WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tyro Payments Limited ACN 103 575 042 v. Du Zheng Min / Nexperian Holding Limited

Case No. D2017-0965

1. The Parties

The Complainant is Tyro Payments Limited ACN 103 575 042 of Sydney, New South Wales, Australia, represented by NDA Law Pty Ltd, Australia.

The Respondent is Du Zheng Min of Nanjing, Jiangsu, China, self-represented / Nexperian Holding Limited of Hangzhou, Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <tyrobank.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2017. On May 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 17, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also informed the Complainant on the same day that the Complaint was administratively deficient. The Complainant filed an amended Complaint on May 19, 2017.

On May 17, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On May 18, 2017, the Respondent requested that Chinese be the language of the proceeding. On May 19, 2017, the Complainant confirmed its request that English be the language of the proceeding.

The Center verified that the Complaint together with the amended Complaint (hereinafter named both together as 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 in both Chinese and English of the Complaint, and the proceedings commenced on May 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2017. Per the Respondent’s extension request, the Response due date was extended to June 16, 2017 under paragraph 5(b) of the Rules. The Response was filed with the Center on June 15, 2017.

The Center appointed Sok Ling MOI as the sole panelist in this matter on June 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

The Complainant is a publicly-listed Australian company which commenced operations in 2003 under the name of “Moneyswitch Limited”. Since April 2007, the Complainant has been trading under the name “Tyro Payments”.

The Complainant carries on business as a banking and financial technology service provider, providing cashflow-based lending, electronic funds transfer at point-of-sale terminals and other related services to the retail sector. The Complainant holds the licence to carry on a banking business in Australia. The Complainant offers its products and services under the brand “Tyro”. For the year 2016, the Complainant reported a revenue of AUD 95.8 million.

The Complainant owns the following trade mark registrations for TYRO:

- Australian Registration Number 1172815 registered on April 25, 2007 for, inter alia, banking and financial services; and

- New Zealand Registration Number 767385 registered on June 11, 2009 for, inter alia, banking and financial services;

The Complainant also owns the following domain name registrations incorporating the TYRO trade mark:

- <tyro.com> registered on January 4, 1997; and

- <tyro.com.au>.

The disputed domain name < tyrobank.com> was registered on February 9, 2017, long after the Complainant had used and registered its trade mark TYRO. As at the date of this decision, the disputed domain name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

(i) The Complainant contends that the disputed domain name is confusingly similar to its trade mark TYRO as it completely integrates the TYRO mark and adds a descriptive word “bank”.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

(iii) The Complainant contends that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Complainant claims that the Respondent’s main purpose of registering the disputed domain name was to mislead Internet users and exploit the reputation of the Complainant and its trade mark to divert consumer traffic to the Respondent’s website. Noting that the website at the disputed domain name is inactive, the Complainant states that the Respondent’s passive holding of the disputed domain name incorporating the Complainant’s trade mark is in bad faith.

The Complainant requests for the cancellation of the disputed domain name.

B. Respondent

(i) The Respondent contends that the Complainant has not produced any evidence to prove that the disputed domain name is confusingly similar to its trade mark.

The term “tyro” is an ordinary English word meaning “beginner”. The disputed domain name, which combines two English terms “tyro” and “bank”, has a descriptive meaning and is clearly different from the Complainant’s trade mark TYRO. The Complainant does not own any trade mark registration for “tyrobank”.

According to a Baidu Internet search, there are several third party websites with domain names comprising the word “tyro” and these websites obviously are not confused with the Complainant’s trade mark. Similarly, the public, when encountering the website at “www.tyrobank.com”, would immediately understand that it is not connected with the Complainant’s trade mark.

(ii) The Respondent claims that it has rights or legitimate interests in respect of the disputed domain name.

