WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Worldpay Limited, Worldpay (UK) Limited and Worldpay Group PLC v. WhoisGuard Protected, WhoisGuard, Inc. / Ani Princewill

Case No. D2017-2570

1. The Parties

The Complainants are Worldpay Limited, Worldpay (UK) Limited and Worldpay Group PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Kemp Little LLP, United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Ani Princewill of Abuja, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <worldpay-ng.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2017. On the same day, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2017, the Registrar transmitted by e-mail 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 e-mail communication to the Complainants on January 15, 2018, providing the registrant and contact information disclosed by the Registrar, and a request for clarification. The Complainants filed an amended Complaint on January 18, 2018.

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 January 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2018. On January 25, 2018, the Respondent sent an e-mail communication to the Center. The Respondent did not submit a substantive Response and the Center notified the parties the commencement of the panel appointment process on February 26, 2018.

The Center appointed Eduardo Machado as the sole panelist in this matter on March 7, 2018. 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 Complainants constitute part of a globally known group of companies, all incorporated under the laws of England and Wales. These companies are well-known providers of payment processing technology and solutions, together “the Complainant”.

The Complainant is the owner of several trademark registrations for the WORLDPAY mark, or its stylized logo version, in various countries and jurisdictions, such as the United States of America, the European Union, South Africa, Canada and others. The Complainant is the owner of, inter alia, United Kingdom Trademark No. 617175 WORLDPAY, registered on November 17, 2000.

The Complainant owns and operates a number of different domain names, such as <worldpay.com> and <worldpay.us>, having the first one mentioned been registered June 1997.

The disputed domain name <worldpay-ng.com> was registered on September 27, 2017. According to the evidence submitted with the Complaint, the disputed domain name resolved to a website for financial services relating the transfer of funds between participants.

5. Parties’ Contentions

A. Complainant

Complainant states that:

1) The disputed domain name is confusingly similar to Complainant’s WORLDPAY mark, which appears in its entirety with the additions of a hyphen and the letters “ng”, as well as the generic Top-Level Domain (“gTLD”) “.com”;

2) The added hyphen, letters “ng” (two-letter country indicator for Nigeria) and use of the gTLD “.com” are not enough elements to distinguish the disputed domain name from Complainant’s mark, as they do not dispel its confusing similarity;

3) The Complainant is a well-known company group, having its trademark internationally known and associated to itself, as recognized by previous panels, such as Worldpay Limited v. PrivacyProtect.org, Domain Admin, ID#10760 / Steve Blanton, e-commerce world payments llc., WIPO Case No. D2013-2147; and Worldpay Limited v. Noble Web Studio, WIPO Case No. D2017-0162;

4) Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise given any third parties the permission to use its marks as part of the disputed domain name. Additionally, the Respondent has not sought or attempted to seek any authorization from the Complainant to use the WORLDPAY mark;

5) The disputed domain name, although now inactive, used to resolve to an active website, in which at some point was used for a financial services business relating to the transfer of funds between participants;

6) The disputed domain name currently being inactive, it indicates that the Respondent does not have any ongoing commercial or business offering under the mark. It is unlikely that the Respondent has become known by the disputed domain name and/or otherwise has any rights or legitimate interests in the disputed domain name;

7) The Respondent must have been aware of the Complainant’s trademark rights when it registered the disputed domain name. Even if that was not the case, knowledge of the Complainant and its rights would be easily obtainable, and it is the Registrant’s responsibility to determine whether or not a domain name infringes or violates someone else’s rights;

8) Concealment of its identity by using a proxy service, such as what the Respondent has done so, is indicative of bad faith, when considered alongside other factors; and

9) The disputed domain name has been registered in bad faith.

10) The previous use of the disputed domain name by the Respondent clearly could have caused confusion for customers and partners, by deceiving them into thinking that the disputed domain name was used for a website operated by or associated with the Complainant. This is especially so considering that the disputed domain name was used for a website relating to financial services and money transfer which could reasonably have been considered to be part of the Complainant’s business.

