WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fiserv, Inc. v. Shi Lei / Domain Whois Protection Service Whois Agent

Case No. D2015-0150

1. The Parties

The Complainant is Fiserv, Inc. of Brookfield, Wisconsin, United States of America (“United States”), represented by Michael Best & Friedrich, LLP, United States.

The Respondent is Shi Lei of Shaoxing, Zhejiang, People’s Republic of China (“China”) / Domain Whois Protection Service Whois Agent of Hangzhou, Zhejiang, China.

2. The Domain Name and Registrar

The Disputed Domain Name <popmmoney.com> is registered with Hangzhou AiMing Network Co., Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2015. On January 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 2, 2015, 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 February 3, 2015, 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 February 3, 2015.

On February 3, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request for English to be the language of the proceeding. On February 4, 2015, the Respondent requested that Chinese be the language of the proceeding.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2015. The Response was filed with the Center on February 28, 2015.

The Center appointed Kar Liang Soh as the sole panelist in this matter on March 17, 2015. 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 provides solutions for mobile and online banking, payments, risk management, data analytics and core account processing, with estimated revenues of USD 5.1 billion in 2014. The Complainant uses the POPMONEY trademark in relation to electronic payment transfer services and a corresponding mobile phone application. The mobile application is available for download through the Apple iTunes App Store and Google Play Store. The POPMONEY trademark is featured on the websites of its clients on which the Complainant’s services are available.

The Complainant is the registrant of the domain name <popmoney.com> and operates a website under that domain name. This website provides information about the services offered under the POPMONEY trademark, and allows users to send and transfer money securely from their bank accounts to others with an email address or mobile number.

The Complainant owns several trademark registrations for POPMONEY in the United States, including the following:

The Respondent is Shi Lei / Domain Whois Protection Service Whois Agent. The Respondent registered the Disputed Domain Name on January 2, 2015. As at January 28, 2015, the Disputed Domain Name resolved to a simple webpage containing various links, including some entitled “send money online”, “transfer money”, “mobile payment”, and “request money”, and a short paragraph describing these links as “sponsored listings”.

Prior to commencement of the proceeding and becoming aware of the Respondent’s name behind the WhoIs privacy service of Domain WhoIs Protection Service WhoIs Agent, the Complainant wrote to the Respondent on January 13, 2015 demanding the transfer of the Disputed Domain Name. The Complainant did not receive any response to the demand.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The Disputed Domain Name is confusingly similar to the POPMONEY trademark. The Disputed Domain Name misspells “popmoney” by adding an extra “m” to the term “money”, but this difference does not serve to distinguish the Disputed Domain Name from the POPMONEY trademark. The addition of the generic Top Level Domain “.com” does not affect the assessment of confusing similarity;

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. There is no evidence that the Respondent is using (or preparing to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, as the Respondent is simply using the Disputed Domain Name to host links designated as “sponsored listings”, for which the Respondent is likely to receive click-through fees when consumers follow these links to third-party websites. There is no evidence that the Respondent is commonly known by the Disputed Domain Name. There is no evidence that the Respondent owns any trademark registrations for the Disputed Domain Name (or any portion of the Disputed Domain Name). The Complainant has not consented to the Respondent’s use of the Disputed Domain Name; and

(c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent’s act of registering and using the Disputed Domain Name is an act of “typosquatting” and constitutes evidence of bad faith. The Respondent registered and is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the POPMONEY trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and a product or service on its website. The Respondent’s use of the Disputed Domain Name to operate a website with links to competing sites with information about sending and transferring money and payment services, disrupts the legitimate business of the Complainant and the Complainant’s ability to offer its own services. The Respondent has a history and pattern of registering domain names confusingly similar to others’ trademarks. The use of a privacy protection service in this instance is further evidence of bad faith registration and use.

