WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Payoneer, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / John Mark, loan eru

Case No. D2020-3193

1. The Parties

The Complainant is Payoneer, Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / John Mark, loan eru, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <payoneer.help> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2020. On November 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2020, 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 the Complainant on November 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint December 1, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on December 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.

The Center appointed Fabrice Bircker as the sole panelist in this matter on January 4, 2021. 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.

4. Factual Background

The Complainant, Payoneer, Inc., is a financial services company founded in the United States in 2005 and operating online money transfer and digital payment services from a platform named PAYONEER and notably available through the <payoneer.com> domain name.

It processes cross-border payments in over 200 countries and territories, and it currently serves more than four million customers in over 35 languages.

The Complainant is the owner of many trademarks constituted with the PAYONEER denomination and protected worldwide, such as:

- United States trademark registration No. 3380029 for PAYONEER in class 36, filed on September 19, 2006, registered on February 12, 2008, and regularly renewed since then;

- International trademark registration No. 1303506 for PAYONEER in classes 9 and 36, registered on May 9, 2016, and notably protected in the European Union, Australia, Singapore, Turkey, Israel, Colombia, China, Ukraine, and Russian Federation.

The disputed domain name was registered on October 6, 2020.

At the time of drafting of the decision, it does not resolve to any active website.

According to the record of the case, the disputed domain name previously redirected to a parked website that displayed pay-per-click links promoting notably financial, payment, and e-commerce services.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant submits that the disputed domain name is identical to its PAYONEER trademark because it incorporates said trademark exactly, without alteration or addition, and because the generic Top-Level Domain (“gTLD”) <.help> can be disregarded for the purposes of analysis under the first UDRP element.

Rights or Legitimate Interests

The Complainant contends that to the best of its knowledge, the Respondent has no registered or unregistered trademark rights constituted with the “payoneer” term.

The Complainant adds that it has not licensed or authorized the Respondent to use domain names that feature the PAYONEER trademark.

The Complainant also submits that the Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services because it resolves to a parked page comprising pay-per-click (“PPC”) advertising links redirecting Internet users to various sites and services, some of which compete with the Complainant’s offerings.

Then, the Complainant contends that the Respondent is not known, nor has ever been known, as “payoneer”.

Besides, the Complainant puts forward that there is no plausible reason for the Respondent’s registration and use of the disputed domain name other than to profit from the goodwill of the PAYONEER brand.

The Complainant also argues that the Respondent is not 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 PAYONEER mark because the Complainant’s PAYONEER mark is globally distinctive and the Respondent is using the disputed domain name to redirect Internet users to various unrelated or competing sites via PPC links.

At last, the Complainant contends that the Respondent’s details are evidently false because its address simultaneously refers to a location in New York City and in the United Arab Emirates, which constitutes further evidence that the Respondent is not making a fair use of the disputed domain name.

Registered and Used in Bad Faith

The Complainant puts forward that its earliest PAYONEER trademark registration predates the disputed domain name’s registration by over 12 years. It also contends that it has accrued substantial goodwill and international recognition in its PAYONEER mark. In these circumstances and considering the identicality of the disputed domain name’s second level to the PAYONEER mark, the Complainant submits the Respondent was almost certainly aware of its rights.

The Complainant emphasizes that anyone with access to the Internet can find its PAYONEER trademark clearly on public trademark databases and that virtually all results on the first page from a Google search of the “payoneer” term pertain to it.

The Complainant also submits that it sent a cease and desist letter to the Respondent who did not reply, which may constitute further evidence that it lacks rights or legitimate interests in the disputed domain name and knowingly acted in bad faith.

Then, the Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s PAYONEER mark.

The Complainant contends that the Respondent’s use of its distinctive trademark in conjunction with the gTLD <.help> also constitutes evidence of its intention to create Internet user confusion because this gTLD is not widely known or used. Therefore, only Internet users aware of the Complainant’s offerings would type the disputed domain name into a URL bar, and such users would be doing so with a view to accessing a specific category of services (likely support-related, given the TLD’s connotations) pertaining to the Complainant. In these circumstances, the Complainant considers that the Respondent’s combination of the PAYONEER mark with the gTLD <.help> is indicative of a targeted attempt to capitalize on Internet-users confusion, in order to derive some commercial gain or unjustified benefit.

