WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Worldpay Limited v. Domainmonster.com Privacy Service, Identity Protect Limited / Abdul Hadi
Case No. D2016-2615
1. The Parties
The Complainant is Worldpay Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by DLA Piper UK LLP of the UK.
The Respondent is Domainmonster.com Privacy Service, Identity Protect Limited of Surrey, UK and Abdul Hadi.
2. The Domain Name and Registrar
The disputed domain name <worldpay.asia> is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2016. On December 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 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 January 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2017. The Response was filed with the Center on January 26, 2017.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on February 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 global payment processing company providing payment services and platforms that enable merchants to access payments online, security products and reporting services. The Complainant operates across 146 countries including in Europe, United States of America (“US”) and the Asia-Pacific and offers over 300 payment methods in 126 currencies. In 2015, the Complainant listed shares for trading on the London Stock Exchange and is included in the FTSE 100 index.
The Complainant’s “WORLDPAY” name and mark is used globally in conjunction with its payment processing services.
The Complainant owns numerous trade mark registrations for the word “WORLDPAY” worldwide, including the following:
i. International Registration trade mark number 1139206 registered on April 5, 2012 designating US, China and Republic of Korea;
ii. European Union trade mark number 10315646 registered on March 9, 2012;
iii. Hong Kong, China, trade mark numbers 302216303 and 302918377 registered on April 10, 2012 and March 10, 2014 respectively;
iv. Japan trade mark number 4393235 registered on June 23, 2000;
v. Malaysia trade mark numbers 2014053651, 2014053654, 2014053657, 2014053659 and 2014053661 registered on March 12, 2014;
vi. Singapore trade mark number 40201500010P registered on February 22, 2016;
vii. Taiwan, Province of China, trade mark numbers 1616506, 1700784 and 1577854 registered on December 16, 2013, April 1, 2015 and May 1, 2013 respectively;
viii. UK trade mark numbers 2230627 and 3045695 registered on November 17, 2000 and July 4, 2014 respectively;
ix. US trade mark registration numbers 2245537, 2414305, 4430548 and 4883501 registered on May 18, 1999, December 19, 2000, November 12, 2013 and January 12, 2016 respectively.
The Complainant and its subsidiary Worldpay (UK) Ltd own numerous domains including, amongst others, <worldpay.com>, <worldpay.us>, <worldpay.uk> and many other domain names listed in the Complaint, all of which contain the word “WORLDPAY”.
The disputed domain name was registered on March 24, 2008. It resolves to a “parking website” which includes links to unconnected third party webpages. The website at the disputed domain name also includes a “Buy This Domain” link (albeit which appears to be broken).
The Registrar did not disclose an underlying registrant but did provide an email address associated with the individual it asserted was the underlying registrant. An “Abdul Hadi” filed a Response to the Complaint on January 26, 2017 from said email address. For purposes of this proceeding, the Panel considers Abdul Hadi to be the Respondent in addition to Domainmonster.com Privacy Service, Identity Protect Limited. The Respondent claimed entitlement to the disputed domain name by virtue of the Complainant’s failure to register the domain during the applicable Sunrise period. The Respondent states that the disputed domain name was registered for the purpose of use in connection with a “mobile phone based money transfer system” albeit no evidence of any preparations that such an endeavour was provided. At the same time, the Respondent expressed a willingness to sell the disputed domain name to the Complainant for the price of expenditure incurred in obtaining and maintaining its registration as well as some unspecified compensatory amount.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:
i. that the disputed domain name is identical or confusingly similar to the Complainant’s WORLDPAY mark in which the Complainant has rights, in particular:
- the disputed domain name comprises the Complainant’s WORLDPAY mark in its entirety; and
- the generic Top-Level Domain (“gTLD”) “.asia” is a technical requirement, or that it denotes a geographical territory which in this case is a territory in which the Complainant has substantial business. In either case, it does not distinguish the disputed domain name from the Complainant’s WORLDPAY mark;
ii. that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in particular:
- the Respondent is not related to the Complainant, not authorised by the Complainant to use the WORLDPAY mark or register the disputed domain name, and has not made any such attempt to seek authorisation from the Complainant;
- the disputed domain name solely comprises (a) several pay-per-click links to third party webpages; (b) several other broken links; and (c) a link at the bottom of the site which redirects users to the website at “www.holidayindia.asia” which appears to be identical to the website at the disputed domain name;
- the Respondent’s use of the disputed domain name is simply an affiliate monetization website generating revenue only though the Internet traffic increased by the use of the Complainant’s well-known WORLDPAY mark; and
- there is no evidence (a) of the Respondent’s use of, or preparation to use, the disputed domain name in connection with a bona fide offering of goods or services; (b) that the Respondent has been commonly known by the disputed domain name; or (c) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name;
iii. that the disputed domain name was registered and is being used in bad faith, in particular:
- the Respondent must have been aware of the Complainant and its WORLDPAY mark at the time of registering the disputed domain name;
- the Respondent chose to use the WORLDPAY mark in the disputed domain name with the intention to associate itself with the Complainant;
- use of the disputed domain name will clearly cause confusion for customers by deceiving them into thinking that the disputed domain name is operated by or associated with the Complainant, and will disrupt the Complainant’s business;
- the disputed domain name includes a link with the text “Buy This Domain” (although the link is broken), indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration; and
- the disputed domain name has been registered using a domain privacy service to conceal the identity of the true beneficial owner.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent contends that it is entitled to the disputed domain name, given that it was acquired after both the applicable Sunrise and Landrush periods and was offered to the “general public”.
