Venmob.com

The timeline behind venmob.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.

DECISION PayPal, Inc. v. ZAKARIA DERICHE / VENMOB LLC Claim Number: FA2412002129141 PARTIES Complainant is PayPal, Inc. ("Complainant"), represented by Matthew S. Slevin of Fenwick & West LLP, California, USA. Respondent is ZAKARIA DERICHE / VENMOB LLC ("Respondent"), California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <venmob.com>, registered with Amazon Registrar, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. James Bridgeman SC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on December 11, 2024; Forum received payment on December 11, 2024. On December 17, 2024, Amazon Registrar, Inc. confirmed by e-mail to Forum that the <venmob.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On December 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@venmob.com. Also on December 18, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts. Having received no formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On January 8, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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 disputed domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant submits that it is a global provider of online payment services and claims rights in the VENMO mark in both word and stylized form established by its trademark and service mark registrations described below. Complainant's asserts that its VENMO mobile app is a leading mobile payment app in the United States. The official website for Complainant's VENMO branded services is <www.venmo.com> which Complainant has owned and operated since at least as early as 2010. As shown in third party app analytics data exhibited in an annex to the Complaint, Complainant's VENMO mobile application ranks among the most popular apps in the United States, where it is currently ranked as the #3 most downloaded mobile app in the "finance" category in both the App Store and Google Play; and the #52 most downloaded mobile app across all categories, with over 50 million downloads to date in the Google Play store alone. Complainant firstly alleges that the disputed domain name is confusingly similar to the VENMO mark in which it has rights as described below. It is submitted by Complainant that as in the present Complaint, a domain name is "nearly identical or confusingly similar" to a complainant's mark when it "fully incorporate[s] said mark." PepsiCo. Inc. v. PEPSI SRL, WIPO Case No. D2003-0696 (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant's PEPSI mark since they "incorporate[ed the] trademark in its entirety"). Here, the disputed domain name <venmob.com> incorporates the well-known VENMO mark in its entirety and is confusingly similar to it. Furthermore, Complainant argues that Respondent may not avoid likely confusion by simply adding a single letter to the end of another's mark. Additionally, Complainant argues that the generic Top-Level Domain ("gTLD") extension <.com> in the disputed domain is not relevant to the issue of similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) ("[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis."). Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing: · according to the Registrar's WHOIS, Respondent's identity is masked by a privacy shield and in response to the request by Forum for details of the registration of the disputed domain name Respondent's identity and the identity of his organization were revealed; · Complainant has not authorized or licensed Respondent to use the VENMO mark, or similar variants of the mark; · Respondent is not commonly known by Complainant's VENMO mark or affiliated with Complainant in any way; · Respondent is not an authorized partner, vendor, supplier, or distributor of Complainant's goods and services; · as shown in the screen capture exhibited in an annex to the Complaint, Respondent is using the disputed domain to resolve a website that makes unauthorized use of highly similar variants of Complainant's marks, and is intentionally designed to mislead users to believe that the website is connected to Complainant and its software and services; · such uses are neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. See, e.g., PayPal, Inc. v. Dev HD / 4ae, FA2310002065460 (Forum Nov. 2, 2023) (finding respondent's use of domains for sites that displayed PayPal's marks, and referenced similar payment services, provided a false impression that the respondent was affiliated with or authorized by Complainant, and were not bona fide use). Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that: · Respondent's bad faith is evident because the disputed domain name is obviously connected a well-known trademark, and it is clear that Respondent was fully aware of Complainant's VENMO mark when Respondent registered the disputed domain name; · the disputed domain name, which adds one letter to the end of Complainant's well-known VENMO mark, is a typosquatting registration, which is evidence of Respondent's bad faith registration and use; · until as recently as September 23, 2024, Respondent used the disputed domain to resolve to a website that makes unauthorized use of highly similar variants of Complainant's marks, and is intentionally designed to mislead users to believe that the website is connected to Complainant and its software and services See, e.g., PayPal, Inc. v. Dev HD / 4ae, FA2310002065460 (Forum Nov. 2, 2023)(finding respondent's use of domain names for sites that displayed PayPal's marks, and referenced similar payment services, provided a false impression that the respondent was affiliated with or authorized by Complainant, and were not a bona fide use); · Respondent's use of the disputed domain to attempt to attract Internet users to a competing website, on which Respondent attempts to pass itself off as Complainant, constitutes bad faith for the purposes of the Policy. Complainant adds that Respondent's bad faith is also evident because, on information and belief, Respondent registered and used the disputed domain name for the purpose of selling the disputed domain name to Complainant for profit. Complainant argues that registering and using a confusingly similar domain name so that it may be sold to Complainant for a profit constitutes bad faith. As shown in copy correspondence, which is exhibited in annex to the Complaint, after Complainant asked Respondent to transfer the disputed domain name to Complainant, Respondent refused to do so. Respondent told Complainant that he would not transfer the disputed domain name "for free" or "without compensation" but was "open to negotiations," and stated that he otherwise intended to list the disputed domain name for sale. Therefore, Complainant submits that upon information