Paylib Services v Burdzenidze Tatyana Aleksandrovna

WIPO Case No. D2023-0216

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Paylib Services v. Burdzenidze Tatyana Aleksandrovna

Case No. D2023-0216

1. The Parties

The Complainant is Paylib Services, France, represented by ARAMIS Société d’Avocats, France.

The Respondent is Burdzenidze Tatyana Aleksandrovna, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <info-paylibs.online> and <paylib-info.online> are registered with

NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2023.

On January 18, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 18, 2023, 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 paragraph 5, the due date for Response was February 16, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on February 17, 2023.

The Center appointed Assen Alexiev as the sole panelist in this matter on March 1, 2023. 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.

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4. Factual Background

The Complainant was incorporated in 2010 as a result of the formation of a consortium of several French

banks for the provision of a range of electronic payment services under the brand “Paylib”, including “Paylib

Online” - an online payment service available on Android and iOS, “Contactless Paylib” - a contactless NFC

payment service, available on Android, and “Paylib Between Friends” - a payment service available on

Android and iOS between individuals’ components of Paylib, allowing users to initiate simplified and instant

transfers between them using their phone numbers. The Paylib services have since been adopted by the

majority of French banks.

The Complainant is the owner of the European Union trademark PAYLIB with registration No. 018208901,

registered on August 7, 2020, for services in International Classes 36 and 38 (the “PAYLIB trademark”).

The Complainant is also the owner of the domain names <paylib.fr>, registered on May 27, 2013, and

<paylib.net>, registered on June 14, 2013, among others.

The disputed domain names were registered on October 31, 2022. They are currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names are confusingly similar to its PAYLIB trademark,

because they reproduce this trademark, the Complainant’s trade name and its domain names. The

Complainant notes that the disputed domain names contain the dictionary word “info” which reinforces the

link with the Complainant’s PAYLIB trademark and is attractive to the public wishing to learn about the

Complainant’s services.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain names, because all relevant rights are held exclusively by the Complainant. The Complainant notes

that a keyword search with “Paylib” in the French trademark register and in the WIPO trademark database

shows that there are no other registered PAYLIB trademarks except the ones owned by the Complainant. to use the PAYLIB trademark with respect to domain names or in any other way, and there is no explanation

of the choice the Respondent of the word “Paylib”, other than to mislead the public and to free-ride on the

Complainant’s investments. The Complainant points out that the websites at the disputed domain names

are not accessible and that the disputed domain name <info-paylibs.online> is identified by the Google
Chrome browser as dangerous, misleading or deceptive and likely to be used for phishing purposes.

The Complainant contends that the disputed domain names were registered and are being used in bad faith, as they have never been associated with a website, and one of them is even blocked by Internet browsers. According to the Complainant, the passive holding of the disputed domain names amounts to registration and use in bad faith. The Complainant maintains that the disputed domain names create the illusion of official websites providing information about the Complainant and its Paylib services. The Complainant points out that the associated websites do not disclose that they have no relationship with the Complainant. The Complainant submits that although the disputed domain names do not resolve to any website or other online presence, it is not possible to conceive of any plausible actual or contemplated active use of them by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer

protection legislation, or an infringement of the Complainant’s rights under trademark law.

B. Respondent

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

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6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i)        each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)      the disputed domain names were registered and are being used in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements

and allegations contained in the complaint and include any and all bases for the Respondent (domain name

holder) to retain registration and use of the disputed domain name […].”

The Respondent has however not submitted a Response or disputed the Complainant’s contentions and

evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the PAYLIB trademark and has thus established its rights in this trademark for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate

circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the

comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.online” gTLD of the disputed domain names.

Each of the disputed domain names incorporates the PAYLIB trademark in combination with the dictionary

word “info”, separated by a hyphen. The PAYLIB trademark is clearly recognizable in each of the disputed

domain names. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant
trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a

finding of confusing similarity under the first element. The fact that one of the disputed domain names

incorporates “paylibs” rather than “paylib” does not change this conclusion, as it appears as the plural form of

the PAYLIB trademark and does not prevent the trademark from being recognizable.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the PAYLIB trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

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 section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, as the Complainant has not authorized it to use the PAYLIB trademark, and the Respondent has no relevant trademark rights. Thus, the Complainant has established a prima facie case that the Respondent

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lacks rights or legitimate interests in the disputed domain names.

The Respondent has not submitted a Response and has not provided any arguments or evidence why it should be considered as having rights or legitimate interests in the disputed domain names, which are

confusingly similar to the PAYLIB trademark and to the Complainant’s trade name and official domain

names, and are inactive. The name of the Respondent bears no similarity to the disputed domain names.

In view of the above, and in the lack of any evidence or allegation to the contrary, the Complainant’s prima

facie case has remained unrebutted.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the

purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet

users to your website or other online location, by creating a likelihood of confusion with the complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or

service on your website or location.”

The disputed domain names incorporate the PAYLIB trademark in combination with the dictionary word

“info”, and this combination creates an appearance that the disputed domain names refer to online resources

of information about the Complainant’s Paylib services. They are confusingly similar not only to the PAYLIB

trademark, but also to the Complainant’s trade name and its official domain names.

The disputed domain names are inactive. At the same time, the PAYLIB trademark is registered and is being widely used in relation to banking services, which include the processing of sensitive personal and financial information of the users of such services. The Respondent has not submitted a formal Response and has not provided any evidence of actual or contemplated good-faith use of this disputed domain names. In view of these circumstances, the Panel is not aware of any use of the disputed domain names that would

not be illegitimate without the Complainant’s consent, and accepts that the non-use of the disputed domain

names does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the
WIPO Overview 3.0.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith.

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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 names <info-paylibs.online> and <paylib-info.online> be transferred to the Complainant.

/Assen Alexiev/

Assen Alexiev

Sole Panelist
Date: March 15, 2023