Stripe, Inc. v Domains By Proxy, LLC / Hernando Sabrio, Shift4Shop

WIPO Case No. D2022-2439

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Stripe, Inc. v. Domains By Proxy, LLC / Hernando Sabrio, Shift4Shop

Case No. D2022-2439

1. The Parties

Complainant is Stripe, Inc., United States of America, represented by Taft, Stettinius & Hollister, LLP,

United States of America.

Respondent is Domains By Proxy, LLC / Hernando Sabrio, Shift4Shop, United States of America (“U.S.”).

2. The Domain Name and Registrar

The disputed domain name <stripeey.com> (the “Disputed Domain Name”) is registered with GoDaddy.com,

LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2022.

On July 6, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 6, 2022, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2022. Respondent did not submit any response. Accordingly, the Center notified

Respondent’s default on August 3, 2022.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 5, 2022. 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

Complainant states that it is “a technology company that builds economic infrastructure for the internet”; that

“[m]illions of businesses of every size — from new startups to public companies — use [Complainant’s]

software to accept payments and manage their businesses online”; that its service “is available for

businesses in over 40 countries, including the United States”; and that it operates a website using the

domain name <stripe.com>.

Complainant states, and provides documentation in support thereof, that it is the registrant of two U.S.

trademark registrations for the mark STRIPE (the “STRIPE Trademark”): U.S. Reg. No. 4,451,679

(registered December 17, 2013) for use in connection with, inter alia, “[f]inancial services, namely, online
credit card payment and transaction processing and transmission of bills and payments thereof”; and U.S.

Reg. No. 6,318,002 (registered April 13, 2021) for use in connection with, inter alia, “[m]erchant services, namely, payment transaction processing services”.

The Disputed Domain Name was created on September 4, 2021. According to Complainant, and documentation provided by Complainant in support thereof, Respondent is using the Disputed Domain Name

in connection with a website that offers “mobile payment solutions”. Complainant also states, but does not

provide any documentation in support thereof, that “Respondent’s real intention appears to be a phishing

and fraud website, which harvests personal information of confused consumers”.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the STRIPE Trademark because, inter alia,

“it consists of Complainant’s ‘well-known’ STRIPE Mark in its entirety with the addition of the letters ‘ey’ at

the end of ‘stripe’”; and “[t]he use of the letters ‘ey’ at the end of Complainant’s trademark ‘stripe’ does not

prevent a finding of confusing similarity between the Disputed Domain and the Complainant’s well-known

STRIPE Mark”.

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because,

inter alia, the WhoIs record shows that Respondent “has never been commonly known by the STRIPE

[Tradem]arks, nor any variation thereof”; “has not granted Respondent any license, permission, or

authorization by which it could own or use any domain name registrations, which are confusingly similar to

any of the STRIPE [Tradem]arks”; “Respondent is using the Disputed Domain to intentionally mislead

internet users into thinking that the Disputed Domain is authorized by or associated with Complainant and
potentially causing internet users to divulge personal information or other compromising information by

portraying a false association with the Complainant by using an infringing modification of the well-known

STRIPE [Tradem]ark, that being, ‘stripeey,’ while also using similar branding as compared to Complainant

such as, colors, font, and general stylization, as shown below on the website of the Disputed Domain”;

“Respondent’s use of the Disputed Domain is highly likely to confuse internet users into falsely thinking

Respondent is somehow authorized by or affiliated with the Complainant and to disrupt Complainant’s business”; “Respondent blatantly attempts to associate itself with Complainant and Complainant’s business

by purportedly offering competing services”; “Respondent is intentionally attempting to trade off the goodwill

and notoriety of Complainant”; and “Respondent’s real intention appears to be a phishing and fraud website,

which harvests personal information of confused consumers”.

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[t]here

is no conceivable reason for Respondent to have registered the Disputed Domain other than to trade off the

reputation and goodwill of the ‘widespread reputation’ of the STRIPE [Tradem]ark and to disrupt

Complainant’s business”; “[t]he makeup of the Disputed Domain itself and the nature of use evidences bad

