The Complainant is Payoneer, Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Jurgen Neeme, Estonia.
The disputed domain name <payoneer.club> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2020. On January 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2020, 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.
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, and the proceedings commenced on January 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2020.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on February 26, 2020. 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 states that it is a financial services company founded in the United States in 2005. It asserts that it specializes in providing online money transfer digital payment services particularly facilitating multi-national B2B payments. In this respect, the Complainant states that it processes cross border payments in over 200 countries, deals with over 150 local currencies and has over 4 million users as well as supporting over 35 languages. The Complainant also states that it has 14 physical locations around the world including in the United States, European Union, China, Japan, Republic of Korea, Philippines, Bangladesh and India.
The Complainant states that its online presence is of paramount importance to its reputation. It uses its official website “www.payoneer.com” to provide information about its services under the PAYONEER brand. Additionally, online users can sign up to use its services at that website.
The Complainant claims to be one of the leaders in its industry and states that it has acquired wide-spread consumer goodwill as a result of its 14 years use of the PAYONEER brand since 2005.
It also states that it has trademark registrations for PAYONEER in numerous jurisdictions including the following:
|
Trademark |
Origin |
Registration Number |
Date of Registration |
Class |
|
PAYONEER |
United States |
3380029 |
12-02-2008 |
36 |
|
PAYONEER |
United States |
3380030 |
12-02-2008 |
36 |
|
PAYONEER |
Japan |
5853785 |
27-05-2016 |
9, 35, 36, 42 |
|
PAYONEER |
International |
1303506 |
09-05-2016 |
9, 36 |
The Complainant’s trademarks are collectively referred to as “the PAYONEER Mark”.
In addition the Complainant registered the domain name <payoneer.com> in 2005 and has been actively using it since. It has also used its Payoneer brand to establish social media sites on Facebook, Twitter, Linkedin and YouTube.
The Respondent registered the disputed domain name <payoneer.club> on December 4, 2019 and resolves to a pay-per-click (“PPC”) website.
The Complainant asserts its rights in the PAYONEER Mark. The Complainant contends that the disputed domain name is identical to its PAYONEER Mark. It states that the disputed domain name clearly contains in its entirety without alteration or adornment the PAYONEER Mark.
The Complainant also asserts that the Respondent lacks a right or legitimate interest in the disputed domain name. In this respect the Complainant states that there is no evidence that the Respondent retains unregistered trademark rights to the term “PAYONEER”, nor has it received any license from the Complainant. The Complainant notes that the disputed domain name resolves to a PPC webpage containing links such as “Payoneer Account”, “Payoneer” and “Earn Paypal Money” which direct users to competitive websites. There is no bona fide offering of goods or services attached to the disputed domain name. Instead of using the disputed domain name in connection with a bona fide offering of services, the Complainant contends that the Respondent has deliberately used the distinctive and fanciful trademark in order to earn revenue.
The Complainant further claims that to the best of its knowledge the Respondent is not commonly known by the term PAYONEER. Accordingly the Complainant states that there is no plausible reason for the registration and use of the disputed domain name other than with the motive of keeping it from the Complainant and to take advantage of the goodwill and valuable reputation which attaches to the PAYONEER Mark and brand.
The Complainant contends that the Respondent is not making a legitimate noncommercial use of the disputed domain name. This is evidenced by the fact that the Respondent is generating monetary revenue through misleadingly diverting online users as a result of the disputed domain name being identical to the Complainant’s trademark. The Respondent is hosting PPC links of the disputed domain name which comprises of terms thematically similar to the Complainant’s sector.
The Complainant states that it has presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and that the burden of proof now shifts to the Respondent to show that he has rights or legitimate interests in the domain name.
Finally the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant points to the facts that its earliest trademark registration predates the creation date in the disputed domain name by 11 years and that substantial goodwill had been established since 2005 in the Payoneer brand. Any search which had been conducted on popular Internet search engines such as Google would have disclosed the Complainant’s brand and services as the first result.
The Complainant points to the fact that the Respondent has chosen to ignore a cease and desist letter. Further, the Complainant asserts that the Respondent has used the domain name in bad faith in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name in the circumstances where the Respondent has engaged in a pattern of such conduct.
