WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Payoneer, Inc. v. Domain Administrator, Diamond Point Enterprises
Case No. DCO2021-0033
1. The Parties
The Complainant is Payoneer, Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Administrator, Diamond Point Enterprises, Thailand.
2. The Domain Name and Registrar
The disputed domain name <payoneer.co> is registered with Edomains LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021. On May 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 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 May 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 amended Complaint on May 25, 2021.
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 May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2021.
The Center appointed John Swinson as the sole panelist in this matter on June 23, 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. Factual Background
The Complainant is a financial services company that specializes in online money transfer and digital payment services. The Complainant was founded in 2005, is headquartered in New York City and has more than 20 global offices.
The Complainant owns numerous trademark registrations for PAYONEER in both word and logo format in a number of countries around the world, including United States trademark registration numbers 3380029 and 3380030 that have a registration date of February 12, 2008.
The Respondent did not file a Response, so little is known about the Respondent. The Respondent has been a respondent in prior UDRP disputes.
The disputed domain name was registered on April 16, 2021.
The disputed domain name redirected to a website for a domain name registrar or reseller. Currently, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant makes the following submissions:
In accordance with the Policy, the Complainant has brought this Complaint on the basis of its substantive rights and interests developed from more than 15 years’ use of the PAYONEER trademark. The Complainant has established such rights and interests through exclusive, extensive and consistent use of the term within the global marketplace. The Complainant has protected its PAYONEER mark by way of trademark registrations in multiple jurisdictions (including those listed above in section 4 of this decision).
The Complainant operates from its main website, “www.payoneer.com”, from which it both advertises its services and promotes the PAYONEER trademark. The Complainant’s online presence is of paramount importance to its global reputation and the success of its offerings.
Where a complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold of having trademark rights for the purposes of standing to file a UDRP case.
The disputed domain name is identical to the Complainant’s PAYONEER trademark. This is because the disputed domain name incorporates the Complainant’s distinguished PAYONEER trademark exactly, without alteration or addition.
The Respondent lacks a right or legitimate interest in the disputed domain name.
To the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the PAYONEER term. The Complainant also cannot find any evidence to suggest the Respondent holds unregistered rights in this mark. Moreover, the Respondent has not been licensed by the Complainant to use domain names that feature the PAYONEER term.
The disputed domain name currently redirects Internet users to an unrelated third-party site “www.catched.com” where other domain names are being auctioned. The Respondent has not made any active bona fide offering of goods or services, nor demonstrable preparations, through such use of the disputed domain name. On the contrary, the Respondent is capitalising on the renown of the Complainant’s globally recognizable PAYONEER trademark to garner traffic and promote an unrelated domain auction platform.
The Complainant emphasises that the PAYONEER term, given its highly distinctive nature, has clearly not been acquired by the Respondent for some legitimate resale purpose. Indeed, the Respondent has separately advertised the sale of the disputed domain name on the domain reselling platform, Afternic.com, Inc, for a minimum fee of USD 500.
The Complainant submits that the Respondent is not known, nor has ever been known, by the PAYONEER term. The PAYONEER trademark is distinctive and not used in commerce other than by the Complainant.
The Respondent is using the disputed domain name, which is garnering traffic from misled customers of the Complainant, to advertise an unrelated commercial service. Such use is neither legitimate noncommercial nor fair.
The Complainant’s earliest PAYONEER trademark registration predates the disputed domain name’s registration by more than 13 years.
The Respondent has listed the disputed domain name for sale through the domain reselling platform, Afternic.com, Inc. One of these site listings clarifies that the minimum acceptable offer for the disputed domain name’s purchase is USD 500. This figure, clearly in excess of the registration cost, provides clear evidence that the Respondent is attempting to sell it for excessive consideration.
The Respondent has engaged in a pattern of registering trademark and brand-abusive domain names, preventing other distinctive entities from reflecting their marks.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s PAYONEER trademark.
The Respondent is clearly attempting to capitalize on this Internet-user confusion to increase traffic to an unrelated third-party site (and therefore the prospect of deriving commercial gain in respect of such).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant’s PAYONEER trademark is highly distinctive and memorable.
The Complainant has clearly proven ownership of registered trademarks for PAYONEER in the United States.
The disputed domain name includes the Complainant’s trademark PAYONEER in its entirety.
The Panel accordingly concludes that the disputed domain name is identical to the Complainant’s PAYONEER trademark, disregarding the Top-Level Domain “.co”.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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 in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.
There is no evidence that the Respondent is commonly known by the disputed domain name. The Complainant states that the Complainant cannot find any registered trademarks for PAYONEER owned by the Respondent or any evidence that the Respondent has unregistered rights in this trademark.
The Complainant states that the Complainant has not licensed the Respondent.
There is no evidence of any bona fide use of the disputed domain name by the Respondent.
The Respondent has listed the disputed domain name for sale on Afternic.com with a minimum bid price of USD 500.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds that the Complainant succeeds on the second element of the Policy in relation to the disputed domain name
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The Complainant’s PAYONEER trademark is distinctive and is well known in respect of the payment services provided by the Complainant. The trademark was also well known at the time the Respondent registered the disputed domain.
The Respondent also has a history of registering domain names to target well-known trade marks.
For example, the Respondent appears to control the following domain names <aaljazeerasport.com>, <accuweaher.com> and <bankpofamerica.com> which appear to be examples of typosquatting by the Respondent. The Respondent has also been a respondent in several prior domain name disputes concerning domain names such as <giecocreditcards.com> (Government Employees Insurance Company (“GEICO”) v. Diamond Point Enterprises Limited, WIPO Case No. D2012-1487), <kolhls.com> (KOHL’S Illinois, INC. v. Diamond Point Enterprises Limited, NAF Case No. 1435989, 4th May 2012) and <interpriserentacar.com> (Enterprise Holdings, Inc. v. Diamond Point Enterprises Limited, NAF Case No. 1398860, 26th August 2011).
There is no obvious reason for the Respondent to register the disputed domain name other than for the purpose of attempting to trade off the Complainant’s goodwill in the PAYONEER trademark.
The Panel concludes that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. Accordingly, the Complainant meets the requirements of paragraph 4(b)(ii) of the Policy.
The Panel also concludes that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source of the website. Accordingly, the Complainant meets the requirements of paragraph 4(b)(iv) of the Policy.
The fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
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 <payoneer.co> be transferred to the Complainant.
Date: July 7, 2021