20 years, which suggests that Respondent registered the Domain Name to target Complainant's WORLDPAY trademark.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent.
The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark".
Here, the Panel determines, on the balance of the probabilities, that the Domain Name was registered and is being used in bad faith. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant's WORLDPAY trademark in its entirety, along with the descriptive word "digital," more than 20 years after Complainant had begun using its mark, and after it had established a strong reputation and goodwill in the mark. Further, the website associated with the Domain Name provides false information about offering financial services in the same field where Complainant operates. Thus, where Respondent failed to submit a Response, the Panel finds the only logical conclusion is that Respondent likely targeted Complainant and its WORLDPAY mark when registering the Domain Name, and is using it with the intent to trade on the reputation of Complainant's brand to attract Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's brand, for commercial gain. This is clearly use in bad faith. See e.g., Worldpay Limited v Surojit Manna, Worldpay,
WIPO Case No. D2017-0160.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
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 Domain Name, <digitalworldpay.biz>, be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: November 25, 2017