The evidence of a pattern of bad faith registrations is based on the domain name portfolio of the Respondent. The Respondent is currently listed as the registrant of at least 33,695 domain names and has registered many domain names containing the registered trademark of a third party. The Complainant provides the following examples:
|
<addeco.co> |
ADDECO |
|
<applecloud.co> |
APPLE |
|
<facebooksearch.us> |
|
|
<worldplay.co> |
WORLDPAY |
Further, the Complainant points to the fact that the Respondent is a well-known cybersquatter who has been involved in five previous UDRP proceedings listed in the Complaint.
The use of PPC links by the Respondent on the disputed domain name is also claimed to be a clear attempt to generate a commercial gain particularly by misleading online users with the disputed domain name and subsequently re-directing these online users to third party websites.
Finally, the Complainant relies on evidence of the Respondent’s attempts to profit on the goodwill attached to the PAYONEER Mark and brand and that the disputed domain name is listed for sale on domain aftermarket sites. Further, the Complainant states that the website hosted on the disputed domain name itself advertises it for sale. While the offer to sell has not been made specifically to the Complainant, it is claimed that general offers for sale can be a contributory factor to finding bad faith.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of its trademark registrations of PAYONEER in the United States, Japan and as an international trademark. It has also provided evidence of its domain name registration incorporating the PAYONEER Mark. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the PAYONEER Mark. The Panel is also satisfied that the Complainant is well known in multiple countries as a provider of online money transfer and digital payment services, particularly facilitating multinational B2B payments.
As for the “.club” generic Top Level Domain (“gTLD”) suffix in the disputed domain name, section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that a Top Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element. Section 1.11.2 of the WIPO Overview 3.0 further states that the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLD’s”) as the ordinary meaning applied to a particular TLD would not necessarily impact assessment of the first element. See also the decision of Société Air France v Registration Private, Domains By Proxy, LLC / albuquerque Albuquerque, hwuaye, WIPO Case No. D2019-0191.
The Panel therefore accepts that the gTLD “.club” may be disregarded for the purposes of comparison under the first element. The term “club” does not give any distinctive character to the domain name, nor avoid identity or confusing similarity.
The Panel therefore finds that the disputed domain name is identical to the Complainant’s PAYONEER Mark and that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent to use its PAYONEER Mark and the Respondent is not a licensee of the Complainant.
In respect of the above, the Panel is entitled to have regard to the lack of any substantive response from the Respondent and the absence of any claim to rights in the disputed domain name.
In addition, the Complainant has provided as evidence, a screenshot showing that the disputed domain name resolves to a PPC webpage containing links such as “Payoneer Account”, “Payoneer” and “Earn Paypal Money”. Section 2.9 of the WIPO Overview 3.0 notes that panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.
Given that the commercial links shown on the website (to which the disputed domain name resolves) are related to competitive activities, the Panel concludes that the Respondent likely intended to capitalize on the reputation and goodwill of the Complainant’s PAYONEER Mark.
Again, the Panel is entitled to have regard to the lack of any substantive response from the Respondent and the absence of any claim to legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) The Panel is satisfied that the Complainant’s PAYONEER Mark is well known in its industry in multiple countries. As noted earlier, the Panel is also satisfied that the Respondent was and is aware of the Complainant and its PAYONEER Mark. This is evidenced by the fact that the disputed domain name links to competitive websites providing comparable services to the Complainant.
(ii) Further, even the most cursory search conducted by the Respondent prior to registering its name would clearly have found the Complainant’s website and trademark.
The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:
(i) The Complainant has provided evidence that the website (to which the disputed domain name resolves) is a PPC website which directs users to competitive websites. There was no bona fide offering of goods or services attached to the disputed domain name. The Respondent has made no submissions in these proceedings and so the Panel infers the Respondent has allowed the disputed domain name to be used with an intent to attract Internet users on its website by creating a likelihood of confusion with the Complainant’s trademark as to source, affiliation or endorsement.
(ii) The Respondent’s failure to reply to the cease and desist letter sent by the Complainant is further evidence of bad faith, given all the other circumstances of this case. See LEGO Juris A/S v Thai Dang, WIPO Case No. D2018-1929.
(iii) The Panel is also satisfied that the listing of the disputed domain name for sale on domain aftermarket sites constitutes evidence of bad faith use. See The Board of Regents of the University of Nebraska v. Bill Saedlo, WIPO Case No. D2000-0154.
Accordingly, the Panel, finds that in paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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 <payoneer.club> be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: March 5, 2020