and belief, Respondent is attempting to sell the domain to Complainant for profit, or otherwise sell the domain to a third party for profit. Respondent's registration and use of the domain for this purpose further demonstrates Respondent's bad faith. B. Respondent Respondent failed to submit a formal Response in this proceeding. FINDINGS Complainant uses the VENMO trademark in its business providing payment software and related services; and is the owner of an international portfolio of trademark and service mark registrations including the following as evidenced by a third-party trademark starters report exhibited in an annex to the Complaint: · United Kingdom registered trademark, VENMO registration number UK00801187414, registered on May 24, 2013 for services in class 36; · United States registered trademark and service mark VENMO registration number 6,269,458, registered on the Principal Register on February 16, 2021 for goods and services in international classes 9, 35, 36, 42; · United States registered trademark and service mark VENMO (stylized) (blue rectangle button) registration number registered on the Principal Register on August 17, 2021. Complainant has an established Internet presence and owns the domain name <venmo.com> which it uses as the address of its website and its mobile payment application. The disputed domain name was registered on September 25, 2021, and resolves to a website that purports to offer retail payments services to businesses similar to those offered by Complainant. There is no information available about Respondent except for that which is provided in the Complaint, as amended, the Registrar's WHOIS and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a 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." 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. 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"). Identical and/or Confusingly Similar Complainant has provided uncontested evidence that it has rights in the VENMO mark, established by its ownership of its international portfolio of registered trademarks and service marks described above and extensive use of the mark in its global financial services business. The disputed domain name <venmob.com> consists of Complainant's mark in its entirety, albeit with the addition of the letter "b", together with the generic Top Level Domain ("gTLD") extension <.com>. Complainant's VENMO mark is clearly recognizable within the disputed domain name, which is in fact a misspelling of Complainant's mark. The addition of the letter "b" to the mark within the disputed domain name does not prevent a finding of confusing similarity between the mark and the disputed domain name. The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for an Internet domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant's VENMO mark. It is accepted that it is sufficient for a Complainant to establish that the mark relied upon is contained in its entirety in the domain name at issue to succeed in the first element of the test in Policy ¶ 4(a)(i). This Panel finds therefore that the disputed domain name is confusingly similar to the VENMO mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i). Rights or Legitimate Interests In its submissions Complainant has made out an uncontested prima facie case that the Respondent has no rights legitimate interests in the disputed domain name. It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests. Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii). Registration and Use in Bad Faith The disputed domain name was registered on September 25, 2021, and Complainant has adduced uncontested evidence of its registered trademark and service mark rights in the VENMO mark prior to that date. The disputed domain name is almost identical to Complainant's mark and is on the balance of probabilities a clever exercise in typosquatting. By adding the letter "b" to the mark the registrant not only created a confusingly similar domain name but also inferred a reference to mobile services. Respondent has used the disputed domain name for that very purpose to resolve to a website that purports to offer mobile payment services which are competing with complainant. In the absence of any Response or explanation from Respondent, this Panel finds that on the balance of probabilities the registrant of the disputed domain name acted in bad faith in an act of typosquatting by adding the letter "b" to Complainant's mark to create a domain name that would be likely to confuse Internet users. Furthermore, Complainant has exhibited copy correspondence with Respondent in which Respondent acknowledged Complainant's prior rights, and the confusing similarity of the disputed domain name and the mark but nonetheless purported to negotiate a sale of the disputed domain name to Complainant and threatened to put the disputed domain name on open sale. Respondent stated: "As a foreign company expanding our operations into the U.S., we understand the potential for confusion with Venmo's trademark. We are currently taking action to rebrand and will be changing our DBA to avoid any conflicts. Our intention is not to compete with PayPal but rather to foster a competitive and open market. We are in the process of updating our website and apps and domain, which may take a few weeks. In the meantime, if PayPal is interested in acquiring the domain venmob.com, we would be open to negotiations, as we plan to list it for sale following our migration." This Panel finds therefore that Complainant has proven on the balance of probabilities that the disputed domain name was registered and is being held in circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the VENMO trademark and service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name. This Panel finds therefore the disputed domain name was registered in bad faith, with Complainant and its mark in mind, intending to target and take predatory advantage of Complainant's goodwill and reputation in the VENMO mark. In the annexes to the Complaint, Complainant has adduced uncontested evidence that Respondent is using the VENMO mark as the address of a website purporting to offer services that compete with Complainant. This Panel finds that by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on your web site or location. Such use constitutes bad faith for the purposes of the Policy. As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii). 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 <venmob.com> domain name be TRANSFERRED from Respondent to Complainant. _________________________________________________ James Bridgeman SC Panelist Dated: January 9, 2025 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

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