BEFORE THE NATIONAL INTERNET EXCHANGE OF INDIA
IN THE MATTER BETWEEN
Payoneer Inc. …Complainant
Alibaba India …Respondent
1. The Complainant is Payoneer Inc. a corporation having its registered office at 150 West, 30th Street, New York, 10001, United States. The Respondent is Domain Manager, Alibaba India having its address at Rama Vihar, Karala, Rohini, Delhi, 110081, India.
2. The Arbitration pertains to the disputed domain name <payoneer.co.in>, registered on December 28, 2016 by the Respondent. The registrar for the disputed domain name is Endurance Domains Technology LLP.
3. The sole arbitrator appointed in this complaint by NIXI is Jayant Kumar. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence to NIXI.
4. The Complaint was handed over to the Arbitrator by NIXI on November 16, 2018. The Respondent was served with a copy of the complaint along with annexures electronically vide email dated November 16, 2018 by NIXI. In the same email, NIXI also requested the Respondent to send its correct physical address as the physical copy of the complaint could not be served by the courier agency at the address given by the Respondent in the Whols records since the said address was reported as ‘wrong address’ by the courier agency. However, the Respondent did not provide its correct physical address. The service of the complaint upon the Respondent was therefore deemed complete.
5. The Respondent, vide email dated November 22, 2018, was granted two weeks time to file its Reply to the Complaint. In the same email, the Respondent was again granted liberty to provide its correct physical address for NIXI to send a physical copy of the complaint thereat. The Respondent was also granted an opportunity to inform if it has not received the complaint or any part thereof in the email, to which no Reply was sent by the Respondent. The Respondent was granted another opportunity vide email dated December 10, 2018 to file its Reply within a week, but the Respondent did not file any Reply. The Respondent is therefore proceeded ex-parte and was informed about the same vide email dated January8, 2019.
6. The Complainant states that it was founded in 2005 under the corporate and trade name Payoneer Inc. and it specializes in providing online money transfer and digital payment services. The Complainant also claims to process cross-border payments in over 200 countries, deals with over 150 local currencies and currently has over four million users and supports more than 35 languages. The Complainant has 14 physical locations around the world including in India.
7. The Complainant further states that it expanded its services in India in 2015 by offering improved cross-border payments from US companies to Indian professional and business and at least since then it has been using the mark PAYONEER in India.
8. The Complaint has also provided details of the awards and accolades received by it across the world.
9. The Complainant also states that it also holds International Trademark Registration No. 1303506 (covering India) registered on May 9, 2016 for the mark PAYONEER; International Trademark Registration No. 1314134 (covering India) registered on May 9, 2019 for the mark PAYONEER (Device) and Trademark Registration No. 3380030 registered on February 12, 2008 at the USPTO. The Complainant also owns domain name <payoneer.com> since 2005 and hosting an active business website thereat and also has presence over social media.
10. The Complainant submits that the domain name <payoneer.co.in> is confusingly similar to its mark PAYONEER.
11. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
12. The Complainant submits that the Respondent has put for sale the disputed domain name for sale on the platform www.sedo.com and the Respondent’s asking price thereat is US$ 9,999 which is in excess of the out-of-pocket costs.
The Complainant also sent out a Cease and Desist Letter to the Respondent on March 29, 2018 and follow-up email on April 9, 2018 but the Respondent did not Reply to the same. The Complainant submits that such use of the disputed domain name by the Respondent is sufficient evidence of bad faith use and registration.
Discussion and Finding
13. Under the .IN Policy, the registrant of the domain name is required to submit to a mandatory arbitration proceeding in the event that a complaint is filed in the .IN Registry, in compliance with the .IN Policy and the INDRP Rules. The .IN Policy, Paragraph 4 requires the Complainant, to establish the following three elements:
a. The domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
b. The Respondent has no rights or legitimate interests in respect of the domain name; and
c. The Respondent’s domain name has been registered and is being used in bad faith.
14. The Arbitrator finds that the Complainant has established its ownership in the mark PAYONEER by virtue of the International and USPTO trademark registration as well as its use. The Arbitrator is also convinced with the distinctive nature of the mark PAYONEER. The disputed domain name incorporates the mark PAYONEER in entirety. The disputed domain name is therefore held to be confusingly similar with the Complainant’s mark PAYONEER.
15. Paragraph 7 of the Policy states a Respondent’s or a registrant’s rights can be found from the material on record, if (i) before notice of the dispute, the registrant had used or made demonstrable preparations to use the domain name in connection with a bonafide offering of goods or services or (ii) the registrant (as an individual, business organization) has been commonly known by the domain name, or (iii) The registrant is making legitimate, non-commercial or fair use of the domain name without intent for commercial gain. The Complainant has made a strong prima facie case that the Respondent has no rights and legitimate interest in the disputed domain, which remains uncontroverted by the Respondent. The Respondent appears to have intentionally adopted the mark PAYONEER, which is also evident from the fact that the PPC links on the webpage hosted at the disputed domain name relate either to the Complainant or to competing companies offering similar services. There is no evidence on record to indicate Respondent’s rights in the mark PAYONNER and/or the dispute domain name. Based on the above, the Arbitrator finds that the Respondent has no rights or legitimate interests in the disputed domain name.
16. The Arbitrator further agrees with the Complainant’s submissions that the disputed domain name is put up for sale with an asking price of US$ 9,999 and the same is in excess of the out-of-pocket costs incurred by the Respondent in registering the said domain name, which is clearly an evidence of bad faith registration and use. The Respondent has also registered domain names which incorporates third party trademarks including <payumoney.co.in> and the same is also an evidence of bad faith registration and use. As held in Laterooms Limited v. Lin Yanxio, Case No. INDRP/818, registration of large portfolio of domain names that uses trademarks of third parties exhibits a pattern of registration of domain names to derive undue advantage from the goodwill associated with the trademark of others, the same is recognized as an evidence of bad faith registration and use under the INDRP Policy. The Arbitrator
accordingly finds bad faith registration and use of the disputed domain name by the Respondent.
17. In light of the aforesaid discussion and findings, the Arbitrator directs that the disputed domain name <payoneer.co.in> be transferred to the Complainant.
Dated: January 11, 2019