WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VeriFone, Inc. v. Yitao, Apex Consulting
Case No. D2020-1185
1. The Parties
1.1 The Complainant is VeriFone, Inc., United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
1.2 The Respondent is Yitao, Apex Consulting, China.
2. The Domain Name and Registrar
2.1 The disputed domain name <verifone.info> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2020. At the time the Complaint was filed, publicly available Whois details for the Domain Name did not identify any underlying registrant. On May 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.
3.2 On May 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name. In that response “Doublefist Limited” was identified as the registrant, but the contact details given were confused and inconsistent in that although they appeared to identify an address in Jungsu Province, China, this was stated to be in Wisconsin in the United States. The Registrar also stated that it could not place the Domain Name on lock because the Domain Name had expired and was in its redemption period.
3.3 As a consequence, the Complainant took steps to restore the Domain Name on May 20, 2020. Subsequently the Registrar provided the Center with different registrant and contact information for the Domain Name, in the form of the Respondent identified above. But again the address was confused comprising an address in Foshan City, Guangdong Province, China but also stating that this was in Hong Kong.
3.4 On May 21, 2020, the Center provided the updated registrant and contact information disclosed by the Registrar, to the Complainant and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 26, 2020.
3.5 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”).
3.6 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2020.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 25, 2020. 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
4.1 The Complainant is a multinational corporation with its headquarters in the United States. It provides electronic payment equipment and services, which it has provided under the “Verifone” name since 1981. The Complainant now operates in 150 countries and enables over 10 billion secure transactions a year. Its net revenues in the fiscal year ended October 21, 2017 were USD 1.87 billion. The term “Verifone” is a made up name that derives from the words “verification” and “phone”.
4.2 The Complainant is the owner of various trade marks around the world that comprise the term “Verifone”. They include the following:
(i) United States registered trade mark no 1229416 for VERIFONE as a typed drawing mark, registered on March 8, 1983 in class 9;
(ii) Canadian registered trade mark no TMA373263 for VERIFONE as a word mark, registered on September 14, 1990 in class 9; and
(iii) European Union registered trade mark no 006226336 for VERIFONE as a word mark, registered on April 21, 2009 in classes 9, 35, 36, 37, 40, 41, and 42.
4.3 The Complainant also promotes it business and services at a website operating from the domain name <verifone.com> and estimates that it received over 212,000 individual visits in the six-month period from August 2019 to January 2020.
4.4 The Domain Name was first registered on March 20, 2019.
4.5 On December 6, 2019 the Complainant’s representatives sent a cease and desist letter by email to the registrant of the Domain Name. This elicited an email response from someone identifying themselves as “Zhao” and which contained the statement:
“Sorry we violated your client's trademark rights, and I understand that you said, so this domain could be sold to your client at a low price.
Only 2890 USD.”
4.6 The Respondent (i.e. “Apex Consulting”) is also the listed registrant of the domain names <alexanderwang.in>, <alliannz.co.in> <ally.in>, <bankofamerica.in>, and <bentlymotors.in>.
5. Parties’ Contentions
5.1 The Complainant refers to is business and marks. It contends that save for the generic Top-Level Domain (“gTLD”) “.info”, the Domain Name is identical to its registered marks, and that it has thereby satisfied paragraph 4(a)(i) of the Policy.
5.2 The Complainant contends that the Domain Name has been used to display a webpage that features third-party links for “card payment processing”, “pos systems” and “payment systems” and from this presumes that the Respondent receives pay per click fees. This is said not to constitute a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy. The Complainant evidences this by way of a copy of a webpage that does appear to show such links. But upon examination this appears to take the form of a parking page generated by the Registrar and which displays the following text:
“This domain has expired. If you’re the owner, you can renew it. If you’re not the owner, search for domain and then build your website for free on Dynadot.com.”
5.3 The Complainant also refers to the offer to sell the Domain Name to the Complainant in an email. It claims that the term “verifone” is not a word in common use and contends that, as a consequence, this offer for sale provides further evidence of a lack of rights or legitimate interests.
5.4 The Complainant claims that the reputation of its marks is such the Respondent must have been aware of the Complainant’s business and marks at the time the Domain Name was registered. It also maintains that the use made of the Domain Name falls within the scope of paragraph 4(b)(iv) of the Policy. The Complainant further contends that the Respondent’s offer to sell the Domain Name demonstrates that the Domain Name was registered in order to sell, rent, or otherwise transfer the Domain Name for valuable consideration in excess of their out-of-pocket expenses within the scope of paragraph 4(b)(i) of the Policy. In this respect the Complainant also relies upon the various other domain names registered by the Respondent, and listed in the Factual Background section of this decision.
