WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PayPal, Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2015-1920
1. The Parties
Complainant is PayPal, Inc. of San Jose, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Domain Admin, Whois Privacy Corp., of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <investpaypal.com> is registered with TLD Registrar Solutions Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2015. On October 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. Respondent sent an email to the Center on November 11, 2015 stating that it could sell the disputed domain name and another email on December 8, 2015 requesting USD 1,000 for the disputed domain name.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on December 11, 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 a worldwide provider of digital and mobile payment and money transfer services with legal domicile in the United States of America.
Complainant has provided evidence that it is the owner of numerous registered trademarks worldwide relating to the designation PAYPAL, e.g.:
- Word Mark PAYPAL, United States Patent and Trademark Office (USPTO); Registration No.: 2646490; Registration Date: November 5, 2002; Status: active;
- Word Mark PAYPAL, United States Patent and Trademark Office (USPTO); Registration No.: 2959971; Registration Date: June 7, 2005; Status: active;
- Word Mark PAYPAL, Office for Harmonization in the Internal Market (OHIM); Registration No.: 001362565; Registration Date: December 4, 2000; Status: active;
- Word Mark PAYPAL, Office for Harmonization in the Internal Market (OHIM); Registration No.: 003681137; Registration Date: May 26, 2005; Status: active.
Moreover, Complainant has evidenced that either itself or a member of the Paypal group of companies is the owner, inter alia, of the domain names <paypal.com> (created in 1999), <paypal.net> (created in 1999), <paypal.org> (created in 1999), <paypal.co.uk> (created in 2000), <paypal.eu> (created in 2006) and <paypal.us> (created in 2008); these domain names redirect to Complainant's official websites at, e.g., "www.paypal.com" promoting Complainant's business and related payment services.
The disputed domain name <investpaypal.com> was created on December 21, 2014; at the time of the rendering of this decision, it does not connect to any content on the Internet. Complainant, however, has provided evidence that at the time of the filing of this Complaint, the disputed domain name redirected to a website at "www.investpaypal.com" which displayed Complainant's PAYPAL trademark and official logo and offering a platform for investors to "make money online", thereby using a text apparently copied from the official website of the Danish bank "Danske Invest".
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties' Contentions
Complainant contends to be a leading technology platform company which, since its creation in 1998, has constantly grown and acquired notoriety, with today more than 169 million active customer accounts worldwide. Complainant's website at "www.paypal.com" was ranked as the 22nd most visited website in the United States and the 40th most visited website in the world. Accordingly, Complainant had nowadays acquired considerable reputation and goodwill in both its services and its brands, throughout the world and particularly in the United States of America.
Complainant submits that the disputed domain name is confusingly similar to the PAYPAL trademark, as it fully incorporates the latter, with the mere addition of the generic term "invest".
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not Complainant's licensee and has not been otherwise authorized by Complainant to make any use of its PAYPAL trademark, (2) Respondent is using the disputed domain name which identically reproduces Complainant's PAYPAL trademark and, therefore, cannot assert that it was using, or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, (3) Respondent cannot conceivably claim to be commonly known by the disputed domain name, (4) Respondent is using the disputed domain name to mislead Internet users which is why it cannot assert making a legitimate noncommercial or fair use of the disputed domain name and, finally, (5) given the renown of the PAYPAL trademark worldwide, it is not possible to conceive of any plausible action or contemplated active use of the disputed domain name by Respondent that would not be illegitimate.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith by Respondent since (1) given Complainant's renown and goodwill worldwide, it would be inconceivable for Respondent to argue that it did not have knowledge of Complainant's PAYPAL trademark at the time of registration of the disputed domain name in 2014 and that the latter could simply not have been chosen for any reason other than to unduly profit from the considerable goodwill and reputation attached thereto, (2) the disputed domain name consists of Complainant's highly distinctive and well-known trademark in connection with the generic term "invest" which is closely related to Complainant's field of activity so that there is no reason that could explain Respondent's making use of the disputed domain name other than to divert traffic intended for Complainant to Respondent's own website and (3) the confusion caused by the disputed domain name itself is further reinforced by the content of Respondent's website under the disputed domain name which prominently displays Complainant's PAYPAL logo and trademark in a deliberate attempt to inspire consumer confidence and to invite consumers to invest with Respondent.
Respondent did not file a formal response with the Center before the due date of December 1, 2015. However, it sent an email on November 11, 2015 stating that it could sell the disputed domain name and another email on December 8, 2015 requesting an amount of USD 1,000 for the disputed domain name to be transferred to Complainant.
In this context, the Panel notes that the Registrar has confirmed on October 29, 2015 that Respondent is in fact listed as the registrant of the disputed domain name and that there is apparently no underlying third person involved in this dispute. The emails were received from "rweshd" which the Complainant has had prior correspondence with in relation to the disputed domain name.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the PAYPAL trademark in which Complainant has shown to have registered rights as evidenced above.
The disputed domain name incorporates the PAYPAL trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic and descriptive term "invest", which is even closely related to Complainant's core business (namely financial services), is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant's PAYPAL trademark in the disputed domain name.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant's undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial of fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant's PAYPAL trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name. Moreover, Respondent so far has neither made use of the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair use. On the contrary, Respondent apparently directed the disputed domain name to a website displaying Complainant's PAYPAL logo and trademark and thereby offering financial services that compete with those of Complainant.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, however, Respondent did not come forward with any reasonable explanations or contentions in reply to Complainant's allegations as they were included in the Complaint duly notified to Respondent by the Center on November 11, 2015, but Respondent simply stated in its emails of November 11, 2015 as well as of December 8, 2015 that it would be willing to sell the disputed domain name for an amount of USD 1,000.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Complainant contends, and Respondent has not challenged this contentions, that the disputed domain name at least at the time of the filing of the Complaint resolved to a website at "www.investpaypal.com" that offered financial services competing with those of Complainant, thereby even using Complainant's PAYPAL logo and trademark, indicative of Respondent's knowledge of Complainant. The Panel, therefore, has no difficulty in finding that the disputed domain name was registered and is being used by Respondent intentionally attempting to attract, for commercial gain, Internet users to said website, by creating a likelihood of confusion with Complainant's PAYPAL trademark as to the source, sponsorship, affiliation or endorsement with Respondent's website. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In this context, the Panel also takes into account that Respondent, which itself has been confirmed by the Registrar to be the registrant of the disputed domain name, is operating a WhoIs privacy service. It is a consensus view among UDRP panels that although use of a privacy service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a fact for indicating bad faith (see WIPO Overview 2.0, paragraph 3.9). The latter is obviously the case here, where the WhoIs privacy service as such is identified to be a party to a UDRP proceeding and is acting in a manner that fulfils the prerequisites under paragraph 4(b) of the Policy.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <investpaypal.com> be transferred to Complainant.
Stephanie G. Hartung
Date: December 22, 2015