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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Payoneer, Inc. v. Quinv S.A., Thibault Korchia

Case No. D2019-2001

1. The Parties

The Complainant is Payoneer, Inc., United States of America, represented by SafeNames Ltd., United Kingdom.

The Respondent is Quinv S.A., Thibault Korchia, Luxembourg.

2. The Domain Name and Registrar

The disputed domain name <payoneer.net> (the “Domain Name”) is registered with EuroDNS S.A. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2019. On August 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 2019, 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 August 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2019.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 19, 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.

4. Factual Background

The Complainant is a financial services company founded in the United States in 2005. The Complainant specializes in providing online money transfer and digital payment services, particularly facilitating multinational B2B payments. The Complainant uses its official website, “www.payoneer.com”, to give information about their services, and online users can sign up to use the Complainant’s services. The Complainant has grown substantially since 2005. The Complainant processes cross-border payments in over 200 countries, deals with over 150 local currencies, currently has over four million users and supports over 35 languages. The Complainant has 14 established physical locations around the world.

The Complainant has acquired consumer goodwill by virtue of its 14 years using the PAYONEER brand. The Complainant has numerous trademark registrations for PAYONEER, such as the United States of America (“US”)Trademark registrations nos. 3380029 and 3380030, both filed on September 19, 2006, and registered on February 12, 2008, and with a first use in commerce as of June 13, 2005 and International WIPO registration no. 1303506, registered on May 9, 2016. The Complainant has also registered domain names containing its PAYONEER mark, including <payoneer.com> in 2005. The Complainant has established a presence under the brand PAYONEER on social media such as Facebook, Twitter, LinkedIn and YouTube.

According to the Registrar, the Respondent registered the Domain Name on July 5, 2007. At the time of filing the Complaint and at the time of drafting the Decision, the Domain Name resolved to a pay-per-click webpage not related to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is identical to the Complainant’s trademark.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use the PAYONEER mark. To the best of the Complainant’s knowledge, the Respondent does not have any trademark rights to the term “payoneer”. The Respondent is not known or identified by the name “payoneer,” nor is it affiliated or connected in any way with the Complainant’s business. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. At the time of submission of the Complaint, the Domain Name resolved to a pay-per-click webpage containing links such as ‘Payoneer Mastercard’, ‘Payoneer Account’, ‘Prepaid Mastercard’ and ‘Paypal Prepaid Mastercard’, which direct users to competitive websites. There is no bona fide offering of goods or services attached to the Domain Name.

The Complainant believes that the Respondent knew of the Complainant when the Respondent registered the Domain Name, as the filing date of the Complainant’s US trademarks predates the registration of the Domain Name by almost a year. The Respondent has registered many other “payoneer” domain names, including: <payoneer.eu>, <payoneer.it>, <payoneer.de> and <payoneer.nl>. Given the highly distinctive nature of the “payoneer” term, it is inconceivable that the Respondent registered these domain names for any reason other than to target the Complainant. Since their registrations, the Respondent has used the Domain Name, and other “payoneer” domain names, in a manner targeting the Complainant. The Respondent has ignored the cease and desist letter sent by the Complainant. The Respondent has engaged in a pattern of bad faith conduct. The Respondent is currently listed as the registrant of at least 4,411 domain names, many of which containing the registered trademark of a third-party. The use of pay-per-click links is further evidence of bad faith. It constitutes a clear attempt to generate a commercial gain, particularly by misleading online users with the Domain Name, and subsequently redirecting these online users to third-party websites.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark PAYONEER.

The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain Name (“gTLD”) “.net”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired any rights. The Domain Name resolves to a pay-per-click webpage containing links to competitors of the Complainant. This is not bona fide use of the Domain Name.

In addition, the Panel notes the nature of the Domain Name being identical to the Complainant’s trademark. The Panel finds that the Domain Name carriers a high risk of implied affiliation.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel finds it likely that the Respondent knew of the Complainant when it registered the Domain Name, even if it took place as long back as in 2007. The filing date and the first use in commerce of the Complainant’s US trademarks predates the registration of the Domain Name. The Domain Name is identical to the Complainant’s trademark. The Complainant has operated in its website at “www.payoneer.com”: since 2005. The Respondent has registered many other “payoneer” domain names, including: <payoneer.eu>, <payoneer.it>, <payoneer.de> and <payoneer.nl>. The Respondent has used the domain names to link to competitors of the Complainant, which shows bad faith.

The Respondent’s lack of response in this case, does not automatically result in a decision in favor of the Complainant. However, the fact that the Respondent has offered no explanation to the registration of the Domain Name, supports the conclusion that the Respondent has engaged in a bad faith conduct. The use of pay-per-click links is further evidence of bad faith.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Name, <payoneer.net> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: October 3, 2019

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