The Complainants are Payoneer, Inc. (the “First Complainant”), United States of America (“United States”) and Payoneer Europe Limited (the “Second Complainant”), Ireland, represented by SafeNames Ltd., United Kingdom.
The Respondent is Korchia Thibault, Quinv S.A., Luxembourg.
The Registry of the disputed domain name <payoneer.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is EURid vzw.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On October 1, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On October 3, 2019, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2019. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was November 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2019.
The Center appointed Marilena Comanescu as the sole panelist in this matter on November 28, 2019. 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 ADR Rules, Paragraph B(5).
The Complainant Payoneer, Inc. is a financial services company founded in 2005 in the United States, and the Second Complainant, Payoneer Europe Limited, is a wholly-owned subsidiary of the First Complainant. The Complainants are hereinafter jointly referred to as “the Complainant”.
The Complainant specializes in providing online money transfer and digital payment services and, according to its allegations, currently, the Complainant has over four million users, supports over 35 languages and has 14 established physical locations around the world.
Further on, the Complainant received numerous awards and accolades since its inception and has therefore acquired widespread consumer goodwill.
The Complainant is the proprietor of several trademarks for PAYONEER, such as the International Trademark Registration No. 1303506 for PAYONEER (word mark) designating, inter alia, the European Union, registered on May 9, 2016, for goods and services in classes 9 and 36.
The Complainant’s main website is available at “www.payoneer.com” and was created in 2005.
The disputed domain name was registered on July 5, 2007, and, according to the evidence provided in the Complaint, it resolved to a parking page website with sponsored links (“PPC”) offering similar goods and services to those offered by the Complainant. Also, the disputed domain name was offered for public sale.
The Complainant contends that the disputed domain name is identical to its trademark PAYONEER, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered or is using the disputed domain name in bad faith.
The Respondent was involved in prior domain name disputes under the DRS Policy, decided against it.
The Respondent holds other domain names comprising third-parties trademarks, including PAYONEER, such as <payoneer.net>, <payoneer.de>, <payoneer.it>, <payoneer.nl>; ADIDAS: <adidastenis.com>, <adidastaekwondo.com>; GOOGLE: <googleaddress.com>; MARRIOTT: <marriottthotels.com>; and DISNEY: <disneychannal.com>, <disneycheenel.com>.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in its Complaint, the Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following:
A. that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/or Community law; and either
B. that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or
C. that the disputed domain name has been registered or is being used in bad faith.
Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) states that “[a] registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that [domain] name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law, such as the rights mentioned in Article 10(1)”.
Article 10(1) of the Regulation refers to, inter alia “registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names (…)”.
Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or Community law”.
The Complainant holds inter alia an International trademark designated in the European Union for the word mark PAYONEER.
The disputed domain name reproduces the Complainant’s trademark PAYONEER in its entirety.
It is well established under the ADR Rules that the country code Top-Level Domain (“ccTLD”) “.eu” may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
The Panel therefore finds that the disputed domain name <payoneer.eu> is identical to the Complainant’s trademark PAYONEER as provided under Paragraph B(11)(d)(1)(i) of the ADR Rules.
Under the ADR Rules, the burden of proof for the lack of rights or legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent (including any potential evidence of rights or legitimate interests) is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to submit appropriate evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.
The Complainant contends that it has no relationship or association with the Respondent, and has not authorized the Respondent to use or include in a domain name the PAYONEER trademark, that the Respondent is not commonly known by the disputed domain name and is not using it in connection with the offering of goods or services, or making a legitimate noncommercial or fair use of it without the intent for commercial gain. Rather, the disputed domain name is used for a PPC page and the Respondent chose not to respond to the present complaint. Thus, the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name.
If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Panel could not find any evidence for the examples described in Paragraph B(11)(e) of the ADR Rules that (i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or that it has made demonstrable preparations to do so; (ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that (iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.
The disputed domain name <payoneer.eu> reproduces the Complainant’s trademark PAYONEER and it is used in connection with a PPC website promoting goods and services competing with those offered by the Complainant on its official website.
The Respondent was involved in at least two prior domain name dispute cases under the UDRP Rules and the DRS Policy where the panels decided against the Respondent.
Furthermore, the Respondent holds other domain names including, without authorization, the PAYONEER trademark.
For all the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name as provided under Paragraph B(11)(d)(1)(ii) of the ADR Rules.
Under Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (a) lack of rights or legitimate interests and (b) registration or use in bad faith are alternative requirements, however, for completeness, the Panel has also considered the bad faith element.
It follows from the findings as set out above under Paragraph B(11)(d)(1)(ii) of the ADR Rules that the Respondent has used the disputed domain name in order to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark, which is recognized by Community law, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the products offered for sale therein, within the meaning of Paragraph B(11)(f)(4) of the ADR Rules.
Therefore, the Panel finds that the Respondent’s actions described above are evidence of bad faith as provided under Paragraph B(11)(d)(1)(iii) of the ADR Rules.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <payoneer.eu> be transferred to the Second Complainant, i.e. Payoneer Europe Limited.1
Marilena Comanescu
Sole Panelist
Date: December 15, 2019
1 The remedy sought is transfer of the disputed domain name to the Second Complainant. As the Second Complainant is established and located within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name, as set out in Article 4(2)(b) of the Regulation (EC) No 733/2002.