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faith registration and use”; “[u]se of the Disputed Domain for what appears to be a phishing website is

representative of clear-cut bad faith registration and use”; “Respondent is using the Disputed Domain that

consists of an infringing modification of Complainant’s well-known STRIPE [Tradem]ark to capitalize on

internet users’ efforts to find Complainant’s website”; “Respondent’s intent to mislead internet users is

evidenced by the content located on the website of the Disputed Domain”; and “mail exchange records have

been setup by the Respondent on the Disputed Domain, which is a clear indication that Respondent has made preparations to circulate emails that could potentially contain spam or fraudulent phishing emails,

thereby presenting a grave risk to consumers”; and “Respondent’s use of a privacy service to conceal its

identity, standing alone, may not be sufficient evidence of bad faith, but it may be taken into consideration”.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the STRIPE Trademark. In addition, previous panels in decisions cited by Complainant have reached the same conclusion. See, e.g., Stripe, Inc. v. Privacy Service Provided by Withheld for Privacy ehf / Joy

Okoro, WIPO Case No. D2021-2288 (the STRIPE Trademark is “a well-known trademark”); and Stripe, Inc.

v. w smart, AG and 杨坤 (yang kun), WIPO Case No. D2021-2459 (“Complainant has a widespread

reputation in the STRIPE marks with regard to its products and services”).

As to whether the Disputed Domain Name is identical or confusingly similar to the STRIPE Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e.,

“stripeey”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’)

is viewed as a standard registration requirement and as such is disregarded under the first element

confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 1.11.1.

As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety

of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain

name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP

standing.” Further, as set forth in section 1.8 of WIPO Overview 3.0: “Where the relevant trademark is

recognizable within the disputed domain name, the addition of other terms (whether descriptive,

geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under

the first element.”

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed

Domain Name because, inter alia, the WhoIs record shows that Respondent “has never been commonly known by the STRIPE [Tradem]arks, nor any variation thereof”; “has not granted Respondent any license,

permission, or authorization by which it could own or use any domain name registrations, which are

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confusingly similar to any of the STRIPE [Tradem]arks”; “Respondent is using the Disputed Domain to

intentionally mislead internet users into thinking that the Disputed Domain is authorized by or associated with information by portraying a false association with the Complainant by using an infringing modification of the

well-known STRIPE [Tradem]ark, that being, ‘stripeey,’ while also using similar branding as compared to

Complainant such as, colors, font, and general stylization, as shown below on the website of the Disputed

Domain”; “Respondent’s use of the Disputed Domain is highly likely to confuse internet users into falsely

thinking Respondent is somehow authorized by or affiliated with the Complainant and to disrupt

Complainant’s business”; “Respondent blatantly attempts to associate itself with Complainant and

Complainant’s business by purportedly offering competing services”; “Respondent is intentionally attempting

to trade off the goodwill and notoriety of Complainant”; and “Respondent’s real intention appears to be a

phishing and fraud website, which harvests personal information of confused consumers”.

WIPO Overview 3.0, section 2.1, states: “[w]hile 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 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.”

The Panel finds that Complainant has established its prima facie case and without any evidence from
Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the

Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 the registrant’s

documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for

commercial gain, Internet users to the registrant’s 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 the

registrant’s website or location or of a product or service on the registrant’s website or location. Policy,

paragraph 4(b).

As numerous previous decisions under the Policy have found, “the practice of registering a domain name

and using it to redirect a user to a website which is used for the sale of competing services constitutes

evidence of registering and using a trademark in bad faith”. Arla Foods amba v. Jucco Holdings, WIPO

Case No. D2006-0409. See also, e.g., Compagnie Générale des Etablissements Michelin v. Serdar Ars /

Serdar Arslan, WIPO Case No. D2015-0658 (finding bad faith where “the disputed domain name resolved to a website which related to the Complainant’s products and had the look and feel of the Complainant’s official

website” and “sell[s] the Complainant’s products” without “a clear and prominent disclosure as to the

relationship between the Respondent and the Complainant”); and General Electric Company v. Japan, Inc.,

WIPO Case No. D2001-0410 (“Regardless of the nature of Respondent’s business and its dealing with products of [complainant], it is unauthorized to use the [complainant’s] [m]arks in connection with its

business or imply that there is an affiliation, association, or endorsement of its business by [complainant]

through its use of the Domain Name. Respondent’s Domain Name is likely to confuse consumers to believe

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that they have reached a website of [complainant]”).

Ass set forth above, Respondent’s website using the Disputed Domain Name offers “mobile payment

solutions” – which clearly is competitive with the services offered by Complainant and the services described

in the registrations cited above for the STRIPE Trademark.

Accordingly, the Panel finds that Complainant has proven the third element 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 <stripeey.com> be transferred to Complainant.

/Douglas M. Isenberg/

Douglas M. Isenberg

Sole Panelist
Date: August 17, 2022