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 shilei of Shaoxing, Zhejiang, China.
The disputed domain names <popmone.com>, <popmonney.com> and <popmooney.com> are registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2015. On September 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 8, 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 that English be the language of the proceeding. On September 9, 2015, the Respondent requested that Chinese be the language of the proceeding.
The Center verified that the 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 in both Chinese and English, and the proceeding commenced on September 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2015. On September 15, 2015, an email communication was received from the Respondent. The Respondent did not file any formal Response. On October 6, 2015, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Sok Ling MOI as the sole panelist in this matter on October 14, 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.
The Complainant provides solutions for mobile and online banking, payments, risk management, data analytics and core account processing, with an estimated revenue of USD 5.1 billion in 2014. The Complainant uses the POPMONEY trade mark in relation to electronic payment transfer services and a corresponding mobile phone application - such use began at least as early as April 20, 2010. The mobile application is available for download through the Apple iTunes App Store and Google Play Store. The POPMONEY trade mark is featured on the websites of its clients on which the Complainant’s services are available.
The Complainant owns several trade mark registrations for POPMONEY in the United States, including the following:
|
Country |
Mark |
Registration No. |
Registration Date |
|
United States |
POPMONEY |
3,848,688 |
September 14, 2010 |
|
United States |
POPMONEY & DESIGN |
3,867,315 |
October 26, 2010 |
|
United States |
POPMONEY |
4,386,981 |
August 20, 2013 |
The Complainant is the registrant of the domain name <popmoney.com> and it owns and operates a website under that domain name. This website provides information about the services offered under the POPMONEY trade mark and allows users to send and transfer money securely from their bank accounts to others with an email address or mobile number.
The disputed domain names <popmone.com>, <popmonney.com> and <popmooney.com> were registered by the Respondent on December 30, 2014, January 2, 2015 and January 2, 2015 respectively. As at the date of this decision, each of the disputed domain names resolves to a webpage in English containing various commercial links, including some entitled “Mobile Payment”, “Transfer Money” and “Collect Money”, and a short paragraph describing these links as “sponsored listings”.
A.1. The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
As a result of the Complainant’s extensive use and registration as a trade mark, POPMONEY has become a well-known mark and identifies the Complainant and its goods and services.
The disputed domain names are virtually identical to the Complainant’s trade mark POPMONEY, except for minor misspellings, such as omitting the terminal letter “y”, adding an extra letter “n” or “o”. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not distinguish the disputed domain names from the Complainant’s trade mark.
A2. The Respondent has no rights or legitimate interests in respect of the disputed domain names:
(a) the Respondent does not use, or has not undertaken demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods and services. The Respondent is using the disputed domain names 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. Use of a domain name, via typo-squatting, to divert Internet users who are looking for the Complainant’s goods or services to competing websites is not a legitimate, bona fide use.
(b) the Respondent is not commonly known by the disputed domain names. The Respondent is identified as shilei. The Respondent does not own any trade mark registration for the disputed domain names or portion thereof.
(c) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
A.3. The disputed domain names were registered and are being used in bad faith:
The Respondent’s act of registering and use of the disputed domain names is an act of “typo-squatting” and constitutes evidence of bad faith.
In a previous UDRP proceeding between the parties concerning the domain name <popmmoney.com> (Fiserv, Inc. v. Shi Lei / Domain Whois Protection Service Whois Agent, WIPO Case No. D2015-0150), the panel found that the Respondent’s registration of <popmmoney.com> and use of the domain name in relation to a “sponsored listings” webpage constituted registration and use in bad faith. The domain name in that proceeding differs from the Complainant’s trade mark by only one letter, namely the inclusion of an extra letter “m”. There is a strong similarity of circumstances between that UDRP proceeding and the present proceeding.
The Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of its website and a product or service on its website. The Respondent’s “sponsored listings” on the websites located at the disputed domain names are for services identical to or similar to those services identified in the Complainant’s United States trade mark registration for POPMONEY and promoted on the Complainant’s website at “www.popmoney.com”.
The Respondent uses the confusingly similar disputed domain names to earn fees and other income for diverting Internet users to the competing websites. Such use of the disputed domain names also constitutes bad faith use.
Furthermore, the Respondent has a history and pattern of registering domain names confusingly similar to others’ trade marks, which supports a finding of bad faith use and registration. See State Farm Mutual Automobile Insurance Company v. shilei, NAF No. FA1623634; Capital One Financial Corp. v. shilei, NAF No. FA1620200; Microsoft Corpoation v. shilei, NAF No. FA1617855; Enterprise Holdings, Inc. v. shilei c/o shilei, NAF No. FA1596346; Amazon.com Inc., Amazon Technologies, Inc. Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093; Amazon.com, Inc. and Amazon Technologies, Inc. v. shi lei, NAF No. FA1568713, where bad faith was unanimously found.