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Complainant has registered trade mark rights in the term “verifone” and that the Domain Name comprised only that term in combination with the “.info” gTLD. It follows that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights and the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 The Panel accepts the Complainant’s contention that the term “verifone” is a made up term and has no descriptive meaning in English. There is also no evidence of it having any meaning in any other language.
6.6 The Panel also accepts the Complainant’s contention that the use of the Domain Name in order to display pay-per-click links seeking to take advantage of the reputation of the Complainant’s mark is not a bona fide offering of goods or services and is evidence that no such right or interest exists; see section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.7 In this case the relevant links have been automatically displayed by the Registrar, and there is no evidence (notwithstanding the Complainant’s contention to the contrary) that the Respondent has benefited from this. However, there have been cases where UDRP panels have held that where a registrant permits a domain name to be used in this fashion for someone’s benefit a significant period of time, the registrant cannot disclaim responsibility for that use.
6.8 The complication is that the use here appears to be truly incidental in that the page was generated and displayed automatically for a short period of time by the registrar when the Domain Name had expired. Given this, the Panel does not consider the display of these to be significant when it comes to the issue of rights and legitimate interest.
6.9 However, the issue can be approached in a far more straight forward manner. For the reasons described in the context of bad faith below, the Panel is persuaded that the Domain Name was registered and held with a view to sale to the Complainant because of its associations with the Complainant’s trade mark, rather than any descriptive meaning of the Domain Name. There is no right or legitimate interest in holding a Domain Name for such a purpose and it is positive evidence that none exists.
6.10 On that basis the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 There appears to have been a transfer of the Domain Name in this case after the Complaint was filed. The Registrar claims that is because the Domain Name had expired and therefore could not be placed on hold. The Panel does not understand that explanation. At the time of initial expiry, the Domain Name appears to have been registered in the name of “Doublefist Limited”. The Complainant then took steps to restore the Domain Name. This would have been done in accordance with clause 220.127.116.11 of the Registrar Accreditation Agreement, which reads as follows:
“In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant. If the complainant renews or restores the name, the name will be placed in Registrar HOLD and Registrar LOCK status, the WHOIS contact information for the registrant will be removed, and the WHOIS entry will indicate that the name is subject to dispute. If the complaint is terminated, or the UDRP dispute finds against the complainant, the name will be deleted within 45 days. The registrant retains the right under the existing redemption grace period provisions to recover the name at any time during the Redemption Grace Period, and retains the right to renew the name before it is deleted.”
6.12 It follows that the Domain Name was only placed on hold as a consequence of the steps taken by the Complainant. But the Panel fails to understand how and why after the domain name had expired the registrant had any practical opportunity to change the registration details. And the fact that the Registrar allowed this to happen is troubling since it appears thereby to have contributed to possible cyberflight contrary to paragraph 8(a) of the UDRP.
6.13 However, ultimately the Panel does not think that this matters. This is because it does not believe that the change in details from one geographical incoherent address incorporating an address in mainland China, to another, actually reflected a genuine transfer of the Domain Name to a new unconnected entity. As well as the fact that the addresses were presented in a similarly incoherent manner, there was also the odd feature that the Chinese address in each case also included the words “China (Arbitration documents to this address)”. Further, (although less significant) the contact telephone number provided in each case appeared to have been issued from the same Chinese mobile supplier.
6.14 Accordingly, in the absence of any evidence to the contrary, the Panel concludes that all relevant time the Domain Name has been controlled by the same person or entity.
6.15 The Panel is also satisfied that at the time that the Domain Name was initially registered (and also at the time any transfer took place) the Respondent was aware of the Complainant and its marks. In this respect, the Panel accepts that the Complainant’s mark was well known at the time of registration. There is also the fact that the term “verifone” is made up term and it is therefore inherently improbable that this term was independently chosen for the Domain Name. There is also the fact that at the time of initial registration of the Domain Name, the Complainant had already registered and had for some time been using the Domain Name <verifone.com>. It is inherently improbably that any registrant of the Domain Name would not have made enquires as to how the equivalent “.com” domain name was being used.
6.16 Further, the Panel accepts that the Domain Name was registered primarily with the intention of sale to the Complainant for more than the Respondent’s out of pocket costs. This is evidenced by (a) the email sent to the Respondent on December 11, 2019 offering the Domain Name for sale and (b) Apex Consulting being listed as the registrant of other domain names that appear to relate to the trade marks of third parties, and where there is no obvious legitimate explanation for those registrations. Accordingly, the Panel accepts that there is evidence of bad faith registration and use falling within the scope of paragraph 4(b)(i) of the Policy.
6.17 The Panel therefore finds that the Domain Name has been registered and used in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <verifone.info> be transferred to the Complainant.
Matthew S. Harris
Date: July 8, 2020