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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ORIX Kabushiki Kaisha v. Proxy Protection LLC / Imdad Hussain, Technifist Limited

Case No. D2021-2631

1. The Parties

The Complainant is ORIX Kabushiki Kaisha, Japan, represented by SAEGUSA & Partners, Japan.

The Respondent is Proxy Protection LLC, United States of America (“United States”) / Imdad Hussain, Technifist Limited, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <orixpay.com> is registered with DreamHost, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2021, 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 August 25, 2021, 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 amendment to the Complaint on August 25, 2021.

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 August 25, 2021. On September 7, 2021, the Complainant filed a Supplemental Submission. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. On August 25, 2021, the Respondent sent an email communication to the Center, but did not submit a formal Response. Accordingly, the Center notified the Respondent’s default on October 6, 2021. Notwithstanding Respondent’s default, the Panel extended to the Respondent an opportunity until December 11, 2021, to submit comments or evidence related to the Complainant’s Supplement Submission. The Respondent did not respond to the Complainant’s Supplemental Submission.

The Center appointed William F. Hamilton as the sole panelist in this matter on November 18, 2021. 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. Supplemental Submission

The Supplemental Submission attaches an August 26, 2021, email from the Respondent to the Complainant offering to sell the disputed domain name. The Panel finds that the Supplement Submission should be accepted and considered because (i) the information contained in the Supplemental Submission is relevant to this proceeding, (ii) the Complainant was not dilatory in filing the Supplemental Submission because the August 26, 2021, email was sent to the Complainant after the filing of the Complaint, and (iii) the Respondent will not be procedurally prejudiced by the Panel’s consideration of the Supplemental Submission because the Respondent has been afforded an opportunity to respond to the Supplemental Submission.

5. Factual Background

The Complainant and affiliated companies (collectively, the “Complainant”) is a well-known, global international finance company based in Japan, that has been doing business since 1989 under the ORIX brand. The Complainant’s service offerings include financial leasing, rentals, real estate financing and developments, venture capital, life insurance, investment and retail banking, commodities funds, and securities brokering. The Complainant began its international expansion in the 1970s which now includes, but is not limited to, operations in Singapore, Malaysia, Brazil, United States, United Kingdom, Indonesia, Republic of Korea, Philippines, and Hong Kong, China. The Complainant has been ranked as one of the “World’s Leading 2000 Companies.” The Complainant employs over 33,000 persons.

The Complainant owns many trademark registrations or pending applications for ORIX (the “Mark”) and related marks worldwide, including numerous trademark registrations and applications in Japan, and many other registrations in other countries or regions (e.g., Registration No. 1559228 dated March 10, 1989, issued by the United States Patent and Trademark Office).

The Complainant has registered several hundreds domain names which contain the ORIX trademark, for example, <orix.co.jp>, <orix.cn>, <orix.eu>, <orix.org>, and <orix.com>.

The disputed domain name was registered on March 25, 2017. At the time the Complaint was filed the disputed domain name resolved to a website purportedly offering financial services. Currently, the disputed domain name resolves to an inactive “parked” website.

6. Parties’ Contentions

A. Complainant

The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is created by adding the dictionary term “pay” to the Complainant’s Mark. The Complainant further asserts the Respondent has no legitimate rights or interests in the Mark or the disputed domain name as there is no evidence of any legitimate business activity of the Respondent utilizing the Mark prior to registration and use of the disputed domain name. Further, the Complainant asserts that the Complainant has not authorized the use of the Mark by the Respondent. The Complainant also asserts the disputed domain name was registered and used in bad faith to redirect unsuspecting Internet users to the Respondent’s website which offers competitive financial services.

B. Respondent

The Respondent did not formally respond to the Complainant’s contentions. The Respondent did, however, send an email to the Complainant shortly after this proceeding was initiated offering to sell the disputed domain name to the Complainant for USD 5,000.

7. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.

The disputed domain name is composed by adding the term “pay” to the Complainant’s Mark. A domain name which wholly incorporates a complainant’s mark or prominent and distinctive portions thereof, is sufficient to establish confusing similarity for the purposes of the Policy irrespective of any added terms. Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102. Accordingly, the presence of the term “pay” in the disputed domain name does not avoid a finding of confusing similarity. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).

The varying Top-Level Domains (“TLDs”) of the disputed domain name, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as the TLD is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759; Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762.

B. Rights or Legitimate Interests

The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. PepsiCo, Inc v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.

The disputed domain name consists of the Complainant’s trademark in its entirety, along with the term “pay”, which is broadly descriptive of the kinds of goods and services provided under the Complainant’s trademark. Accordingly, the nature of the disputed domain name is such to carry a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. Moreover, the disputed domain name resolved to the Respondent’s website that offers financial services in competition with the Complainant’s goods and services, which cannot constitute a bona fide offering. Currently, the disputed domain name resolves to an inactive “parked” website.

The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non‑exhaustive scenarios:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel finds the disputed domain name was registered and is being used in bad faith.

A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763. The Mark is well known and distinctive, especially in the financial industry. The disputed domain name incorporates the Mark entirely with the obvious intent by the Respondent of suggesting affiliation or sponsorship with the Complainant to unsuspecting Internet users. It is inconceivable the Respondent who offers financial services, was aware of the Complainant, a company with a global international financial presence. It is notable that the term added to the Mark to compose the disputed domain name is “pay”, which broadly identifies the category of products and services offered by the Complainant. Common sense compels the conclusion that the Respondent was aware of the Complainant’s well-known Mark when registering and using the disputed domain name.

The disputed domain name resolved to a website featuring financial products offered by a competitive company. Considering the construction of the disputed domain name, as noted above, it is clear to the Panel that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.

The fact that the disputed domain name currently resolves to an inactive “parked” website does not prevent a finding of bad faith.

The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

8. 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 <orixpay.com> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: December 14, 2021

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