WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Worldpay Limited v. Xhon Fung
Case No. D2017-0706
1. The Parties
The Complainant is Worldpay Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Xhon Fung of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <worldpay-uk.com> is registered with Todaynic.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2017. On April 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 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 April 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on May 31, 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 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. It also provides a gateway service allowing merchants to access payments online, security products and reporting services.
The Complainant’s e-commerce business operates in 146 countries in 116 currencies and offers 300 payment types across Europe, United States of America (“United States”), Asia-Pacific and emerging markets.
The Complainant is part of the Wordlpay Group, whose net revenue in 2015 was 981.7 million GBP. In 2015, the Complainant listed its shares for trading on the main London Stock Exchange and in December 2015 became a member of the FTSE100.
The Complainant is the owner, amongst others, of the following trademark registrations for WORLDPAY:
United Kingdom trademark registration Nos. UK00002230627 for WORLDPAY (word mark), registered on November 17, 2000 in class 9; and UK00003045695 for WORLDPAY (word mark), registered on July 4, 2014, in classes 9, 16, 35, 36, 37, 38, 42 and 45;
European Union trademark registration No. 010315646 for WORLDPAY (word mark), registered on March 9, 2012, in classes 9, 16, 35, 36, 37, 42 and 45;
International trademark registration Nos. 1227669 for WORLDPAY (figurative mark), registered on March 27, 2014, in classes 9, 18, 35, 36, 37, 38, 42 and 45, designating amongst others European Union and China; and 1229706 for WORLDPAY (word mark), registered on March 26, 2014, in classes 9, 16, 35, 36, 37, 38, 42 and 45, designating amongst others European Union and China;
United States trademark registration Nos. 2245537 for WORLDPAY (word mark), registered on May 18, 1999, in class 36; and 2414305 for WORLDPAY (word mark), registered on December 19, 2000, in class 9.
Hong Kong trademark registration Nos. 302216303 for WORLDPAY (word mark), filed on April 10, 2012, in classes 09,36,37,42 and 45; 302918377 for WORLDPAY (word mark), filed on March 10, 2014, in classes 16,35 and 38; and 302922002 for WORLDPAY (figurative mark), filed on March 12, 2014, in classes 9, 16, 35, 36, 37, 38, 42 and 45.
The Complainant operates its primary website at the domain name <worldpay.com>, registered on June 21, 1997.
The disputed domain name <worldpay-uk.com> was registered on March 27, 2017 and does not resolve to an active website.
5. Parties’ Contentions
The Complainant states that it first used the trademark WORLDPAY in 1993, when it launched an electronic cash purse system in the European Union. It first provided Internet payments under the trademark WORLDPAY in 1994 and has used the trademark in Asia since 2000.
The Complainant states that it has been in the payments industry for 30 years, that it processed 13.1 billion transactions in 2015 with a value of approximately 402 GBP billon supporting around 400,000 merchants globally. It also asserts that, in the first half of 2016, the Complainant processed further 7.2 billion transactions. Using its network and technology, the Complainant alleges to be able to process payments from geographies covering 99% of global GDP, across 146 countries and 126 currencies, with its customers able to accept more than 300 different payment types, and with solutions delivered by 5000 colleagues across 25 offices in 13 countries (including United Kingdom, China, India, Japan and Singapore).
The Complainant underlines that 40% of its gross profit is from online transactions, and that its e-commerce division focused on the online market has reported revenue and EBITDA CAGR (compound annual growth rate) of 15% and 17% respectively between the years of 2012 and 2014, and a further 14% in 2015. In 2014, the Complainant 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 August 2016, it expanded its operations to Australia after obtaining its regulatory license to process payments in said country.
The Complainant asserts that its trademark WORDLPAY has been well-known prior to the registration of the disputed domain name and submits press releases and media articles providing news about WORDLPAY services to support its allegations.
The Complainant informs the Panel that it 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. Its e-commerce division was also 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 B2B Awards of eGaming Review, the best-read publication in the gambling industry.
The Complainant also refers to earlier UDRP panel decisions which found that the trademark WORLDPAY is well-known internationally and associated with the Complainant.
The Complainant submits that the disputed domain name comprises the Complainant’s trademark WORLDPAY in its entirety in conjunction with the suffix “-uk” and the Top Level Domain “.com”. It points out that the term “uk” denotes a geographical territory in which the Complainant is resident and headquartered and in which it has substantial business and rights in the distinctive sign WORLDPAY. The Complainant concludes that the term “-uk” does not distinguish the disputed domain name from the Complainant’s trademark but instead would lead majority of Internet users to regard the disputed domain name as connected to or endorsed by a local sub-division of the brand owner.
