Complainant is MIH PayU B.V. of Hoofddorp, Netherlands, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale Arizona / Payu Crypto of Mumbai, Maharashtra, India.
The disputed domain name <payucrypto.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2018. On June 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 4, 2018, 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 Complainant on June 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On June 7, 2018, Complainant filed an amended Complaint.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 6, 2018. An email was received on July 7, 2018, from Respondent requesting a 10-15 day extension to due date of response. The Center declined to extend the period for Response under paragraph 5(e) of the Rules. The Center further informed Respondent that if it chose to file a late Response the Center would bring it to the Panel’s attention (when appointed), and it will be at the discretion of the Panel to consider it.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 13, 2018. 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.
Complainant is a leading provider of online payment services.
Complainant owns the following trademark registrations:
|
TRADEMARK |
JURISDICTION |
REG. NUMBER |
REG. DATE |
FILING / PRIORITY DATE |
INTNTL.CLASS |
|
PayU PayU |
India |
2832695 |
October 27, 2014 |
October 27, 2014 |
36 |
|
PAYU |
European Union |
010521128 |
September 15, 2012 |
December 22, 2011 |
9, 36, 42, 45 |
|
payu |
European Union |
010805885 |
September 27, 2012 |
April 13, 2012 |
9, 36, 42, 45 |
|
PayU |
United States |
5158732 |
March 14, 2017 |
March 16, 2015 |
9, 36, 42 |
|
payu |
WIPO |
1140870 |
October 10, 2012 |
April 13, 2012 |
9, 36, 42, 45 |
The Disputed Domain Name was registered on July 8, 2017 and resolves to a website with competing goods and services.
Complainant contends as follows:
The Disputed Domain Name captures Complainant’s PAYU trademark in its entirety, simply adding the descriptive term “crypto” to the end of the trademark. This addition does not negate the confusing similarity between the Disputed Domain Name and Complainant’s trademark. It is well established that the addition of other terms to recognizable trademarks is not sufficient to overcome a finding of confusing similarity pursuant to Policy, paragraph 4(a)(i).
The granting of registrations by the IPI, EUIPO and USPTO for the PAYU trademarks is prima facie evidence of the validity of the term “PAYU” as trademarks, of Complainant’s ownership of these trademarks, and of its exclusive right to use the PAYU trademarks in commerce on or in connection with the goods and/or services specified on each registration. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s trademark. Further, the pertinent WhoIs information identifies the Registrant Name as “Payu Crypto”. Even so, there is no evidence that Respondent has ever been commonly known by the relevant moniker “Payu Crypto”, apart from the Disputed Domain Name. Complainant has not found that Respondent has any registered trademark corresponding to the Disputed Domain Name. Complainant also conducted a search at “www.mca.gov.in”, and results show that “Payu Crypto” is not an incorporated business in India, the country where Respondent resides.
Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial or fair use of the Disputed Domain Name. On the website available at the Disputed Domain Name, Respondent offers an online platform for buying, selling, transferring, and storing digital currency, i.e., services, which directly compete with Complainant’s own offerings. See Annex 3 to the Complaint. Here, past UDRP panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant’s trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy, paragraph 4(c)(iii).
Respondent registered the Disputed Domain Name on July 8, 2017, which is after Complainant filed and registered its PAYU trademarks. See Annex 1 to the Complaint for Complainant’s trademark registrations. In addition, Respondent registered the Disputed Domain Name significantly after the registration of its Complainant’s <payu.com> domain name on July 3, 2002.
The Disputed Domain Name was registered and is being used in bad faith. Complainant and its PAYU trademarks are internationally known, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using this trademark since 2007, which is well before Respondent’s registration of the Disputed Domain Name on July 8, 2017. At the time of registration of the Disputed Domain Name, Respondent knew or should have known of the existence of the Complainant’s trademarks and that registration of domain names containing widely-known trademarks constitutes bad faith per se. In addition, Complainant has been a leading online payment service provider in 17 markets and 4 continents across the world. Complainant’s presence in high growth markets in Asia, Central and Eastern Europe, Latin America, the Middle East, and Africa further demonstrates its fame. While constructive notice alone may sometimes be regarded as insufficient to support a finding of bad faith, numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as is the case here.
Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy paragraph 4(b)(iii) because Respondent’s domain name is confusingly similar to Complainant’s trademarks and the website at the Disputed Domain Name offers competing services. In fact, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s or a competitor’s) website, and (vi) absence of any conceivable good faith use.”) All these criteria apply in the present case, which makes it unquestionable that Respondent registered and is using the Disputed Domain Name in bad faith.
Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. See WIPO l Overview 3.0 atsection 3.6 (“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”). Respondent even ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name.
