Payoneer, Inc. v Soho Paaul

WIPO Case No. D2024-0585

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Payoneer, Inc. v. Soho Paaul

Case No. D2024-0585

1. The Parties

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

Ltd., United Kingdom.

The Respondent is Soho Paaul, Spain.

2. The Domain Name and Registrar

The disputed domain name <payoneer.pro> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2024. On February 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2024, 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 (Redacted for Privacy, GDPR Masked) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2024, 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 on February 13, 2024.

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 February 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2024.

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The Center appointed Tommaso La Scala as the sole panelist in this matter on March 19, 2024. 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 is a financial services company founded in the United States in 2005, specialized in providing online money transfer and digital payment services, particularly facilitating multinational B2B payments.

PAYONEER has more than 2,000 employees across 24 global offices, it processes cross-border payments
in over 190 countries and territories and serves more than five million customers in 35+ languages. The
Complainant’s 2022 revenue was USD 627.6 million and its volume stood at USD 61.3 billion.

The Complainant is, therefore, quite known in its sector and it is also the proprietor of several relevant trademarks worldwide for PAYONEER, including:

- United States registration no. 3380029, registered on February 12, 2008

- Australian registration no. 1784751, registered on May 9, 2016

- International registration no. 1303506, registered on May 9, 2016

The disputed domain name <payoneer.pro> was registered on September 29, 2023, and resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainant is the owner of several earlier trademark registrations for PAYONEER and it is widely known by the public since the early ‘00s.

The disputed domain name exactly reproduces the mark PAYONEER.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant confirms it has never licensed or in any way authorized the Respondent to register or use the PAYONEER trademark in any manner.

The disputed domain name was registered and is being used in bad faith, since it has not been used in connection with a bona fide offering of goods or services (as it is passively held).

B. Respondent

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

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6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain name consists of the word “PAYONEER”, exactly the same as the PAYONEER trademark.

The Panel finds the first element of the Policy has been clearly established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing (not even after a Cease & Desist letter sent by the Complainant itself) and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name appears to be passively held. As indicated in several other similar UDRP decisions and considering Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as a guide (WIPO Overview 3.0, Section 3.3), this does not cure the Respondent’s bad faith given the overall circumstances here, specifically the quite renown of the Complainant’s PAYONEER trademark. Further, there is no evidence of actual, plausible or contemplated good faith use that can be conceived by the Respondent in registering the disputed domain name, which does not consist of a generic or descriptive word. The non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding.

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The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the

Panel’s view that the disputed domain name is being used in bad faith.

Thus, the Panel finds that the disputed domain name has been registered and is also being used in bad faith.

The Panel finds the third element of the Policy has been established.

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.pro> be transferred to the Complainant.

/Tommaso La Scala/
Tommaso La Scala
Sole Panelist
Date: April 2, 2024