Complainant is MIH PayU B.V. of Hoofddorp, Netherlands, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Anindya Sundar Das of Kolkata, West Bengal, India.
The disputed domain name <payunow.info> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 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 15, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 19, 2018.
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 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 18, 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 is owned by the Naspers group. Naspers also owns PayU India. “PayUnow” is a PayU India platform enabling users to accept payments from their customers directly into their bank accounts. Complainant’s “PayUnow” products and services are accessible at the website “www.payunow.com”. Complainant has registered the <payunow.com> domain name and maintained the corresponding website since April 5, 2016. According to Complainant, over 300,000 businesses in India use Complainant’s PAYU services for collecting payments
Complainant owns the following trademark registrations:
MARK | JURISDICTION | REGISTRATION NUMBER | REGISTRATION DATE | INTERNATIONALCLASS(ES) |
|
PAYU (stylized) |
India |
2832695 |
October 27, 2014 |
36 |
|
PAYU |
European Union |
010521128 |
September 15, 2012 |
9, 36, 42, 45 |
|
PAYU (stylized) |
European Union |
010805885 |
September 27, 2012 |
9, 36, 42, 45 |
|
PAYU (stylized) |
United States |
5158732 |
March 14, 2017 |
9, 36, 42 |
|
PAYU (stylized) |
International |
1140870 |
October 10, 2012 |
9, 36, 42, 45 |
The disputed domain name was registered on February 26, 2018.
The disputed domain name previously resolved to a website offering various payment services, including for mobile telephone credit, television subscriptions and utility bill payments. Currently, the disputed domain name does not resolve into any active website.
In its Complaint, Complainant contends as follows:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The disputed domain name captures, in its entirety, Complainant’s PAYU trademark, simply adding the descriptive term “now”. This addition does not negate the confusing similarity between the disputed domain name and Complainant’s trademark. In fact, the addition of the term “now” is closely linked and associated to Complainant’s brand and trademark. More specifically, PayUnow is Complainant’s brand in India. Complainant even owns the domain name <payunow.com> and maintains a website at this domain name that features Complainant’s PayUnow products and services. Thus, the addition of this term serves to underscore and increase the confusing similarity between the disputed domain name and Complainant’s trademark. Moreover, the content of the website at the disputed domain name features Complainant’s PAYU trademarks and a money transfer interface, all of which reinforces the confusing similarity to Complainant’s own activity and trademark.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the disputed domain name. According to the corresponding WhoIs data, the Registrant of the disputed domain name is “Anindya Sundar Das”, a name that does not resemble the disputed domain name in any manner. Thus, Respondent cannot be regarded as having acquired rights to or legitimate interests within the meaning of paragraph 4(c)(ii) of the Policy.
Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s trademark.
Respondent is not making a bona fide offering of goods or services or a legitimate, noncommercial fair use of the disputed domain name. Respondent’s inclusion on the website at the disputed domain name of Complainant’s PAYU trademarks, including Complainant’s “PayUnow” brand in India, is a direct effort to take advantage of the fame and goodwill that Complainant has built in its brand.
Respondent is also imitating Complainant by displaying Complainant’s trademarks. Moreover, on the website at the disputed domain name, Respondent offers services that directly compete with Complainant’s own offerings. Here, Respondent offers a “quick paced money transfer interface”.
Respondent registered the disputed domain name on February 26, 2018, which is after Complainant filed and registered its PAYU trademarks, and also significantly after Complainant’s registration of its <payu.com> domain name on July 3, 2002 and <payunow.com> domain name on April 5, 2016.
The disputed domain name was registered and is being used in bad faith. Complainant and its PAYU trademarks are known internationally, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using this trademark since 2007, well before Respondent’s registration of the disputed domain name.
By registering a domain name that incorporates Complainant’s PAYU trademarks and adds the descriptive term “now”, Respondent has created a domain name that is confusingly similar to Complainant’s trademarks, as well as its Indian “PayUnow” brand, <payu.com> and <payunow.com> domain names. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Further, Respondent has included Complainant’s trademarks in its website and provides a money transfer interface, which is closely related to Complainant’s business. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” Complainant’s brands at the time the disputed domain name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Stated differently, the PAYU mark is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products […] its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.
