An Estonian company using the domain PayExOu.com was hit with a UDRP filed by Swedbank PayEx Holding AB.
The Respondent noted that as an Estonian legal entity Payex OÜ was formed in full compliance with Estonian law in 2018. They checked for similar entities in Europe to avoid mark conflicts but not in Sweden, apparently:
We picked the name based on the intended area of activity Pay – for payment, Ex – for crypto to fiat exchange. Before registering Estonian legal entity the Registrar made sure that it is unique (no one checked for Sweden).
To avoid further confrontation with the Complainant, the Respondent addressed some logo and branding similarities and added the “Ou” (company) reference to “PayEx” through its web site copy.
The WIPO panelist cut some slack to the Respondent:
Under the circumstances here, and based on the record presented, it simply does not appear that Complainant has shown that Respondent has acted in bad faith. Respondent promptly responded to Complainant’s initial missive, explained why it had registered the domain name in question, noted its own corporate name, and offered to take measures to alleviate Complainant’s concerns. This does conduct does not suggest a clear case of cybersquatting, which is what the UDRP was chiefly designed to address.
Final decision: Deny transfer of the domain PayExOu.com to the Complainant.
The domain transfer was denied.
Swedbank PayEx Holding AB v. Vasiliy Koshkin
Case No. D2021-28891. The Parties
Complainant is Swedbank PayEx Holding AB, Sweden, represented by Joachim Lindbo Hansen, Sweden.
Respondent is Vasiliy Koshkin, Russian Federation, represented by PLL Legal & Cross-Border Practice, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <payexou.com> (the “Domain Name”) is registered with One.com A/S (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2021. On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 15, 2021.
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 Respondent of the Complaint, and the proceedings commenced on September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Response was filed with the Center on October 11, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 21, 2021. 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
Complainant, based in Sweden, is a financial services company that provides payment transfer services under the trademark PAYEX. Complainant holds an international trademark registration for PAYEX, Reg. No. 901826, registered on AUGUST 3, 2006 in International classes 9, 36, and 42 and designated under the Madrid Protocol in 16 other jurisdictions (though not in Estonia, Respondent’s country). The trademark registration covers, among other things, “software for payment systems, funds transfer solutions, financial transactions and debt collection services,” “financial services; monetary services; payment and funds transfer services; electronic payment and funds transfer; issuance of electronic money,” and related services.
The extent to which Complainant’s PAYEX mark is renowned is unknown based on the record presented by the Parties. Complainant provided no evidence of the size and scale of its operations under the PAYEX mark, and no evidence of consumer recognition of the PAYEX mark, either within the Madrid Protocol countries or in others, including Estonia.
Respondent Payex OÜ is a corporation that was incorporated in Estonia on May 25, 2018. The incorporation details describe Respondent’s business as a “virtual currency service.” At some point in time, Respondent registered the domain name (not at issue in this proceeding) “www.payex.one”, and began using that domain name to operate a commercial website.
On March 15, 2021, Complainant’s in-house counsel sent Respondent a cease-and-desist letter in connection with the latter’s ownership and use of the “www.payex.one” domain name and related website. In that letter, Complainant asserted its registered trademark rights in the mark PAYEX and claimed that Respondent was infringing that mark.
On March 17, 2021, Respondent sent an email to Complainant’s counsel. In relevant part, Respondent stated:
“We did not know about your business until the receipt of your letter, and we had no intention to misuse your logo. We will try to do our best to solve the issue.
Our Estonian legal entity Payex OÜ was formed in full compliance with Estonian law in 2018; we have also received several licenses at our name, which could be verified at Estonian Corporate Register at [hyperlink omitted].
We picked the name based on the intended area of activity Pay – for payment, Ex – for crypto to fiat exchange. Before registering Estonian legal entity the Registrar made sure that it is unique (no one checked for Sweden).
Payex OÜ major business is crypto to fiat and fiat to crypto exchange. We do not do active marketing, and our customer flow 99% originates at the ‘latoken.com’ cryptocurrency exchange. By no way we intend to be confused with your business (I seriously doubt that SwedBank’s affiliate could have crypto related business). Our logo is definitely different from yours.
To accommodate your concerns we propose the following mitigation actions:
1. We will stop using word ‘Payex’ and will only use ‘Payex OÜ’
2. We will do proper name replacement in all webpages
3. We may include a special disclaimer stating that Payex OÜ is in no way affiliated with the SwedBank PayEx Holding AB (we are ready to incorporate your text of disclaimer)
4. We are ready to change our logo to Payex OÜ (ready to accommodate your wishes on color and design)We are completely cooperative and are open to your additional suggestions on how to mitigate the situation.”
