WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MIH PayU B.V. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nitin Kumar
Case No. D2017-0841
1. The Parties
The Complainant is MIH PayU B.V. of Hoofddorp, Netherlands, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America / Nitin Kumar of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <payuhub.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2017. On April 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 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 8, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 9, 2017.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred 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 of the Complaint, and the proceedings commenced on May 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 16, 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 an online payment service provider with a presence in 16 markets and four continents across the world. The Complainant employs more than 1,800 payment specialists working with over 160,000 merchants and millions of buyers worldwide.
The Complainant owns a number of trademark registrations, including European Trademark Registration No. 010521128 for the trademark PAYU. This trademark was registered on September 15, 2012.
The Complainant also owns the domain name <payu.com>, which was registered on July 3, 2002.
The disputed domain name <payuhub.com> was registered on December 23, 2016. The disputed domain name resolved to a website requesting financial information from users.
5. Parties' Contentions
Identical or Confusingly Similar
The Respondent has registered the disputed domain name <payuhub.com>, which is identical to the Complainant's registered trademark, except for the addition of the word "hub". The Complainant submits that "hub" is a generic word that does not negate the likelihood of confusion.
Rights or Legitimate Interest
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name, <payuhub.com>. The Complainant submits that the Respondent has not been authorized to use the Complainant's trademarks in any manner. The Respondent is not commonly known by the disputed domain name. The Complainant further submits that the Respondent is not making a bona fide use of the disputed domain name, rather the Respondent's purpose is to fool unsuspecting visitors into divulging their personal information.
Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent registered and is deliberately using a confusingly similar domain name to the Complainant in an attempt to usurp the goodwill and reputation of the Complainant; (ii) the sole purpose of the Respondent's website is apparently to attract unsuspecting visitors to its website in order to phish personal financial information; (iii) the Respondent has attempted to conceal its identity and; (iv) the Respondent has not responded to the Complainant's attempts to resolve this dispute prior to the proceeding.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark 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 Panel finds that the Complainant does own trademark rights in the mark PAYU by virtue of European Trademark Registration No. 010521128.
The Panel further finds that the disputed domain name <payuhub.com> is confusingly similar to the Complainant's registered trademark PAYU. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0") (section 1.7), "[I]n cases where a domain name incorporates the entirety of a trademark or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing." In this case, the disputed domain name is identical to the Complainant's registered trademark with the addition of the word "hub". The addition of this word does not serve to distinguish the disputed domain name from the registered trademark, in that the additional word is clearly a secondary element, which is preceded by the distinctive PAYU trademark itself.
Therefore, the Panel finds that the Complainant has satisfied the required element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel is further convinced that, on the basis of the Complainants' undisputed contentions, the Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has the Respondent been commonly known by the disputed domain name, nor can it be found that the Respondent made a legitimate noncommercial or fair use of the disputed domain name.
The Panel accepts the Complainant's submission that it has been conducting business using the PAYU trademark since 2007 and has become widely-known. The Panel also accepts the assertion that the Respondent likely knew of the Complainant's business and was aware of the Complainant's trademark rights in the mark PAYU when the Respondent registered the disputed domain name in 2016.
Accordingly, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. According to the WIPO Overview 3.0 (section 2.1), "[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element." The Panel notes that the Respondent did not file any response to the Complaint and accordingly did not demonstrate any rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has also satisfied the second element of the Policy, set out in paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Upon review of the evidence filed in the Complaint, and taking into consideration that the Respondent did not file any response contesting the facts contained therein, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith.
The Panel finds that the Respondent was likely aware of the Complainant's trademark rights when it registered a confusingly similar domain name and used it to lure unsuspecting visitors to its website in an attempt to phish personal information. The WIPO Overview 3.0 (section 3.1.4) states that, "[T]he use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith." In this case, the fraudulent nature of the Respondent's activity constitutes a transparent attempt to exploit the Complainant's goodwill and reputation, and clearly supports the finding of bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third and final required element under paragraph 4(a)(iii) 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, <payuhub.com>, be transferred to the Complainant.
Christopher J. Pibus
Date: June 30, 2017