The Respondent asserts that its intention for the disputed domain name was to set up a mobile phone-based money transfer system, and that the disputed domain name <worldpay.asia> perfectly described its intended business.
The Respondent asserts that the disputed domain name is on “parking page” because it has not had the time to invest in setting up its intended business and the only purpose of using the “parking page” was to enable the domain to make up its “page rank” scores to improve the domain’s visibility on search engines. The Respondent asserts that the “Buy This Domain” link was a default on the “parking page” script that the Respondent used when setting up the parking page.
The Respondent further indicates that whilst it still intends to continue using the disputed domain name for its intended business until it is in a position to do so it is willing to remove it from the “parking page” website. It has also, in the alternative, expressed its willingness to sell the disputed domain name to the Complainant for an amount comprising costs incurred in registration and renewal of the domain, together with some compensatory sum for it being deprived of using the disputed domain name for its intended business.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence showing that it is the owner of the WORLDPAY mark in many countries, and the Panel accepts that the Complainant’s WORLDPAY mark is well–known.
The disputed domain name fully incorporates the Complainant’s WORLDPAY mark. The addition of the gTLD “.asia” does not serve to distinguish the disputed domain name from the WORLDPAY mark, and should generally be disregarded for the purpose of the assessment of similarity.
The Panel finds that the Complainant has therefore established that the disputed domain name is identical to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The disputed domain name resolves to a pay-per-click page which redirects Internet users to third party webpages. Such use is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy. The Panel notes that the Complainant has not licensed or otherwise permitted the Respondent to use its trade marks or use any domain name incorporating the WORLDPAY mark. Therefore, the Panel finds that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name.
The Respondent claimed in its Response that it is planning to use the disputed domain name for its money transfer business but had not had the time to do so. However, the disputed domain name was registered in March 2008, which is more than 8 years ago before the Complaint was filed, and the Respondent has not demonstrated any actual efforts to do so in this period. Having only the “parking page” and “pay-per-click” links on the disputed domain name suggests that there has in fact been no preparation to use the disputed domain name for the offering of bona fide goods and services. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name (under paragraph 2.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). In addition, the Respondent has stated its intention of using a parking page to attract as many Internet users as possible to its website to rank up its visibility on the search engines. Such diversion of Internet users to the disputed domain name is not a bona fide offering of goods and services.
Therefore, the Panel considers paragraph 4(a)(ii) of the Policy satisfied.
C. Registered and Used in Bad Faith
The Panel first addresses Respondent’s submission that it is fully entitled to the ownership of the disputed domain name because the Complainant did not itself procure the disputed domain name during the Sunrise and Landrush periods. The Panel finds that the fact that a trade mark owner decides not to use the Sunrise or Landrush system does not deprive him from filing a complaint under the Policy. The Sunrise and Landrush systems are only intended to give trade mark owners an opportunity to be the first in claiming a “.asia” domain name before the general opening of the “.asia” registry to the entire Internet user community. However, that does not mean that a domain name registration outside either period may not amount to a bad faith registration in relation to which a trade mark owner such as the Complainant is entitled to file a complaint. (See Net2Phone, Inc. v WorldCall International Ltd, WIPO Case No. D2002-0142; Audi AG, Automobili Lamborghini Holding S.p.A. Skoda Auto a.s., Volkswagen AGv JUS TIN Pty Ltd, WIPO Case No. D2015-0827). This argument is rejected.
The Panel accepts the Complainant’s submissions, which the Respondent does not dispute, that the Respondent would have been aware of the Complainant’s rights in WORLDPAY when it registered the disputed domain name.
In addition, the fact that the Respondent uses the disputed domain name in connection with a parking website with links to third party webpages is evidence that the Respondent is targeting the Complainant and exploiting the Complainant’s trade marks to obtain click-through revenues; a practice which previous UDRP panels have found to constitute bad faith. The Panel also notes that the Respondent offers to sell the disputed domain name to the Complainant for a sum in excess of its out of pocket expenses incurred in registering and maintaining the disputed domain which may amount to a further indication of registration in bad faith.
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <worldpay.asia> be transferred to the Complainant.
Date: March 6, 2017