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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RocketGate PR, LLC. v. Gabriel Aguilera, Fastdominios

Case No. D2019-1826

1. The Parties

The Complainant is RocketGate PR, LLC., United States of America, represented by Hatton, Petrie & Stackler APC, United States of America.

The Respondent is Gabriel Aguilera, Fastdominios, Paraguay.

2. The Domain Name and Registrar

The disputed domain name <rocketpy.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2019. On July 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2019, 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 July 31, 2019 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 August 1, 2019.

The Center verified that the Complaint together with the amended 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 August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2019.

The Center appointed Adam Taylor as the sole panelist in this matter on September 4, 2019. 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.

On September 20, 2019, the Panel issued Administrative Order No. 1 inviting the Complainant to file a further statement addressing certain matters (see section 6 below) and giving the Respondent an opportunity to comment on any such statement. The Complainant submitted a further statement in response on September 25, 2019. The Respondent did not submit any further statement.

4. Factual Background

Since 2007, the Complainant has provided electronic payment processing services under the name “RocketGate”. The Complainant currently processes over USD one billion worth of payments annually.

In 2014, the Complainant launched an online electronic wallet branded “RocketPay”, which facilitated the Complainant’s offering of payment services to merchants worldwide.

The Complainant owns a number of registered trade marks for “RocketPay” including United States trade mark no. 4887756, filed October 27, 2014, registered January 19, 2016, in international class 36.

The disputed domain name was registered on July 22, 2017.There is no evidence that it has ever been used for an active website.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions:

The Complainant’s registered trade mark satisfies the threshold requirement of establishing trade mark rights.

The disputed domain name is confusingly similar to the Complainant’s trade mark as it simply omits one letter.

The lacks rights or legitimate interests in the disputed domain name. And the disputed domain name has been registered and is being used in bad faith.

The disputed domain name has not been used in the period of over two years following registration.

The Respondent’s holding of the disputed domain name is unfair as it falsely suggests affiliation with the Complainant.

This is a case of typosquatting.

The disputed domain name “phonetically incorporates the Complainant’s mark verbatim”.

It is nearly certain that the Respondent knew of the Complainant’s mark before registering the disputed domain name. The Complainant’s trade mark is widely known in the relevant Canadian service community. The Respondent may be a competitor of the Complainant.

The Complainant does business worldwide through its RocketPay portal. A significant part of its business comes from persons who do not speak English.

In any case, ignorance of the Respondent is no excuse. Failure to conduct even a cursory of the Internet can support a finding of bad faith. Prior panels have applied the concept of constructive notice.

Furthermore, this is a case of passive holding in bad faith. There is no plausible good faith use to which the disputed domain name can be put in light of the Complainant’s trade mark and its extensive use of a similar domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

C. Complainant’s further statement

The following is a summary of the Complainant’s further statement made in response to Procedural Order No. 1.

The Complainant has registered and used “RocketPay” as a trade mark since 2014, whereas the Respondent only registered the disputed domain name in 2017. The Respondent failed to respond to the Complaint.

The Complainant has no problem with the Respondent’s use of <johnnyrockets.com.py>. The evidence suggests that the Respondent mistakenly registered the disputed domain name instead of this domain name.

The website at “www.johnnyrockets.com.py” does not amount to rights or legitimate interests in the disputed domain name. Perhaps the Respondent’s registration of the disputed domain name was “innocent error” rather than typosquatting - but if so, one would have expected the Respondent to have said so.

If the Respondent intended to register the disputed domain name, it must have found out about the Complainant. Typing the disputed domain name into Google returns an error as well as a suggestion to “Search Google for rocketpay.”

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established registered trade mark rights in the term “RocketPay”.

The disputed domain name is identical to the Complainant’s trade mark except for omission of the letter “a”.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognisable within the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.

As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant claims that the disputed domain name is only explicable as a “typosquatting” variation of its “RocketPay” trade mark by omitting the “a” so that “pay” became “py”.

Given the possibility that “py” in the disputed domain name was connected with the “.py” Country Code Top-Level Domain for Paraguay where the Respondent is located, the Panel decided to carry out a Google search against the Respondent “Fastdominios” to see if there was any obvious and legitimate explanation for the Respondent’s selection of the disputed domain name. See section 4.8 of WIPO Overview 3.0 whereby panels may undertake limited factual research into matters of public record if they consider such information useful in assessing the merits of the case and reaching a decision.

On the first page of the Google search, the Panel found a website at “www.johnnyrockets.com.py”. This site related to a burger restaurant in Asunción, Paraguay called “Johnny Rockets”. The footer stated that the site had been “developed by FastDominios.com”, which suggests that Respondent supplied web services to the restaurant.

The Panel invited both parties to comment on this website. The Complainant’s response is set out above. The Respondent did not reply.

So the Respondent has not taken the opportunity to respond either to the Complaint, or to the Panel’s Procedural Order No.1, to put forward evidence, or even assert, that its registration of the disputed domain name was in some way connected with its client’s restaurant business or (e.g., if it alone is the registrant) was otherwise legitimate.

In view of the silence from the Respondent, and mindful of the fact that the financial services industry is especially prone to phishing and other fraud, the Panel concludes that, on the balance of the probabilities, the disputed domain name was registered with reference to the Complainant and that it constitutes a passive holding in bad faith. See section 3.3 of the WIPO Overview 3.0.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

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, <rocketpy.com>, be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: October 15, 2019

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