B. Respondent

The Respondent contends that:

(a) The Complainant has not registered the POPMONEY trademark in China. The POPMONEY trademark is not an internationally-recognized brand. The words “pop” and “money” in the POPMONEY trademark are commonly used terms around the world. Other registrants have also registered domain names such as <popmoney.net>, <popmoney.cn>, and <popmoney.com.cn>;

(b) There are numerous websites in China offering services such as p2p finance management and online loans. The Respondent intends to use the Disputed Domain Name to operate a website offering financial services, and is in the process of creating the website. The Disputed Domain Name was chosen and registered because “popmmoney” could denote a fashionable or popular way (using “pop” in the sense of “pop-fashion” or “pop-music”) to earn or make money (using the extra “M” in “popmmoney” to give special emphasis to “money”); and

(c) The Complainant’s website at <popmoney.com> is targeted at customers outside China, with an emphasis on online money transfers, while the Respondent’s future website at <popmmoney.com> will be focused on customers within China, with an emphasis on p2p financial management. The two websites do not share any similarity and do not compete against each other. The Respondent is also in the process of applying for a POPMMONEY trademark in China.

6. Discussion and Findings

6.1. Language of the Proceeding

As the language of the Registration Agreement is Chinese, the default language of the proceeding should be Chinese. However, the Panel is empowered under paragraph 11(a) of the Rules to determine otherwise having regard to the circumstances.

In the present instance, the Complainant has requested that English be adopted as the language of the proceeding, and the Respondent has requested that Chinese be adopted as the language of the proceeding.

Having considered the circumstances, the Panel decides that English be adopted as the language of the proceeding with the liberty given to the Complainant and the Respondent to communicate respectively in English and Chinese without the need to translate their communication to the other language. In making this decision, the Panel took account of the following factors:

(a) The Complaint has already been submitted in English;

(b) The Disputed Domain Name <popmmoney.com> and the content of the website at the Disputed Domain Name are in English, indicating that the Respondent may have some familiarity with the English language;

(c) The Response has already been submitted in Chinese and the Respondent was able to provide an articulate response to the issues raised in the Complaint in English;

(d) Some sections of the Response were entirely in English (for example, in section II, the Respondent provided his contact details in English);

(e) No procedural benefit would be gained by insisting that one party translates its communication to the other language;

(f) The Panel is bilingual in English and Chinese and can readily understand the communication of both parties; and

(g) Requiring translation of the Complaint into Chinese or the Response into English at this stage would lead to unnecessary delay in the proceeding.

6.2. Discussion

The Complainant has the burden of showing that the Respondent has failed to meet the requirements of paragraph 4(a) of the Policy. Paragraph 4(a) lays down the requirements as follows:

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

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

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

A. Identical or Confusingly Similar

The Complainant has shown that it owns trademark registrations for the POPMONEY trademark in the United States. In view of these registrations, the Complainant clearly has rights in the POPMONEY trademark. For the purposes of proceedings under the Policy, it is not mandatory that a complainant must have trademark rights in the country of the respondent. The Panel also finds the Disputed Domain Name confusingly similar to the POPMONEY trademark for the following reasons:

(a) The Disputed Domain Name effectively incorporates the POPMONEY trademark in its entirety;

(b) The presence of the extra letter “m” between the component words “pop” and “money” of the POPMONEY trademark in the Disputed Domain Name is insufficient to distinguish the Disputed Domain Name from the POPMONEY trademark. In the Panel’s view, the visual nature of the inserted letter “m” is such that it does not sufficiently stand out from or modify the identity of the word POPMONEY. The inserted letter “m” also does not result in any perceptible phonetic alteration to the pronunciation of the word POPMONEY. The Disputed Domain Name is a foreseeable typographical variant of the trademark POPMONEY which may readily arise as a typographical error. Such typographical variants are not reasonably distinguishable from the original trademark (for example, see Roche Products Limited v. Dmitri Orlov, WIPO Case No. D2010-1869, and see Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043); and

(c) It is a consensus of past UDRP panels that the generic Top Level Domain “.com” in the Disputed Domain Name does not affect the assessment of confusing similarity for the purposes of paragraph 4(a)(i) of the Policy and the Panel sees no reason for determining otherwise.

As such, the Panel holds that the first limb of paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

It is the consensus of past panels that a complainant under the Policy is only required to show a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once a prima facie case is made out, the burden shifts to the respondent to demonstrate his rights or legitimate interests in the disputed domain name.