In addition, the Complainant submits that the Respondent has intentionally attempted to attract and deceive Internet users for commercial gain by hosting a site with pay-per-click links to various other sites and services, some of which compete with the Complainant’s offerings.

At last, the Complainant put forwards that the provision of false contact information beneath a privacy service is also an indication of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Taking the foregoing provisions into consideration the Panel finds as follows.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.

Annex 6 to the Complaint and to the amended Complaint shows trademarks registrations for PAYONEER in the name of the Complainant, in particular those detailed in Section 4. above.

Besides, there is no difficulty in finding that the disputed domain name <payoneer.help> is identical to the PAYONEER trademark since it consists in the reproduction of said trademark and because it is of common practice among the UDRP panels that gTLDs may be ignored for the purpose of assessing the identity or the confusingly similarity under the first element, as they play a technical function.

Consequently, the first element under the Policy set for by paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent], [the respondent’s] use of, or 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [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.

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant contends that it has not given its consent for the Respondent to use its PAYONEER trademark in a domain name registration or in any other manner.

Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name.

In addition, the disputed domain name is currently unused. Furthermore, before being deactivated, it redirected to a website featuring sponsored links promoting notably activities competing with those identified under the Complainant’s distinctive trademark. And, it is constant case-law that such a commercial use that unduly capitalizes on the value of a third party’s trademark, cannot create rights or legitimate interests in the disputed domain name for the purposes of the Policy (see WIPO Overview 3.0, section 2.9, or Payoneer, Inc. v. Jurgen Neeme, WIPO Case No. D2020-0137).

In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The burden of production now shifts to the Respondent to show that it does have some rights or legitimate interests.

The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith.

In the present case, the Panel notes that:

- the use of the PAYONEER trademark predates the registration of the disputed domain name by 15 years,

- “payoneer” is a coined word,

- the Complainant has accrued substantial goodwill and international recognition in its PAYONEER trademark, and another UDRP panel has already considered same as being well known in its industry in multiple countries (Payoneer, Inc. v. Jurgen Neeme, WIPO Case No. D2020-0137),

- a mere Google search on “payoneer” evidently reveals the Complainant’s rights,

- before being deactivated after the introduction of the present procedure, the disputed domain name was used for commercial gain, as it resolved to a website featuring pay-per-click links,

- the disputed domain name reproduces the Complainant’s trademark and some of the sponsored links which were displayed on the website to which it resolved were related to fields of activities where the Complainant intervenes, which was of a nature to create a likelihood of confusion with the Complainant’s PAYONEER trademark,

- the Respondent not only used a privacy service when he registered the disputed domain name, but he also provided the registrar with inaccurate contact details (the postal address simultaneously refers to a location in New York City and in the United Arab Emirates),

- the Respondent did not reply to the cease and desist which has been sent to him by the Complainant, and remained silent in the present procedure.

These elements clearly show that the Respondent was more than likely aware of the Complainant’s rights when it registered the disputed domain name.

Besides, it also results from the above that at the time of filing of the Complaint, when the disputed domain name redirected to an active website, it was used to attract Internet users for commercial gain by unduly capitalizing on the reputation and goodwill of the Complainant’s PAYONEER trademark, what is the situation encompassed by paragraph 4(b)(iv) of the Policy.

At last, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith use, not only because this deactivation seems purely opportunistic, but also because the present situation clearly falls within the doctrine of passive holding.

Indeed, all the relevant factors for applying the passive holding doctrine are met here: (i) the Complainant’s mark is intrinsically distinctive and enjoys a reputation, (ii) the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealed its identity and even used false contact details, and (iv) given all the above-mentioned findings and the fact that the disputed domain name exactly reproduces the Complainant’s prior trademark, any good faith use of said disputed domain name by the Respondent seems implausible (See WIPO Overview 3.0, section 3.3).

In conclusion, for all the reasons set out above, the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

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.help> be transferred to the Complainant.

Fabrice Bircker
Sole Panelist
Date: January 17, 2021