WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Worldpay Limited, Worldpay (UK) Limited, Worldpay Group PLC v. Domain Admin, Privacy Protect, LLC / Instaworld pay group
Case No. D2018-0007
1. The Parties
The Complainants are Worldpay Limited, Worldpay (UK) Limited and Worldpay Group PLC of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Kemp Little LLP, UK.
The Respondent is Instaworld pay group of Douglas, Isle of Man (using Domain Admin, Privacy Protect, LLC of Burlington, Massachusetts, United States of America (“USA”) as a privacy shield).
2. The Domain Name and Registrar
The disputed domain name <instaworldpay.info> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2018, naming the Respondent as Whoisguard, Inc. and as Domain Admin, Privacy Protect LLC in the heading and body of the Complaint respectively.
The Center sent its request for registrar verification to the Registrar on January 4, 2018. The Registrar replied on January 5, 2018, confirming that the Domain Name was registered with it but identifying the registrant as Instaworld pay group and providing the full contact details held on its WhoIs database. The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied; that the Domain Name was registered on June 8, 2017, and would expire on June 8, 2018; that it would remain locked during this proceeding; and that the Respondent was informed of the registration agreement in English.
By email of June 9, 2018, the Center drew the Complainant’s attention to the registrant and contact information disclosed by the Registrar, and invited the Complainant to amend the Complaint. The Complainant filed an amended Complaint on January 11, 2018, naming the Respondent as Instaworld pay group.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint and the proceedings commenced on January 12, 2018. In accordance with paragraph 5 of the Rules, the due date for Response was February 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2018.
The Center appointed Jonathan Turner as the sole panelist in this matter on March 6, 2018. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the case file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
Subsequent to the appointment of the Panel, the Respondent sent emails to the Center on March 8 and 9, 2018, claiming that it was not using and would not use the Domain Name for any business activity but only for an internal group purpose.
4. Factual Background
The Complainants have provided payment processing services under the mark WORLDPAY since 1993, including Internet payments since 1994. The Complainants now operate in 146 countries using 116 currencies. In 2016 the Complainants processed about 15 billion transactions with a value of about GBP 451 billion, supporting around 400,000 merchants and gaining a net revenue for the Complainants of over GBP 1.1 billion. Around 37% of the Complainants’ revenue is from mobile and online transactions. In the first nine months of 2017 the Complainants’ website at “www.worldpay.com” received around 12 million page views from over 2.5 million users.
The First Complainant has registered the mark WORLDPAY in a number of jurisdictions, including as a word mark in the European Union with effect from March 9, 2012 under No. EUTM 010315646 and in the UK with effect from March 7, 2014 under No. UK 00003045695.
The Domain Name resolves to a website purporting to promote a service “trusted by millions” enabling customers to “shop securely, transfer money anywhere in the world, access your funds instantly”. This website is similar to a website previously located at the domain name <instaworldpay.com> until that domain name was transferred to the First Complainant pursuant to the panel’s decision under the UDRP in Worldpay Limited v. Domain Administrator, Paysafe Group PLC, WIPO Case No. D2017-1064. Both websites appear to have been copied from a genuine website operated by Paysafe Group plc and the domain name <instaworldpay.com> was registered in the name of Paysafe Group PLC without its permission. The Domain name in dispute in this case was registered shortly after the filing of the Complaint in WIPO Case No. D2017-1064.
5. Parties’ Contentions
The Complainants contend that they have registered and unregistered rights in the mark WORLDPAY. The Complainants further submit that the Domain Name is confusingly similar to this mark, from which it differs only by the prefix “insta” and the generic top level domain (“gTLD”) suffix “.info”. The Complainants argue that “insta” is a non-distinctive abbreviation of the word “instant”.
The Complainants maintain that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainants confirm that they have not licensed or dealt with the Respondent and suggest that the Respondent is the same person or entity that created the <instaworldpay.com> domain name. They add that in any case the Respondent has not been trading under the Domain Name for any length of time, that it does not appear to be using the Domain Name for any bona fide business or offering of goods or services, that there is no evidence that the Respondent has consistently or commonly used or become known by the Domain Name, and that the Respondent is not making legitimate noncommercial or fair use of the Domain Name.
The Complainants allege that the Respondent registered and is using the Domain Name in bad faith. They submit that the Respondent is probably the same as the registrant of <instaworldpay.com> and that it registered the Domain Name in order to continue its operation of a copycat or fraudulent website. The Complainants point out that in any case, the Respondent must have known of their use of the mark WORLDPAY and registered the Domain Name in order to disrupt their business. The Complainants add that the Respondent’s concealment of its identity as the registrant of the Domain Name is further evidence of bad faith.
As stated above, the Respondent did not reply to the Complainant’s contentions, except to claim after the Panel was appointed that it was not using and would not use the Domain Name for any business activity, but only for an internal group purpose.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainants must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which they have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a substantive response. This includes the acceptance of plausible evidence of the Complainants which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainants have registered rights in the mark WORLDPAY by virtue of the First Complainant’s registrations and unregistered rights as a result of their extensive use of the mark around the world.
The Panel further finds that the Domain Name is confusingly similar to this mark, from which it differs only in the prefix “insta” and the gTLD suffix, “.info”. Many Internet users would understand “insta” as an abbreviation of “instant” and assume that the Domain Name locates a website of the Complainants through which instant payment services are provided. Indeed the Respondent’s website itself suggests that the Respondent chose the prefix “insta” as an abbreviation of “instant”.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Respondent has itself stated that it is not using the Domain Name for any offering of goods or services and intends to use the Domain Name only for an internal purpose, albeit that this is belied by the website to which it is directed. At all events, it is clear that the Respondent is not using the Domain Name for any bona fide offering of goods or services.
The Panel is also satisfied on the evidence that the Respondent is not commonly known by the Domain Name or any corresponding name and that it is not making any legitimate noncommercial or fair use of the Domain Name.
The Panel finds on the evidence that there is no basis on which the Respondent can claim any rights or legitimate interests in the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Respondent’s website falsely claims on its home page that the Respondent is an established business enabling its customers to shop securely, transfer money anywhere in the world and access their funds instantly, and that it is trusted by millions.
Another page headed “About InstaWorldPay” adds further false claims such as “For over a decade, InstaWorldPay has provided businesses and individuals with a fast, simple and secure way to move money online. As one of the world’s largest independent money transfer businesses, we process billions of dollars’ worth of transactions each year” and “Millions of customers around the world have used InstaWorldPay to pay and get paid on thousands of sites and to send money around the world. With a host of online and offline withdrawal and spending options; they also enjoy instant access to their cash at millions of point-of-sale, ATM and online locations.”
Moreover the Respondent has not disputed the allegations made by the Complainant and has instead made the plainly untrue claim that it is using and intending to use the Domain Name only for internal purposes.
In the circumstances, the Panel finds that the Respondent is using the Domain Name intentionally to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of that website, for some form of commercial gain.
In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith. There is no contrary evidence displacing this presumption. The Panel accordingly finds that the Domain Name was registered and is being used in bad faith.
All three requirements of the UDRP are satisfied and it is appropriate to order that the Domain Name be transferred to the First Complainant, being the owner of the registered marks used by the Complainants’ group.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <instaworldpay.info> be transferred to the First Complainant, Worldpay Limited.
Date: March 20, 2018