WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Worldpay Limited v. Benjamin Tan, Dot Com Mastermind
Case No. D2015-1211
1. The Parties
Complainant is Worldpay Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by A. A. Thornton & Co., UK.
Respondent is Benjamin Tan, Dot Com Mastermind of Georgetown, Malaysia.
2. The Domain Name and Registrar
The Disputed Domain Name <onlineworldpay.com> is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 14, 2015. On July 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 14, 2015, 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 Complainant on July 15, 2015 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 July 16, 2015 and submitted a new version of one of the annexes to the amended Complaint on July 27, 2015.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2015. Respondent asked for an extension of the due date for Response. According to paragraph 5(d) of the Rules, the Center exceptionally granted an extension of time to submit the Response until August 28, 2015. The Response was not filed with the Center on August 28, 2015.
The Center appointed Richard Page as the sole panelist in this matter on September 14, 2015. 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 the owner of numerous international trademark registrations and applications covering the phrase WORLDPAY (the "WORLDPAY Mark"), which registrations and applications are described in the Complaint. The countries covered by these trademark registrations and applications include, without limitation, the United States of America, the UK and Malaysia. In addition, Complainant operates its primary website at "www.worldpay.com" and another website at "www.worldpay.us". Complainant also owns numerous domain names which are listed in the Complaint.
Complainant first used the WORLDPAY Mark in 1993, when it launched an electronic cash purse system in the European Union. Complainant first provided Internet payments under the WORLDPAY Mark in 1994, and first used the WORLDPAY Mark in the United States in 1997.
The Disputed Domain Name was registered on April 15, 2014.
5. Parties' Contentions
Complainant contends that it 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 further contends that it provides a gateway service allowing merchants to access payments online, security products and reporting services. Complainant further contends that its e-commerce business operates in 146 countries in 116 currencies and offers 300 payment types across Europe, the United States, the Asia Pacific Region and emerging markets.
Complainant alleges that it has been in the payments industry for 30 years. It processed 11.5 billion transactions in 2014 with an approximate value of GBP 375 billion supporting about 400,000 merchants globally. Complainant further alleges that it is part of the Worldpay Group, whose underlying revenue over 12 months in 2014 was GBP 3.65 billion. Around 40% of Worldpay's gross profit is from online transactions. Complainant's eCommerce division which is focused on the online market has reported revenue of EBITDA CAGR of 15% and 17% respectively between the years 2012 and 2014 and during the course of 2014 successfully completed an acquisition giving it presence in Latin America, bedded down its operations in Japan and incorporated a wholly foreign owned entity in Shanghai in order to support its global ambitions.
Complainant contends that it has enforceable rights in the WORLDPAY Mark and that the Disputed Domain Name contains the entirety of Complaint's registered WORLDPAY Mark in conjunction with the term "online." The term "online" simply references the alleged purpose of the website as a portal for payments made online over the Internet and does nothing to distinguish the Disputed Domain Name from Complainant's WORLDPAY Mark. Therefore, Complainant asserts that the Disputed Domain Name is confusingly similar to the WORLDPAY Mark pursuant to the Policy, paragraph 4(a)(i).
Complainant further contends that the WORLDPAY Mark is used on the pages throughout Respondent's website to which the Disputed Domain Name resolves. Complainant explains the WORLDPAY Mark is used with the description that Respondent is "an online payment gateway for the International Market. We enable members and merchants to process multi-channel top-ups quickly and securely!" Complainant alleges that on its website Respondent further states that it is a "registered payment processing gateway" supporting mobile payments with the "lowest fees in the industry" and "proactive customer service."
Complainant argues that the use of the WORLDPAY Mark on the Respondent's website is unauthorized and clearly done to create the impression that the website is secure and offers a legitimate and trustworthy business. Complainant contends that Respondent's website is a phishing site, attempting to deceive Internet customers of Complainant into thinking Respondent's website is operated by or connected to Complainant in the hope that customers will try to login using the login details for their genuine WORLDPAY accounts. The operator of the Disputed Domain Name will then be able to phish out these genuine account details. Complainant concludes that this is done for commercial gain, is a fraudulent activity and not a legitimate interest in the Disputed Domain Name.
Complainant concludes that, in addition, many of the links on Respondent's website do not work or lead to any functioning pages. Complainant alleges that Respondent has intentionally used the WORLDPAY Mark to attract Internet users for commercial gain and to deceive those consumers and disrupt the business of Complainant. Complainant finally states that there is no other indication that Respondent has any other business in connection with the Disputed Domain Name and that Respondent's activities meet the criteria of the Policy, paragraph 4(a)(ii) to show that Respondent lacks any rights or legitimate interest in the Disputed Domain Name.
Complainant alleges bad faith by Respondent in its website, even if the website is not used for phishing. Complainant has made a significant investment in its advertising, promotion and protection of the WORLDPAY Mark and its related branding, making Complainant a leading and recognised safe payments provider and generating a wealth of media coverage regarding Complainant's brand. Respondent was, or should have been, aware of the WORLDPAY Mark when it registered the Disputed Domain Name on April 15, 2014. Respondent's website under the Contact Us page states that it has partner offices in Malaysia and China. Complainant argues that its registrations of the WORLDPAY Mark in Malaysia and China demonstrated Respondent's actual or imputed knowledge of Complainant's rights. The Asia Pacific Region is a key territory for Complainant and China was the fifth highest country source of traffic to Complainant's legitimate website from May 1, 2014 through December 31, 2014. Complainant alleges that Respondent's activities are in violation of the Policy, paragraphs 4(b)(iv) and 4(a)(iii), among other indications of bad faith.
Respondent has chosen not to file a Response to the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant (see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441).
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As stated above, Complainant contends that it has protectable rights in the WORLDPAY Mark and that the Disputed Domain Name is confusingly similar. Respondent has not filed any Response. Therefore, the Panel finds that the undisputed contentions of Complainant, along with evidence of Complainant's WORLDPLAY Mark registrations (i.e., registration numbers), are sufficient under the Policy, paragraph 4(a) to establish Complainant's rights in the WOLRDPAY Mark for purposes of this proceeding. The Panel finds that the Disputed Domain Name, which contains Complainant's WORLDPLAY Mark in its entirety, is confusingly similar to that mark.
B. Rights or Legitimate Interests
As stated above, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel finds that Complainant has sustained its burden of making a prima facie showing that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has filed no Response. Therefore, the Panel finds that the undisputed contentions of Complainant are sufficient under the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
As stated above, Complainant contends that the Respondent has registered and used the Disputed Domain Name in bad faith. Respondent has filed no Response. Therefore, the Panel finds that the undisputed contentions of Complainant, along with evidence (i.e., screenshots) of the Disputed Domain Name's apparent use for competing services, are sufficient under the Policy, paragraphs 4(b)(iv) and 4(a)(iii).
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 <onlineworldpay.com> be transferred to Complainant.
Richard W. Page
Date: October 3, 2015