Apart from <tyro.com>, the Complainant does not own other “tyro”-plus domain names (e.g., <tyro.org>, <tyro.net>, <tyro.info> and <tyro.biz>) which are in fact owned by different persons/ entities. That the Complainant has not sought to register or buy over these domain names suggests that the Complainant has accepted the rights and legitimate interests of the third parties.

The Respondent claims that as a generic term, the word “tyro” commands value as a domain name independently, unrelated to any value it may enjoy as a trade mark of the Complainant. A search shows there are more than 60 “tyro”-plus domain names (e.g., <tyrolite.com>, <tyropedia.com>, <tyrosoftware.com> and <tyrokids.com>) that have been registered by different persons/entities.

The Respondent claims that it has registered the disputed domain name with the intention (jointly with friends also from the financial industry) of establishing a non-profit website focused on promoting financial literacy and educating the public about financial scams. The name “tyrobank” was aptly chosen. It claims that its website is still under development and construction.

(iii) The Respondent claims that it has not registered or used the disputed domain name in bad faith.

The Respondent claims that it has registered the disputed domain name for its own usage, and has not done so for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for illicit gains. The Complainant does not have any evidence to suggest any improper purpose on the part of the Respondent.

Prior to receiving the Complaint, the Respondent had not heard of the Complainant or its trade mark. According to the evidence submitted by the Complainant, the Complainant had only registered its trade mark in Australia and New Zealand and had business operations only in these two countries. The Complainant has no business activities in China, nor has it conducted any promotional activities in China. A search on the State Administration for Industry & Commerce (SAIC) website shows that the Complainant did not apply to register “tyro” as a trade mark in China, but the trade mark was instead applied for registration in China by two other unrelated companies.

According to a Baidu Internet search, the Complainant’s trade mark and business did not feature prominently but appeared only once in the first 5 pages of the search results. This further proves that the Respondent was unaware of the existence of the Complainant or its trade mark at the time of registering the disputed domain name. As such, there can be no intention to capitalise on the Complainant’s trade mark and hence no bad faith in the registration of the disputed domain name.

As its website is still under development and construction, there is no evidence that its use of the disputed domain name has in any way created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Respondent requests that that the Complaint be denied.

6. Discussion and Findings

6.1 Procedural Issue - Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding and has filed its Response in Chinese.

Although the Respondent appears to be a native Chinese individual and claims she has limited knowledge of English, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name <tyrobank.com> is registered in Latin characters, rather than Chinese script;

(b) the dispute domain name comprises the English words “tyro” and “bank”;

(c) according to the evidence submitted by the Complainant, the disputed domain name resolves to a holding page with both English and Chinese texts; and

(d) according to the reverse WhoIs search results submitted by the Complainant, the Respondent also owns other domain names (such as <comopay.com>, <denizpay.com>, <frostpay.com>, <tigobank.com>, <raboforex.com>, <mobikwikbank.com>, <tidecloud.com>, <proximusmusic.com>, <incredbank.com>, <denizwallet.com>, <rhbwallet.com> and <sbiwallet.com>) comprising Latin characters and words with ordinary English meaning.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present her case in this proceeding;

(d) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) it shall accept the Response as filed in Chinese; and (iii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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 in bad faith.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the TYRO mark by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant’s trade mark TYRO in its entirety. The addition of the descriptive word “bank” does not negate a finding of confusion but may instead compound the confusion in this case given that the Complainant is in a related field of business. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to show its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name 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 it has 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.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has asserted that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the TYRO trade mark or register the disputed domain name. There is no resemblance between the Respondent’s name and the term “tyro”. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “tyro”. There is also no concrete evidence that the Respondent is making any noncommercial or fair use of the disputed domain name as it resolves to a holding page which states that the website is under construction.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to demonstrate her rights or legitimate interests in the disputed domain name.