Respondent creates a likelihood of confusion with Complainant and its trademarks by using Complainant’s PAYU trademarks and Complainant’s “PayUnow” brand in India in its website, with Respondent then attempting to profit from such confusion offering similar products and services. As such, Respondent is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion. The impression given by the disputed domain name and its website would cause consumers to believe Respondent is somehow associated with Complainant when, in fact, it is not. Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, and Respondent is thus using the fame of Complainant’s trademarks to improperly increase traffic to the website listed at the disputed domain name for Respondent’s own commercial gain. It is well established that such conduct constitutes bad faith.
Further, Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under the Policy, paragraph 4(b)(iii), because Respondent’s disputed domain name is confusingly similar to Complainant’s trademarks and the website at the disputed domain name offers competing services.
Respondent did not reply to Complainant’s contentions.
With its Complaint, Complainant submitted printouts taken from the official trademark databases of India, European Union, United States and WIPO. Thus, 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 Complainant’s PAYU trademark is incorporated in its entirety as a relevant element, with the addition of the descriptive term “now” and the Top-Level Domain “.info”. Such additions do not avoid a finding of confusing similarity between the disputed domain name and the mark it incorporates. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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”).
For these reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant says that it has not given any license or authorization to Respondent to register a domain name incorporating Complainant’s trademark, and the Panel does not see any contrary evidence.
Complainant also has shown that the website at the disputed domain name contains offerings of payment services, such as mobile recharge, payment of regular utilities bills, recharge of direct-to-home television subscriptions, et cetera, including a “quick paced money transfer interface”. Respondent made this offering by including on the website at the disputed domain name Complainant’s PAYU trademarks, including Complainant’s “PayUnow” brand in India. The Panel notes that the services thus offered by Respondent are similar to, and compete with Complainant’s services offered under its PAYU trademark. Such use of Complainant’s mark amounts to impersonation of Complainant by Respondent. The Panel agrees with Complainant that this use of the disputed domain name is neither a bona fide offering of goods or services under Policy, paragraph 4(c)(i), nor a fair or legitimate noncommercial use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers under Policy, paragraph 4(c)(iii).
The Panel also notes that according to the corresponding WhoIs data, the Registrant of the disputed domain name is “Anindya Sundar Das”, and there is no evidence that Respondent is known – commonly or otherwise – by the disputed domain name. Thus, Policy paragraph 4(c)(ii) is inapplicable.
In the view of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to Respondent to provide arguments and evidence in its own favor. See WIPO Overview 3.0, section 2.1. (“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”).
The Panel also notes that Respondent failed to provide any allegations, arguments or evidence in its own favor. Moreover, the website at the disputed domain name presently appear to be inactive. In fact, on July 31, 2018, the Panel attempted to connect its browser to the website at the disputed domain name. This attempt resulted in a message stating “Not Found – HTTP Error 404. The requested resource is not found”.
In view of all of the above, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
Complainant has shown that its registration for the PAYU trademark in India – the country of residence of Respondent – predates the registration of the disputed domain name by almost four years. Complainant also has shown that the website at the disputed domain name, which is confusingly similar to Complainant’s PAYU mark, has offered payment services similar to, and in competition with, the services provided by Complainant in India and elsewhere under its PAYU trademark. This means that at the time of registering the disputed domain name, Respondent knew very well of, and targeted, Complainant, its payment services and the PAYU mark. In the circumstances of this case, the Panel finds that the registration of the disputed domain name was in bad faith.
Complainant also has provided an (undated) printout of the website at the disputed domain name showing that Respondent, on the website at the disputed domain name, has been offering various payment services, such as mobile recharge, payment of regular utilities bills, recharge of direct-to-home television subscriptions, et cetera, without any authorization or license from Complainant. The website also displays a form to be filled by Internet users, enabling Respondent to elicit valuable personal information, such as name, address, phone number, et cetera, from Internet users visiting the website. In the view of the Panel, Respondent, by using the disputed domain name as shown, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website, or of a product or service on its website. This is a circumstance of registration and use in bad faith under Policy, paragraph 4(b)(iv).
In addition, the Panel notes that Respondent failed to respond to the Complaint, and to provide any explanation for its use of the disputed domain name.
Lastly, the Panel notes that the courier entrusted by the Center could not deliver the Written Notice of the Complaint because Respondent appears to have provided incomplete contact details to the Registrar at the time of registering the disputed domain name. This circumstance also is suggestive of bad faith. See Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520 (providing false contact details regarded as an indication of a registration and use in bad faith).
The Panel concludes that Respondent has registered and used the disputed domain name 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 <payunow.info> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: July 31, 2018