WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Worldpay Limited v. Gregory Murray, EPP International INC

Case No. DCO2017-0004

1. The Parties

The Complainant is Worldpay Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by DLA Piper UK LLP, United Kingdom.

The Respondent is Gregory Murray, EPP International INC of Wyoming, United States of America (“United States”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <worldepay.co> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2017. On January 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2017, 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 February 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2017. On February 13, 2017, and February 24, 2017, the Center received email communications from the Respondent.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 28, 2017. 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 payment technology company that provides payment processing services, facilitates face-to-face mail order and online payments, and develops anti-fraud systems. The Complainant operates its business in 146 countries worldwide. The Complainant owns several trade mark registrations for the WORLDPAY trade mark, including in Australia, Colombia, the European Union, Germany, Norway, Switzerland, United Kingdom and the United States of America (“United States”).

According to the Registrar, the Respondent acquired the Disputed Domain Name on September 13, 2012. The Disputed Domain Name resolves to an incomplete website that is being developed for the purposes of offering online payment services and also offers jewellery for sale (the “Respondent Website”).

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

(a) The Complainant has registered rights in the WORLDPAY trade mark in multiple jurisdictions, including Australia, Colombia, the European Union, Germany, Norway, Switzerland, United Kingdom and the United States. The Complainant first began using the WORLDPAY trade mark in 1993. The Complainant’s WORLDPAY trade mark was previously found in other UDRP proceedings to be well-known internationally and associated with the Complainant (see Worldpay Limited v. PrivacyProtect.org, Domain Admin, ID#10760 / Steve Blanton, e-commerce world payments llc, WIPO Case No. D2013-2147).

(b) The Complainant has been in the payments industry for 30 years. In 2015, the Complainant became listed on the London Stock Exchange and a member of the FTSE100. The Complainant processed 13.1 billion transactions in 2015, and 7.2 billion transactions in the first half of 2016. The Complainant has also won several awards throughout the years.

(c) The Disputed Domain Name incorporates the Complainant’s WORLDPAY trade mark in its entirety, with the addition of an extra letter “e”. There have been numerous UDRP cases that have held that a single letter, even in the middle of a word, is insufficient to distinguish the domain name from the relevant trade mark.

(d) The Complainant has no relationship with the Respondent, and has not authorized the Respondent to use the Complainant’s WORLDPAY trade mark. The Disputed Domain Name resolves to a website that appears to offer online payment services. The website is incomplete and there are a number of discrepancies, e.g. the “our history” page only has an image of a safe lock, and the “our team” section only has Lorem Ipsum text and the photos are taken from stock images. The Respondent Website also has an online shop that offers jewellery for sale, but only includes more Lorem Ipsum text when you select an item in order to view more details.

(e) The Complainant and its WORLDPAY trade mark are well-known worldwide, and the Complainant has numerous trade mark registrations for WORLDPAY. The Respondent must have been aware of the Complainant at the time it registered the Disputed Domain Name. The Respondent is using the Disputed Domain Name to confuse users and to deceive them into thinking that the website is associated with the Complainant, and will disrupt the Complainant’s business.

B. Respondent

The Respondent’s contentions can be summarized as follows:

(a) The Respondent is not trying to pass itself off as “worldpay.com”, and the Disputed Domain Name resolves to a real website with a distinct purpose. The Respondent is in the e-commerce payments business with solution partners.

(b) The use of the letter “e” in the Disputed Domain Name is due to its link with the words “e-commerce” and “electronic payment”. It would therefore be difficult for users to confuse “worldepay” with “worldpay”.

(c) The Respondent argues that the “moron in a hurry test” applies, and refers to the court case Morning Star Cooperative Society v. Express Newspapers Limited [1979] F.S.R. 113. The Respondent Website and the Complainant’s “www.worlpay.com” website look nothing alike, and although the Respondent and the Complainant are in a similar business they are not the same. The Respondent does not believe that the Complainant and its WORLDPAY trade marks are so famous that everyone knows who and what they are. Even if an average user was aware of the Complainant and its WORLDPAY trade mark, such users can make their own decisions.

(d) The Complainant is trying to eliminate all competition, even where there is no instance of passing off or bad faith. The Disputed Domain Name is being used to resolve to a bona fide website. The Respondent has hired a website developer who has been developing the website as a real business for 16 to 18 months or longer. The Respondent is developing a new method of payment. The foregoing does not amount to registration and use in bad faith. The website to which the Disputed Domain Name resolves was being developed long before the Respondent became aware of the Complaint and will be going live shortly.

