Worldpaysafe.com

The timeline behind worldpaysafe.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION WorldPay Limited v. WorldPay Inc Claim Number: FA0805001190194 PARTIES Complainant is WorldPay Limited (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA. Respondent is WorldPay Inc (“Respondent”), New York, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <worldpaysafe.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Judge Harold Kalina (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 13, 2008. On May 14, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <worldpaysafe.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On May 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 9, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@worldpaysafe.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 12, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <worldpaysafe.com> domain name is confusingly similar to Complainant’s WORLDPAY mark. 2. Respondent does not have any rights or legitimate interests in the <worldpaysafe.com> domain name. 3. Respondent registered and used the <worldpaysafe.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, WorldPay, Ltd., develops and markets secure electronic payment processing systems. Complainant provides its customers with a variety of products and services that facilitate online business transactions. In connection with its services Complainant maintains multiple domain names, including its <worldpay.com> domain name. Additionally, Complainant holds multiple registrations with several governmental authorities for its WORLDPAY mark. Complainant has provided evidence it registered its mark with the United Kingdom Intellectual Property Office (“UKIPO”) on November 17, 2000 (Reg. No. 2,230,627); the Office for the Harmonization of the Internal Market (“OHIM”) on March 4, 2002 (Reg. No. 1,945,310); and the United States Patent and Trademark Office (“USPTO”) on May 18, 1999 (Reg. No. 2,245,537). Respondent registered the <worldpaysafe.com> domain name on October 19, 2007. Respondent’s disputed domain name resolves to a website which displays a link entitled “Click Here to Enter the Site.” When an Internet user clicks on the link, the Internet user is then diverted to Complainant’s <worldpay.com> website. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has provided evidence of the registration of its WORLDPAY mark with multiple governmental authorities since May 1999. The Panel finds these registrations fulfill Policy ¶ 4(a)(i) by establishing Complainant’s rights in its WORLDPAY mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”). Respondent’s <worldpaysafe.com> domain name fully incorporates Complainant’s WORLDPAY mark with the additions of the descriptive word “safe,” and the generic top-level domain “.com.” The descriptive word “safe,” presumably refers to the security of Complainant’s online financial security products and services. The additions of a descriptive term and a top-level domain to Complainant’s mark are not sufficient to distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds Respondent’s <worldpaysafe.com> domain name is confusingly similar to Complainant’s WORLDPAY mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant alleges Respondent does not possess rights and legitimate interests in the disputed domain name. Initially, the burden of proof lies with Complainant to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has produced a prima facie case, the burden then shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has sufficiently established a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to file a Response in these proceedings and thus the Panel may presume Respondent lacks rights and legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Respondent’s <worldpaysafe.com> domain name resolves to a website which merely displays a link to Complainant’s <worldpay.com> domain name. Respondent presumably receives compensation in the form of click-through fees for this use of its disputed domain name. In a similar situation, a respondent used Complainant’s WORLDPAY mark in the <worldpaysales.com> domain name to resolve to a website displaying a link to Complainant’s site. The Panel found the respondent was not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WorldPay Limited v. Neely Jones, FA 1169388 (Nat. Arb. Forum May 8, 2008). Thus, this Panel finds Respondent is not using the <worldpaysafe.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See also Morgan Stanley v. Morgan Stanley, FA 69733 (Nat. Arb. Forum May 3, 2008) (finding that the respondent's use of the disputed domain name to feature a link to the complainant's website and presumably earn compensation in the form of click-through fees did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Respondent is listed in the WHOIS information as “WorldPay, Inc.” Although this information appears to suggest Respondent is commonly known by the disputed domain name, there is no other evidence in the record to support this contention. Complainant states it has never authorized Respondent to use its WORLDPAY mark. In the absence of additional evidence from Respondent demonstrating it is commonly known by the disputed domain name, the Panel finds Respondent is not commonly known by the <worldpaysafe.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). The Panel finds Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent is using the <worldpaysafe.com> domain name to display a link redirecting Internet users to Complainant’s <worldpay.com> domain name. Respondent presumably receives a click-through fee for this use. Also, Respondent’s use is creating a likelihood of confusion among Internet users as to the source and affiliation of Complainant with the disputed domain name. The Panel finds Respondent’s attempt to profit from the confusingly similar <worldpaysafe.com> domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). The Panel finds Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <worldpaysafe.com> domain name be TRANSFERRED from Respondent to Complainant. Judge Harold Kalina (Ret.), Panelist Dated: June 26, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.