On March 30, 2021, Complainant’s counsel replied to Respondent. In this letter, Complainant rejected the argument that the Parties are engaged in different lines of business: “It falsely looks like a new venture for our company into the crypto currency market.” Complainant also stated that the reference to “payment services” on Respondent’s website is a “clear cut violation of our registered trademark, […)]as this is a service protected by our registered trademark.” Complainant added:
“We therefore see no other option than for you to change the name of your company and cease all use of our registered trademark ‘PAYEX’, be it as a domain, product name, or any other ways of using our trademark. We will give you a deadline until 15th of May 2021 to comply with our demands.”
This letter did not specifically address Respondent’s offer to call itself Payex OÜ (and not merely Payex) going forward.
Respondent registered the Domain Name <payexou.com> on April 6, 2021. The Domain Name resolves to a website at which Respondent offers “Payment services” (described as “wires, e-wallets and credit/debit payment processing”), a crypto-currency to fiat-currency “gateway.” Under the heading “EU Licensed,” Respondent’s website states: “Payex is licensed to provide e-wallets services and exchanging a virtual currency against a fiat currency.” The top of the web page features the banner “Payex OÜ.”
On April 26, 2021, Complainant’s counsel sent a chaser email to Respondent, demanding a response to his March 30, 2021 letter. Complainant’s counsel sent another chaser on May 11, 2021. On August 27, 2021, Complainant’s counsel sent an email to Respondent, stating that Complainant would be filing a complaint under the UDRP and seeking “additional damages.”
Later that day, August 27, 2021, Respondent sent an email to Complainant’s counsel, reiterating what Respondent had said in its March 17, 2021 email. Respondent also wrote:
“I have taken all measures to further distinguish the visual representation of our company’s registered name on the website. Please review the website to ensure that there is no potential violation of your trade mark to provide full compliance to your cease and desist letter.
We are by no way trying to represent to be SwedBank’s affiliate, our logo is absolutely different from yours, our lines of business are different, and we are not conducting any marketing campaigns to be confused with you.
As soon as we become aware about your grievance we took the following measures:
1. Changed the spelling to ‘Payex OÜ’ and stopped using ‘Payex’ without “OÜ” part
2. Updated our official logo
3. Changed the name of our site from payex.one to payexou.com. The old payex.one site is just automatically redirected to the new site for business continuity purposes only. We will vacate the old payex.one site by not extending subscription to its host.
4. We are ready to put a disclosure on our site stating that we are not Swedbank affiliate (we are open to accept your wording).”Complainant filed the Complainant in this proceeding three days later, on August 30, 2021.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.
B. Respondent
Respondent denies that it has acted in bad faith vis-à-vis the Domain Name. Its arguments are reflected in the “Factual Background” section above.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel concludes that Complainant has rights in the trademark PAYEX through registration demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The addition of the letters “ou” is of little consequence, as the PAYEX trademark is clearly recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel need not address this element, given its conclusion in the next section that Respondent did not register the Domain Name in bad faith.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes, in what it finds to be a fairly close call, that Complainant has failed to establish that Respondent registered the Domain Name <payexou.com> in bad faith. When Complainant sent its initial cease-and-desist letter on March 15, 2021 – in connection with the domain name <payex.one> – Respondent replied two days later and asserted that it had never heard of Complainant or its PAYEX mark when the <payex.one> domain name was registered. The Panel finds that denial to be plausible, based on this record.
Complainant made no effort to present evidence to establish that its PAYEX registered trademark enjoyed any renown among consumers. Complainant’s trademark does not appear to be registered or designated in Estonia. Given the “bad faith” standard under the UDRP, the mere assertion of one’s registered trademark does not ensure success.
Respondent also set forth its reasons for registering the domain name <payex.one>, namely, that it reflected Respondent’s duly registered corporate name in Estonia. Respondent offered to take measures to alleviate Complainant’s concerns, and appears to have followed through and implemented those measures. One of the measures suggested by Respondent in its March 17, 2021 email was to cease using Payex on its own and begin using Payex OÜ. Complainant replied to Respondent, but did not expressly say that using Payex OÜ was unacceptable. It is therefore no great surprise that Respondent registered the Domain Name <payexou.com> on April 6, 2021, and migrated its crypto-fiat exchange website to that Domain Name. The Domain Name exactly reflected Respondent’s duly registered corporate name, a name Respondent had adopted before, as far as the record here reveals, Respondent was aware of Complainant’s PAYEX trademark.
Under the circumstances here, and based on the record presented, it simply does not appear that Complainant has shown that Respondent has acted in bad faith. Respondent promptly responded to Complainant’s initial missive, explained why it had registered the domain name in question, noted its own corporate name, and offered to take measures to alleviate Complainant’s concerns. This does conduct does not suggest a clear case of cybersquatting, which is what the UDRP was chiefly designed to address.
The Panel does not mean to suggest that Complainant could not pursue a trademark infringement action against Respondent in some other forum. It appears, though, that Complainant thus far has pursued its grievance against Respondent in the wrong forum (and thereby, under the wrong standards).
The Complaint fails.
7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: November 4, 2021