On balance of the facts set forth above, it is more likely than not that Respondent knew of and targeted Complainant’s trademark.
Respondent did not reply to Complainant’s contentions. On July 7, 2018, Satya Prakash sent an email to the Center – without copy to Complainant – stating the following:
“Subject: Re: (CJ) D2018-1227 <payucrypto.com> Notification of Respondent Default. Hi, Apologies for late response on this. I have just gone through email and related concerns regarding domain name (payucrypto.com). Wanted to bring to your notice that due to some medical issues I was not in touch of my inbox. I have just seen your previous email as well and will go through in details. Just wanted to request you to give 10-15 days from now to respond back on your email and concerns. I need some time to go through the shared docs and details. Also, my intentions are not to use any domain name of any brand name. I would really appreciate your suggestions and advices for way out from this.
Looking forward for your positive responses.
Regards,”
By submitting printouts taken from the official trademark databases of India, the European Union, the United States, etc., Complainant has shown to the satisfaction of the Panel that it has rights in the PAYU trademark. See section 4 above.
The Panel notes that in the Disputed Domain Name the PAYU trademark is incorporated in its entirety as a relevant element, with the addition of the descriptive or generic term “crypto” and the generic Top-Level Domain “.com”. It is well established that such kind of additions usually are inapt to distinguish a domain name from the mark it incorporates. See WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.). In the Panel’s view, the addition of the term “crypto” rather reinforces the impression of association with Complainant’s mark, since payment services – such as those provided by Complainant - usually require the support of cryptography for the safety of payments. For these reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
In the view of the Panel, the existing evidence supports Complainant’s contentions as to Respondent’s lack of rights legitimate interests in the disputed domain name. In the first place, the Registrar, in its reply to the Center’s request of contact information for the Disputed Domain Name, provided WhoIs data indicating that Respondent’s name is “Payu Crypto”. In this regard, the Panel notes that “being commonly known” is not a subjective impression, but instead is an objective reality, because it depends on the recognition of a name by other people. There is no evidence of any external recognition. In addition, the sender of Respondent’s email of July 7, 2018 to the Center is “Satya Prakash”. See section 6.A. above. In sum, nothing on the case file indicates that Respondent is commonly known by the disputed domain name. Thus, Policy, paragraph 4(c)(ii) does not apply.
Complainant also has shown that the website at the disputed displays a text stating that it is a secure online platform for buying, selling, transferring and storing digital currency. The Panel notes that this offering is directly competing with the services offered by Complainant, and is an attempt at extracting a profit from Internet users presumably looking for Complainant’s payment platform covered by the PAYU trademark. As a consequence, Respondent’s use of the Disputed Domain Name is neither in connection with a bona fide offering under Policy, paragraph 4(c)(iii), nor a legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers.
In sum, Complainant has made a prima facie case that Respondent does not have any right to or legitimate interests in the Disputed Domain Name. For its part, Respondent did not reply to Complainant’s cease and desist letter dated April 19, 2018 and its two reminders, dated April 26 and May 3, 2018. Respondent also failed to reply to the Complaint. In its only communication in this proceeding, Respondent did not provide the Panel with any explanation of its reasons for having registered the Disputed Domain Name, and of the use given to it.
From these facts and circumstances, the Panel concludes that Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
Complainant has shown that its registrations for the PAYU trademark predate the registration of the Disputed Domain Name by several years. In particular, the Panel refers to Complainant’s registration in India, the country of residence of Respondent, predating the registration of the Disputed Domain Name by almost three years. See section 4 above. In addition, Complainant has provided two press articles published on December 25, 2016 and April 26, 2017 in The Economic Times, that is before the registration of the Disputed Domain Name. The articles report from Hyderabad and Mumbai on Complainant’s partnership with Unocoin, a Bitcoin company, allowing users to buy and sell cryptocurrency by using the PAYU payment gateway. See Annex 8 to the amended Complaint. Further, on the website at the Disputed Domain Name, Respondent describes its website as a secure online platform for buying, selling, transferring and storing digital currency. In other words, Respondent is using the Disputed Domain Name to offer services directly competing with those offered by Complainant under its PAYU trademark. Annex 3 to the amended Complaint.
These facts clearly indicate that Respondent must have known of, and targeted Complainant, its PAYU mark and services at the time of registering its Disputed Domain Name. In the circumstances of this case, this means that the registration of the Disputed Domain Name was in bad faith.
In addition, by using the Disputed Domain Name as shown, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. This is a circumstance of registration and use in bad faith pursuant to Policy, paragraph 4(b)(iv).
The Panel concludes that the Disputed Domain Name was registered and is being used in bad faith.
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, <payucrypto.com>, be transferred to Complainant
Roberto Bianchi
Sole Panelist
Date: July 27, 2018