Having reviewed the evidence presented in the proceeding, the Panel notes the following:

(a) There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, or using the Disputed Domain Name in connection with a bona fide offering of goods or services. As at January 28, 2015, the Disputed Domain Name resolved to a website with “sponsored listings”, the very description of which strongly suggests a commercial arrangement of sponsorship.

(b) There is no evidence that the Respondent has rights in any trademarks which are identical or similar to the Disputed Domain Name. The Respondent claims to be in the process of applying for registration of POPMMONEY as a trademark in China but no documents were furnished in support. In any event, even if an application has been submitted, a right arising from registration is at best prospective but not present;

(c) There is no evidence that the Respondent is commonly known by the Disputed Domain Name. The Respondent’s name bears no resemblance to the Disputed Domain Name; and

(d) The Complainant, being the trademark owner of the POPMONEY trademark, has not consented to the Respondent’s use of the Disputed Domain Name.

In the circumstances, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Having done so, the Panel turns to the Respondent’s arguments in response:

(a) The Respondent’s bare allegation that the POPMONEY trademark has been incorporated in third party domain names, such as <popmoney.net> or <popmoney.cn>, is uncorroborated by evidence. Even if such evidence were available, the Panel does not see how such domain name registrations by themselves would confer any right or legitimate interest on the Respondent in relation to the Disputed Domain Name, or whether such domain name registrations were themselves susceptible to similar proceedings under the Policy; and

(b) The Respondent’s claim that “pop” and “money” are commonly used terms around the world does not provide any rational basis on which a right or legitimate interest in the Disputed Domain Name could be vested in the Respondent.

In the absence of better evidence or more cogent submissions, the Panel does not find the Respondent’s arguments persuasive or sufficient to rebut the prima facie finding. As such, the Panel holds that the second limb of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy describes a situation of bad faith registration and use as follows:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The webpage resolved from the Disputed Domain Name contains prominent “sponsored listings”, the very description of which generates an expectation of commercial gain. Many of these “sponsored listings” are associated with services similar to the Complainant’s own services. The Respondent has also admitted that he has an intention to create a website for purposes of providing money transfer services, which must undoubtedly involve commercial gain. The Panel has already determined that the Disputed Domain Name is confusingly similar to the trademark POPMONEY. The Panel is of the view that the use of the Disputed Domain Name in relation to a “sponsored listings” webpage and the Respondent’s admitted intention to prospectively use the Disputed Domain Name for money transfer services is liable to create a likelihood of confusion within the meaning of paragraph 4(b)(iv). Accordingly, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.

The Complainant further alleged that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent trademark owners from reflecting their marks in a corresponding domain name in contravention of paragraph 4(b)(ii) of the Policy. In support, the Complainant highlighted that the name of the respondents in prior panel decisions Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093 and Amazon.com, Inc.; and Amazon Technologies, Inc. v shi lei, NAF Case No. FA1407001568713 were the same as that of the Respondent. Should such a pattern of conduct be shown on the facts, the Complainant’s claim of bad faith use and registration within the meaning of 4(b)(ii) would have been forceful.

The Panel notes on one hand that the respondent in WIPO Case No. D2014-1093 is associated with an address in Hangzhou city, while the address of the respondent of NAF Case No. FA1407001568713 in China is unclear. On the other hand, the Respondent’s address is in Shaoxing city. The Panel is mindful that personal names are often not unique. In a country with a population of over 1.2 billion, it may not be surprising to find the same name shared by different people. As such, it is not possible to conclude that the respondents of WIPO Case No. D2014-1093 and NAF Case No FA1407001568713 are the same individual as the Respondent from the content of the prior decisions alone. However, the Complainant’s allegation is serious. The Panel notes that the Respondent did not choose to deny such allegation in the Response and the Panel is inclined to accept the Complainant’s contention that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii).

The mere use of a privacy protection service per se does not necessary constitute bad faith registration and use (see Jay Leno v St Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571). However, having regard to the circumstances, the Respondent’s use of a privacy protection service further corroborates the above findings of bad faith registration and use.

As such, the Panel holds that the third limb of paragraph 4(a) of the Policy is established.

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 <popmmoney.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: April 15, 2015