(e) The Respondent Website contains no links to the Complainant’s website (“www.worldpay.com”), and the Respondent is not seeking to pass itself off as the Complainant. The Respondent asserts that the Complainant is simply on a fishing exercise.

(f) The Respondent did not acquire the Disputed Domain Name with the Complainant or its WORLDPAY trade mark in mind. The Respondent purchased the Disputed Domain Name because it reflects what the Respondent does, i.e. it operates a world payment system in the e-commerce market. The Respondent is currently developing an online store to which the Disputed Domain Name will resolve, and has been developing it long before the Complaint was filed. It is merely a coincidence that the Disputed Domain Name and the Complainant’s WORLDPAY trade mark are similar.

(g) In TTT Moneycorp Limited v. Guiying Huang, WIPO Case No. D2016-2030, the panel held that the domain name in question was the same as the complainant’s trade mark, save for the addition of a single letter, and that the use of the domain name to resolve to a parking page that provided links to websites of competitors of the complainant to generate revenue amounted to bad faith. However, the Respondent argues that the foregoing situation does not apply in this case.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the WORLDPAY trade mark, based on its registrations in Australia, Colombia, the European Union, Germany, Norway, Switzerland, United Kingdom and the United States.

The Disputed Domain Name incorporates the Complainant’s WORLDPAY trade mark in its entirety, the only difference being the addition of the letter “e” between “world” and “pay”.

The Panel finds that “world pay” is the distinctive component of the Disputed Domain Name for purposes of the Policy, and the addition of the letter “e” in the middle does nothing to distinguish it from the Complainant’s trade mark.

It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extensions, in this case “.co”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).

The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel accepts that the Complainant registered and began using the WORLDPAY trade mark many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to them of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name, or a name corresponding to it. The Respondent Website is currently being developed for the purposes of offering online payment services and also offers jewellery for sale. The Respondent is therefore considered to be involved in the same industry as the Complainant.

Even if the Respondent Website was offering genuine services, the Panel finds that such use cannot amount to a bona fide offering of services since the Respondent is using the Respondent Website to offer services that compete with the Complainant, and the Disputed Domain Name is confusingly similar to the Complainant’s WORLDPAY trade mark. As held by the panel in Microchip Technology, Inc. v. Milos Krejcik and EDI Corporation, d/b/a Aprilog.com, WIPO Case No. D2001-0337, although the respondent had been offering legitimate goods for sale prior to any notice of dispute, as the respondent used the domain name to resolve to a website where users were likely to be confused as to whether the site was affiliated with the complainant, the respondent could not be bona fide and did not have legitimate rights or interest in the domain name. Similarly, in Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052, where the respondent in that case was using the domain name <optiononelending.com> to provide mortgage related services which competed with the complainant’s business, it was held that the “Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy.”

The Panel further notes that the Respondent’s unsupported assertion that it has been developing its website for approximately 18 months does not suffice to demonstrate preparations to use the Disputed Domain Name for purposes of the Policy.

Based on the foregoing, and the fact that the Disputed Domain Name is confusingly similar to the Complainant’s WORLDPAY trade mark, the Panel finds that the Respondent has been using the Disputed Domain Name with the intent of misleadingly diverting consumers to the Respondent Website in order to make a commercial gain by offering services that directly compete with the Complainant, and to sell products. Such use cannot confer any rights or legitimate interests to the Respondent in the Disputed Domain Name.

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts that the Respondent is likely to have known of the Complainant’s WORLDPAY trade mark at the time he registered the Disputed Domain Name, and has registered and has been using it in bad faith, based on the following:

(a) the Respondent acquired the Disputed Domain Name on September 13, 2012, which was about 2 decades after the Complainant first began using its WORLDPAY trade mark in its business;

(b) the Respondent has been using the Disputed Domain Name to offer services that directly compete with the Complainant’s business; and

(c) the Disputed Domain Name is confusingly similar, both phonetically and visually, to the Complainant’s WORLDPAY trade mark.

The above cannot be mere coincidence. The Panel believes that the Respondent registered and is using the Disputed Domain Name with the intent of trading on the reputation of the Complainants WORLDPAY trade mark to attract Internet users to the Respondent Website, by creating a likelihood of confusion with the Complainant’s WORLDPAY trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent Website, for commercial gain. As stated by the panel in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364, “it is use in bad faith…where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page…the confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay–per-click site that it then becomes clear that the website is unconnected with the trade mark holder.” The same reasoning can apply in this case, in relation to the Respondent Website which offers competing services to the Complainant and also purports to sell jewellery.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.

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 <worldepay.co> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: March 8, 2017