The Panel accepts that the term “tyro bank” may have a descriptive connotation as asserted by the Respondent. In evaluating whether the Respondent has legitimate interests, the Panel has to verify whether the disputed domain name has been genuinely used or at least demonstrably intended for such use by the Respondent in connection with the relied-upon meaning and not to trade off third-party rights in such words. See ZB, N.A., dab Zions First National Bank v. Ferdinand Che, Sonday Inc, WIPO Case No. D2017-0167.

As at the date of the decision, the disputed domain name does not resolve to any active website. Save from a bare assertion that it has registered the disputed domain name with the intention (jointly with friends also from the financial industry) of establishing a website focused on promoting financial literacy and educating the public about financial scams, the Respondent has not provided any concrete evidence (e.g., pertaining to its claim that it is a member of the financial industry, the identity of its friends, credible investment in website development etc) to substantiate its assertions and support the purported use of the disputed domain name. The Panel also reviewed the additional domain names (specifically <tyrolite.com>, <tyropedia.com>, <tyrosoftware.com> and <tyrokids.com>) relied upon by the Respondent to canvas its argument that the term “tyro” has independent value owing to its descriptive connotations, and note that none of them is currently used in connection with active websites.

Since the Respondent has failed to provide evidence to rebut the prima facie case, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel notes that, as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3.

The Complainant asserts that the Respondent has registered the disputed domain name in bad faith relying on the asserted fame of its trade mark. The Complainant did not, however, provide information or appropriate evidence about the geographical reach of its business or whether it has a customer base beyond Australia and New Zealand. Without clear evidence of a strong reputation and customer recognition, the Panel is not convinced that the Complainant’s trade mark is well-known in China, where the Respondent is based. Hence, no presumption can be made that the Respondent was aware of the Complainant’s rights in its trade mark based on any cross-border fame. Nevertheless, this is not fatal to the Complainant’s case.

The Respondent submitted evidence of an Internet search that featured the Complainant’s business and trade mark amongst the first 5 pages of the search results. In fact, the Panel notes that the Complainant’s website was featured on the first page, amongst the top 3 results. That, in the Panel’s opinion, is proof of actual knowledge on the part of the Respondent of the rights of the Complainant over its trade mark TYRO. Registration of a domain name that incorporates a known trade mark with a descriptive word that is related to the owner’s field of business, with no legitimate purpose to use the domain name, suggests opportunistic bad faith.

The Respondent has failed to provide any evidence of actual or contemplated bona fide use of the disputed domain name. The Respondent pointed to <tyrotraining.co.uk>, <tyromotion.com>, <tyrocity.com>, <tyrogenex.com> and <tyrocircle.com> as examples of websites that incorporate the descriptive word “tyro” without causing confusion with the Complainant’s trade mark. In the Panel’s view, these examples do not help the Respondent as none of the suffixes added to the term “tyro” is related to the financial industry which the Complainant operates in. In view of the above finding that the Respondent lacks rights or legitimate interests in the disputed domain name, the Panel agrees with the Complainant’s claim that the Respondent has likely registered the disputed domain name with an aim to intentionally attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Panel further notes that the Respondent has registered more than 200 other domain names which, according to the Complainant, do not appear to resolve to active websites. Some of these domain names comprise third party trade marks used in the financial and mobile payment industry, such as <denizpay.com>, <frostpay.com>, <tigobank.com>, <raboforex.com>, <mobikwikbank.com>, <incredbank.com>, <denizwallet.com>, <rhbwallet.com> and <sbiwallet.com>. There is therefore prima facie evidence that the Respondent is engaged in a pattern of cybersquatting and the inference is that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name. The Respondent has failed to present any credible evidence-backed rationale for registering the disputed domain name.

Furthermore, efforts to send the written notice to the Respondent at the physical address and fax number provided by the Respondent to the Registrar (and in turn to the Center) failed which suggests that the Respondent had provided false contact details. The Respondent had also engaged privacy services seemingly to conceal its identity. This is further evidence of bad faith.

Taking into account all the circumstances, it is appropriate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 disputed domain name, <tyrobank.com>, be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: July 10, 2017