The Complainant states that there is no relation between the Complainant and the Respondent, that the Complainant has not authorized the Respondent to use its trademark or register the disputed domain name and, to the best of the Complainant’s knowledge, the Respondent has not made any attempt to seek any such authorization from the Complainant.
The Complainant indicates that today there is no website at the disputed domain name but it has been and continues to be used in a sophisticated system of fraud to impersonate the Complainant’s branding. The Complainant also states that the use of the disputed domain name is neither legitimate noncommercial or fair, and such use is solely with the intent for commercial gain to misleadingly divert consumers and/or tarnish the Complainant’s trademarks.
The Complainant informs the Panel that the disputed domain name has been and continues to be used for the sending of emails which wrongfully and deliberately represent themselves as coming from the Complainant and submits copy of an email sent from an address (“[…]@worldpay-uk.com”) based on the disputed domain name.
The content of said email communication includes a WORLDPAY signature, the United Kingdom telephone number of the Complainant’s customer helpline in the United Kingdom, the Complainant’s registered trademarks, reproduction of the general look and feel of the Complainant’s branding, images taken from the Complainant’s website dedicated to United Kingdom and a footer containing corporate and regulatory details of another company in the WORLDPAY corporate group (Wordlpay (UK) Ltd) although the company information given is inaccurate.
In addition, the said email purports to include an invoice from the Complainant and includes a link to a “SharePoint! Cloud storage service for downloading a file which has been reported by Symantec as containing a Trojan for the purposes of phishing.” Said circumstance is of particular concern to the Complainant, given the nature and size of its business and the fact that it involves handling substantial volumes of sensitive financial data relating to its customers and third parties.
The Complainant states that the above-described use of the disputed domain name and the Complainant’s trademarks will inevitably disrupt the Complainant’s business and tarnish its reputation and goodwill with its customers and the general public.
The Complainant thus contends that the Respondent primarily registered the disputed domain name for the purpose of disrupting the business of the Complainant and its group and that, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that location or of a product or service on that location.
The Complainant concludes that, given the fraudulent activities undertaken using the disputed domain name, there can be no doubt that it has been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “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”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the 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 Complainant has established rights in the trademark WORLDPAY based on the trademark registrations cited in Section 4 above.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark as it encompasses the trademark in its entirety with the mere addition of a dash, the geographical indicator “uk” and the generic Top-Level Domain suffix “.com”, which are not sufficient to exclude confusing similarity.
Therefore, the Panel finds that the Complainant has met the requirement prescribed by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark WORLDPAY or the disputed domain name.
Moreover, there is no evidence that the Respondent might have been commonly known by the disputed domain name or that it might have used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use before receiving any notice of the dispute.
Furthermore, the Complainant has submitted evidence that the disputed domain name has been used to send email communications which clearly impersonated the Complainant, by misappropriating the Complainant’s trademarks and images, and provided a purported invoice as well as a link which enabled to download a file containing a Trojan used for the purposes of phishing. As stated by several prior UDRP panels and recognized also in paragraph 2.13.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the use of a domain name for illegal activity, including phishing and distributing malware impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In light of the prior registration and extensive use of the Complainant’s trademark WORLDPAY in several jurisdictions of the world, including in China, where the Respondent is based, the Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name.
Moreover, the Respondent’s actual knowledge of the trademark WORLDPAY at the time of registration is obvious by the Respondent’s impersonation of the Complainant in its fraudulent email scheme and by the circumstance that the disputed domain name is constituted by the combination of the trademark with the suffix “-uk”, which clearly refers to United Kingdom, where the Complainant is located.
As to the use of the disputed domain name, it does not resolve to an active website at the time of the drafting of this Decision. However, as mentioned above, the Complainant has submitted copy of an email communication sent from an email address based on the disputed domain name, which misappropriated the Complainant’s trademarks and images, providing a link to download a purported invoice and enabling to download a file which was classified by Symantec as a Trojan for the purpose of phishing.
As held in paragraph 3.4 of WIPO Overview 3.0, “the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (…) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”.
Based on the evidence submitted by the Complainant, which have not been challenged by the Respondent, the Panel finds that, in all likelihood, the Respondent registered the disputed domain name with the Complainant’s trademark in mind and used it in order to obtain sensitive or confidential information from the recipients of its email communications by misleading them into believing that its messages were sent by the Complainant or one of its affiliated companies. Therefore, as held amongst others in Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213 (<arlarfoods.com>), the Panel concludes that the Respondent primarily registered and used the disputed domain name to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark with the intent to unlawfully profit therefrom.
In light of the above, the Panel finds that the Complainant has proven that the Respondent registered and is using the disputed domain name in bad faith.
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 <worldpay-uk.com> be transferred to the Complainant.
Date: June 14, 2017