The Respondent did not file a formal Response to the Complainant’s contentions except for the email communications mentioned in the procedural history regarding the language of the proceeding.
In its email communication of September 9, 2015, the Respondent requested Chinese be the language of the proceeding as the Respondent is a Chinese and is located in China. It further asserted that English is not the official language of China, and it was not very familiar with English. It needed to use translation software to under the Complaint filed in English. In its email communication of September 15, 2015, it asserted that it did not understand the Complaint therefore it could not file any Response.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent requested via email of September 9, 2015 for Chinese to be the language of the proceeding.
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker. The Panel notes the Respondent’s assertion via its email of September 15, 2015 that it could not understand the Complaint and therefore could not file any Response. The Panel finds the Respondent’s assertion unconvincing. Instead, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are registered in Latin characters, rather than Chinese script;
(b) the disputed domain names resolve to websites with contents (with commercial links) in English;
(c) the Complainant and the Respondent had previously participated in a UDRP proceeding conducted in English over the Respondent’s registration of the domain name <popmmoney.com> (Fiserv, Inc. v. Shi Lei / Domain Whois Protection Service Whois Agent, supra), and the panel in that case found that the Respondent was able to articulate response to the issues raised in the Complaint in English;
(d) the Respondent had also registered a large number of other domain names comprising Latin characters, e.g., <thebankofmain.com>, <firephoneplus.com>, <providsavings.com>, <targetbreachsettlement.com>, <caarefirtsanswers.com> and <wwwskiphop.com>, based on a reverse WhoIs search conducted independently by the Panel using the Respondent’s email address.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center informed the Respondent that it would accept a Response in either English or Chinese;
(c) the Center has even furnished the Respondent with a Model Response in Chinese;
(d) the Respondent could have filed a Response but has chosen not to do so.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. To require the Complaint to be translated into Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be transferred:
(i) the disputed domain names registered by the Respondent are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in the POPMONEY name and mark by virtue of its use and registration of the same as a trade mark.
The disputed domain names effectively incorporate the Complainant’s trade mark POPMONEY in its entirety. The omission of the letter “y” in <popmone.com>, the inclusion of an extra letter “n” in <popmonney.com> and the inclusion of an extra letter “o” in <popmooney.com> is not sufficient to distinguish the disputed domain names from the Complainant’s POPMONEY trade mark. Each of the disputed domain names is a foreseeable typographical variant of the trade mark POPMONEY. The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name.
The addition of the gTLD “.com” does not impact on the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain names. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.
There is no evidence suggesting that the Respondent is commonly known by the disputed domain names (the Respondent’s name bears no resemblance to the disputed domain names) or that the Respondent has any rights in the term “pop money” or any of its typographical variants. It also appears that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the POPMONEY trade mark.
Each of the disputed domain names resolves to an active website which appears to be a parking page with commercial links presumably to software for sending payments by a mobile application and electronically transferring funds, including some entitled “Mobile Payment”, “Transfer Money” and “Collect Money”. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. This is especially so where such links result in a connection to goods or services competitive with those of the Complainant.
The Panel notes a disclaimer on the parking page stating that “the sponsored listings displayed above are served automatically by a third party”. This is a system inherently likely to result in the display of sponsored links in the field of commercial activity of a company whose mark corresponds to the domain name, including links to that company’s competitors. Such use of the disputed domain names is neither legitimate nor fair. As discussed below, the Respondent is deemed responsible for the content that appears at the disputed domain names.
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names.
The Respondent has however failed to file a formal Response.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites 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 the Respondent’s websites or location or of a product or service on the Respondent’s websites or location.
Having found that each of the disputed domain names is a typographical variant of the Complainant’s trade mark POPMONEY, it is foreseeable that Internet users attempting to enter the address for the Complainant’s website “www.popmoney.com” in a browser and making a minor typographical error will be diverted to the Respondent’s websites which contains automatically generated commercial links to goods or services competitive with those of the Complainant (e.g., money transfer services). The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis.
The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such links clearly seek to capitalise on the trade mark value of the Complainant’s POPMONEY trade mark resulting in misleading diversion.
The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. A such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
The Complainant further alleged that the Respondent is engaged in a pattern of registering domain names confusingly similar to others’ trade marks in order to prevent trade mark 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 a number of past UDRP decisions where the name of the respondents was either “Shi Lei” or “shilei". If the Respondent in these earlier cases are the same individual as the Respondent, this would be further evidence of bad faith. However, in light of all the other relevant circumstances that adequately allow this Panel to conclude that the Respondent has registered and used the disputed domain names in bad faith, the Panel does not need to make a finding on this particular issue.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.
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 names <popmone.com>, <popmonney.com> and <popmooney.com> be transferred to the Complainant.
Sok Ling Moi
Sole Panelist
Date: November 11, 2015