Complainant is PayPal, Inc. of San Jose, California, United States of America, represented by Pillsbury Winthrop Shaw Pittman LLP, United States of America.
Respondent is Daniel Benel of New York, New York, United States of America.
The disputed domain name <mypaypal.com> is registered with Register.com (the “Registar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that Complaint was administratively deficient, Complainant filed an amended Complaint on April 18, 2013.
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 Respondent of the Complaint, and the proceedings commenced on April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2013.
The Center appointed Mark Partridge, Bruce E. O’Connor and Jordan S. Weinstein as panelists in this matter on June 3, 2013. The Panel finds that it was properly constituted. Each member of 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.
On June 9, 2013, the Center received an email communication from Respondent. On June 10, 2013, the Center informed Respondent that the email communication would be forwarded to the Panel and that it would be in the sole discretion of the Panel to determine whether to admit and consider the email communication in rendering its decision, and whether to order further procedural steps, if any.
PayPal, Inc. (“PayPal” or “Complainant”), a Delaware Corporation, was founded in 1998 and is a leading global online payment company.
Complainant owns numerous trademark registrations for its PAYPAL mark (“PAYPAL Mark”) throughout the world including eight in the United States of America. Complainant first applied for protection of its PAYPAL Mark on July 19, 1999. Complainant’s earliest registration was dated November 5, 2002, with first use and first use in commerce in October 1999.
The <mypaypal.com> domain name at issue in this proceeding was registered on January 13, 2000. The website currently consists of a parking page with links provided by the Registrar.
Complainant contends that the disputed domain name is confusingly similar to the word mark registered by Complainant as well as with the name of Complainant itself. Complainant further alleges that Respondent does not have any rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith by Respondent.
Respondent did not reply to Complainant’s contentions.
As indicated above, on June 9, 2013, Respondent sent an informal email communication in which he stated:
“I finally have a moment to reply to the messages you have been sending. I appreciate the updates! My preference would be to hold on to this domain as I bought it 13 years ago, have always paid to renew it, and have, in my opinion, not bothered anyone with it! I am just a regular human, not a lawyer or a fancy Internet person, so any help in figuring out the next step is appreciated!”
Paragraph 15(a) of the Rules states that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(1) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that Respondent has rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
The consensus view is that a respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
Complainant has clearly established that it operates as a global online payment company since at least 1998 in association with its PAYPAL Mark, which is registered in numerous countries. Complainant also registered the domain name <paypal.com> in July 1999 and has operated the website at the address of this domain name since October 1999.
Therefore, Complainant has trademark rights in PAYPAL.
The disputed domain name is confusingly similar to Complainant’s trademark as it incorporates the entirety of Complainant’s mark. The addition of the generic term “my” cannot serve to distinguish the disputed domain name from Complainant’s PAYPAL Mark. Other UDRP panels have found that the addition of generic term “my” does not create a different trademark in which the respondent has rights, and cannot be considered sufficient to avoid confusion between the domain name and the complainant’s trademark. MasterCard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Nilfisk-Advance A/S v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2011-0693.
The Panel finds that the first element of the Policy has been satisfied.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name including: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Panel finds as reasonable Complainant’s contention that Respondent is not licensed or authorized to use the PAYPAL Mark or to apply for any domain name incorporating its trademark. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks [...] the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name”).
The Panel further finds that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the domain name. According to the Complaint and screenshots of the website at the disputed domain name annexed thereto, the disputed domain name is used for a parking page, featuring sponsored links using Complainant’s PAYPAL Mark. To the Panel, this behavior does not constitute a bona fide offering of goods or services.
Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name.
The Panel finds that in all likelihood Respondent knew of Complainant when he registered the disputed domain name, based on the facts that Complainant’s business was increasing exponentially in size since the launch of its website in October 1999 and that numerous national and international news stories had been published regarding that website prior to Respondent’s registration of the disputed domain name.
The disputed domain name resolves to a parking page containing sponsored links that use Complainant’s PAYPAL Mark to link to various other company websites. The Panel finds this use of the disputed domain name to intentionally attract, for commercial gain, Internet users to such website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website was done in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <mypaypal.com> be transferred to Complainant.
Mark Partridge
Presiding Panelist
Bruce E. O'Connor
Panelist
Jordan S. Weinstein
Panelist
Date: June 28, 2013