Finally, the Complainant seeks to have the disputed domain name transferred to Worldpay Limited.

B. Respondent

The Respondent did not formally reply to the Complaint. However, the Respondent sent an e-mail to the Center on January 25, 2018, in reply to the Notification of Complaint and Commencement of Administrative Proceeding, with the following content: “Thank you for the update.”

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove 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

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service in which the Complainant has rights.

The Panel finds that the Complainant has proven to be the holder of numerous trademark registrations around the world consisting of the WORLDPAY mark. In fact, the Complainant’s mark enjoys a wide reputation, which has been confirmed by previous UDRP panels (See Worldpay Limited v. PrivacyProtect.org, Domain Admin, ID#10760 / Steve Blanton, e-commerce world payments llc., supra; and Worldpay Limited v. Noble Web Studio, supra).

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the Complainant’s registered mark WORLDPAY along with a hyphen and the letters “ng”. The addition of a generic term is not sufficient to dispel confusion with the Complainant’s mark and the use of a hyphen are not enough to distinguish the disputed domain name from the Complainant’s mark or official domain names. (See, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan, WIPO Case No. D2001−0004; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755).

Therefore, this Panel concludes that the Complainant has fulfilled the first requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that prior panels found that it is sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

On the record, the Panel verifies that the Complainant is the owner of several WORLDPAY trademark registrations and that it has no businesses or other relationships with the Respondent.

Nonetheless, according to documents presented by Complainant, although in the past Respondent had an active website under de disputed domain name, currently it is inactive and no rights or legitimate interests are or have been shown in the use of the disputed domain name.

Likewise, no evidence has been found to suggest that the Respondent has been commonly known by the disputed domain name; nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

The Panel notes that, although the Respondent sent an e-mail communication to the Center on January 25, 2018, said communication did not either produce any evidence to establish rights of legitimate interests in the disputed domain name or rebut any of the Complainant’s contentions.

Therefore, considering the absence of a formal Response and the above-mentioned facts, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel considers paragraph 4(a)(ii) of the Policy fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

In the present case, the Panel finds that the Respondent has intentionally registered the disputed domain name with the Complainant in mind. The Panel considers that the disputed domain name is confusingly similar to the Complainant’s marks and domain names and could mislead consumers. Based on all the above facts, it is highly unlikely that the Respondent was not aware of the Complainant’s trademark rights when the disputed domain name was registered.

The Panel notes that the allegations of bad faith made by the Complainant were not contested, as the Respondent did not formally reply to the Complaint. Examining the evidence provided by the Complainant, it is confirmed that its trademarks have been in use long before the disputed domain name was registered, including in the Complainant’s own domain names.

The Panel also finds that the disputed domain name is a perfect reproduction of the Complainant’s mark were it not for the addition of letter hyphen and the letters “ng”, which, as exposed above, are not sufficient to dispel confusion. Instead, the Panel shares the Complainant’s view that the addition of “ng” (country code for Nigeria) is suggestive of a website operated by the Complainant in Nigeria which is a further evidence of bad faith.

Moreover, the Panel agrees that disputed domain name, although now inactive, used to resolve to an active website, in which at some point was used to redirect consumers to a website relating to financial services and money transfer that could quite reasonably have been considered to be part of the Complainant’s business.

Also, the Respondent has registered the disputed domain name under a privacy shield. Given the other circumstances of the case, such behavior can be considered as further evidence of bad faith in registering and using the disputed domain name.

Further, as mentioned, the disputed domain name currently resolves to an inactive website. The passive holding of the disputed domain name does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In the absence of any supporting assertions or evidence from the Respondent, the Panel also agrees there to be no plausible bona fide use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark. As such, the Panel finds the Respondent’s passive holding of the disputed domain name to amount to bad faith use.

There are no facts set out in the available record which could possibly justify the registration of the disputed domain name by the Respondent.

In view of the above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 disputed domain name <worldpay-ng.com> be transferred to Worldpay Limited.

Eduardo Machado
Sole Panelist
Date: March 14, 2018