PayPal, Inc. v roberttom, tiktokonlinshop

WIPO Case No. DSC2024-0001

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
PayPal, Inc. v. roberttom, tiktokonlinshop

Case No. DSC2024-0001

1. The Parties

The Complainant is PayPal, Inc., United States of America (“United States”), represented by Stobbs IP

Limited, United Kingdom.

The Respondent is roberttom, tiktokonlinshop, Cambodia.

2. The Domain Name and Registrar

The disputed domain name <paypal.sc> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2024. On December 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 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 December 23, 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 3, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 23, 2025. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on January 28, 2025.

The Center appointed Andrea Mondini as the sole panelist in this matter on January 30, 2025. 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 was founded in 1998 and is today a leading global online payment company. Its platform is available around the world.

The Complainant owns numerous trademark registrations in several jurisdictions, including:

TRADEMARK	JURISDICTION	REGISTRATION	REGISTRATION	INTERNATIONAL
NUMBER	DATE	CLASS
PAYPAL	United States	3069209	March 14, 2006	9
PAYPAL (logo)	Cambodia	KH/2016/59734	June 7, 2016	35

The Complainant holds the domain name <paypal.com> which was registered on July 15, 1999, and hosts its main website.

Because the Respondent did not file a Response, not much is known about the Respondent.

The disputed domain name was registered on July 29, 2024.

According to the evidence submitted with the Complaint, the disputed domain name has been used to redirect to an active website prominently displaying the Complainant’s trademark and purporting to offer financial services.

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.

Notably, the Complainant contends as follows:

The Complainant has approximately 426 million active users worldwide and its trademark PAYPAL is well- known around the world.

The disputed domain name is identical to the PAYPAL trademark in which the Complainant has rights,
because it incorporates this trademark in its entirety, and the addition of the country code Top-Level Domain
(“ccTLD”) “.sc” is merely a technical requirement not sufficient to prevent a finding of confusing similarity.

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The Respondent has no rights or legitimate interests in respect of the disputed domain name. The trademark PAYPAL has been extensively used to identify the Complainant and its services. The Respondent has not been authorized by the Complainant to use this trademark, is not commonly known by the disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name was redirected to websites imitating the Complainant’s website and used for phishing of personal identifying information which cannot constitute a use in connection with a bona fide offering of goods and services.

The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well-known trademark PAYPAL at the time it registered the disputed domain name, considering that the website posted under the disputed domain name uses the Complainant’s trademark and logo.

The Respondent is using the disputed domain name in bad faith by impersonating the Complainant and intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website in the sense of Policy, paragraph 4(b)(iv).

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

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 Panel finds the entirety of the PAYPAL mark is identically reproduced within the disputed domain name.

The addition of the ccTLD “.sc” in the disputed domain name is a standard registration requirement and as
such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). WIPO

Overview 3.0, section 1.11.1.

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

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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 for a complainant to prove that 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 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.

Panels have held that the use of a domain name for illegitimate activity such as here impersonating the
Complainant, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section
2.13.1.

Furthermore, the composition of the disputed domain name itself suggests a connection or implied affiliation between the Complainant and the Respondent which in fact does not exist.

Based on the available record, 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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the view of the Panel, noting that that the Complainant’s trademark predates the registration of the disputed domain name and considering that the Complainant’s trademark is well-known and that the disputed domain name resolves to a website featuring the Complainant’s trademark, it is inconceivable that

the Respondent could have registered the disputed domain name without knowledge of the Complainant’s
well-known trademark. In the circumstances of this case, this is evidence of registration in bad faith.

The impression given by this website would cause Internet users to believe that the Respondent is somehow associated with the Complainant when, in fact, it is not. The Panel holds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website in the sense of Policy, paragraph 4(b)(iv).

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Moreover, Panels have held that the use of a domain name for illegitimate activity such as in the present case impersonating the Complainant constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

Based on the available record, the Panel finds that the Complainant has established the third element of the

Policy with regard to the disputed domain name.

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 <paypal.sc> be transferred to the Complainant.

/Andrea Mondini/
Andrea Mondini
Sole Panelist
Date: February 5, 2025