WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Worldpay Limited v. Dharshinee Naidu
Case No. D2017-1067
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 Dharshinee Naidu of New York, New York, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <worldpaybank.net> and <worldpaybank.org> are registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2017. On June 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint together with the amendment to 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 June 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2017. The Center received an email communication from a third party on June 8, 2017. The Respondent did not submit any response. Accordingly, on June 29, 2017, the Center notified the Parties that the Center will proceed to the appointment of the panel.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on July 10, 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. The Complainant operates in 146 countries in 116 currencies as part of the Worldpay Group, the net revenue of which was GBP 981.7 million in 2015.
The Complainant is the owner, amongst others, of several United States trademarks WORLDPAY (No. 2245537 and No. 2414305) with registrations dating back to May 18, 1999 and an International Trade Mark WORLDPAY (No. 1139206; registered on April 5, 2012).
The disputed domain names were registered on October 21, 2016. They resolve to the website “www.wn.com” which displays the Complainant’s logo and purports to offer services of the Complainant.
5. Parties’ Contentions
In summary, the Complainant contends the following:
The dominant element of each of the disputed domain names is “worldpaybank”, comprising the Complainant’s trademark WORLDPAY in its entirety together with the word “bank”. The additional word “bank” does not distinguish the disputed domain names from the Complainant’s trademark. On the contrary, it merely describes the business sector in which the Complainant operates.
There is no relation between the Complainant and the Respondent. The Complainant has not authorized the Respondent to use its trademark or register the disputed domain names. Furthermore, it is clear from the Respondent’s website, to which the disputed domain names are directed, that the Respondent is not and never has been known by the name “Worldpay” or “Worldpay Bank”. Neither does the content of the Respondent’s website constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. On the contrary, the website essentially reproduces sections of the Complainant’s own website and includes the Complainant’s trademark and logo.
Use of the disputed domain names will clearly cause confusion for customers by deceiving them into thinking that the Respondent’s website is operated by or associated with the Complainant, and will disrupt the Complainant’s business. The Complainant believes that the Respondent is using the disputed domain names to direct traffic towards its main website “www.wn.com” and/or as part of its search engine optimization (“SEO”) efforts for that main website, which it then uses to make commercial gain, for example through advertising revenue.
It is also noted that there have been several other UDRP complaints against the Respondent and others connected with the website “www.wn.com” over the years, in which UDRP panels found that the related domain names were registered and used in bad faith in similar circumstances.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names consist of the Complainant’s trademark WORLDPAY and the term “bank”, added by the generic Top-Level Domains (“gTLDs”) “.net” and “.org”, respectively. According to the consensus view of UDRP panels, the addition of a descriptive term such as “bank” to a trademark in a domain name would not prevent a finding of confusing similarity under the first element where the relevant trademark is recognizable within the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The confusing similarity is all the more prevalent here since the term “bank” is directly related to the Complainant’s business.
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The website to which the disputed domain names resolve displays the Complainant’s logo and creates the appearance of being a website connected with the Complainant.
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain names.
Based on the Complainant’s credible contentions and the Panel’s findings regarding registration and use in bad faith, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is well established that the use of a domain name to display information aimed to create confusion with the Complainant is considered as bad faith (see DFDS A/S v. Milena YUrevna Valenskaya, WIPO Case No. D2012-0840; Texts From Last Night, Inc. v. WhoIs Privacy Services Pty Ltd / Wang Shaopeng, WIPO Case No. D2011-1266; Bluewater Rubber & Gasket Co v. Mrs Sian Jones / Easyspace Privacy, WIPO Case No. D2010-2112). In consideration of the evidence submitted by the Complainant, this Panel is satisfied that the Respondent is attempting to create the impression that its website is connected to the Complainant. In the circumstances of the present case, the reproduction of another’s website in the business sector of online payments constitutes bad faith registration and use in the sense of paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has established the Respondent’s bad faith registration and use 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 names <worldpaybank.net> and <worldpaybank.org> be transferred to the Complainant.
Date: July 17, 2017