Travelers Express Company, Inc. v. Henry
Tsung
Claim
Number: FA0405000275511
Complainant is Travelers Express Company, Inc. (“Complainant”),
represented by Paul D. McGrady, of Ladas & Parry,
224 South Michigan Avenue, Chicago, IL 60604.
Respondent is Henry Tsung
(“Respondent”), No. 2, Alley 4, Lane 177, Swei Road, Taipei, Taiwan 256021.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <moneygraminternational.com> and <wwwmoneygram.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 24, 2004; the Forum received a hard copy of the Complaint
on May 25, 2004.
On
May 24, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the Forum that the domain names <moneygraminternational.com> and <wwwmoneygram.com>
are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the names. Iholdings.com, Inc.
d/b/a Dotregistrar.com has verified
that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
May 28, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 17, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@moneygraminternational.com
and postmater@wwwmoneygram.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 23, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <moneygraminternational.com>
and <wwwmoneygram.com> domain names are confusingly similar to
Complainant’s MONEYGRAM mark.
2. Respondent does not have any rights or
legitimate interests in the <moneygraminternational.com> and <wwwmoneygram.com>
domain names.
3. Respondent registered and used the <moneygraminternational.com>
and <wwwmoneygram.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Travelers Express Company, Inc., is a global leader in international money
transfers and the largest processor of money orders in the United States.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the MONEYGRAM and related marks (Reg. No. 2,127,954 issued
January 13, 1998, Reg. No. 2,145,583 issued March 24, 1998, Reg. No. 2,440,717
issued April 3, 2001, Reg. No. 2,450,906 issued May 15, 2001, and Reg. No.
2,484,700 issued September 4, 2001).
Additionally, Complainant holds or has applied for the MONEYGRAM mark in
seventeen other countries, including Taiwan.
Complainant has helped
people and businesses by providing affordable, reliable and convenient payment
services throughout the world.
Complainant’s
products are available in more than 100,000 locations worldwide. Complainant’s parent company, Viad Corporation, is a
$1.6 billion services company.
Complainant, through acquisition, has used the MONEYGRAM mark in
commerce since 1988.
Complainant’s
main website is operated at the <moneygram.com> domain name.
Respondent
registered the disputed domain names on December 30, 2003. Respondent is using the domain names to
redirect Internet users to a website that features advertising for a variety of
services and hosts a search engine to link viewers to a variety of websites,
predominantly including sites that offer money orders and money grams.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established that it has rights in the MONEYGRAM mark through registration with
the United States Patent and Trademark Office and through continued use of its
mark in commerce. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The disputed domain names are confusingly similar to Complainant’s
MONEYGRAM mark because the domain names incorporate Complainant’s mark in its
entirety and simply add the generic or descriptive term, “international” or the
“www” prefix. The mere additions of a
generic or descriptive term or a “www” prefix to a registered mark do not
negate the confusing similarity of Respondent’s domain names pursuant to Policy
¶ 4(a)(i). See also Sony Kabushiki Kaisha v.
Inja, Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary
descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Bank of Am.
Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that
Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to
Complainant’s registered trademark BANK OF AMERICA because it “takes advantage
of a typing error (eliminating the period between the www and the domain name)
that users commonly make when searching on the Internet”); see also Marie
Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding
that the letters "www" are not distinct in the "Internet
world" and thus Respondent 's <wwwmarieclaire.com> domain name is
confusingly similar to Complainant's MARIE CLAIRE trademark).
Therefore,
Complainant has established that the disputed domain names <moneygraminternational.com>
and <wwwmoneygram.com> are confusingly similar to Complainant’s
MONEYGRAM mark.
Complainant
has alleged that Respondent has no rights or legitimate interests in the domain
names that contain in their entirety Complainant’s mark. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and legitimate
interests in the disputed domain names.
In fact, once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to show that it does have such
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name).
Moreover,
where Respondent does not respond, the Panel may accept all reasonable
allegations and inferences in the Complaint as true. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA
110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Furthermore,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <moneygraminternational.com> and
<wwwmoneygram.com> domain names.
Thus, Respondent has not established rights or legitimate interests in
the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the
nonsensical nature of the [<wwwmedline.com>] domain name and its
similarity to Complainant’s registered and distinctive [MEDLINE] mark, the
Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see
also Hartford Fire Ins. Co. v.
Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that
Respondent has no rights or legitimate interests in domain names because it is
not commonly known by Complainant’s marks and Respondent has not used the
domain names in connection with a bona fide offering of goods and services or
for a legitimate noncommercial or fair use).
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Respondent
intentionally registered domain names that contain in their entirety
Complainant’s well-known mark and did so for Respondent’s commercial gain. Respondent’s disputed domain names divert
Internet users who seek Complainant’s MONEYGRAM mark to Respondent’s commercial
website through the use of domain names that are confusingly similar to
Complainant’s mark. Furthermore,
Respondent is unfairly and opportunistically benefiting from the goodwill and
reputation associated with Complainant’s mark.
Respondent’s practice of diversion, motivated by commercial gain,
through the use of confusingly similar domain names constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum
Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also AltaVista v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent linked the domain name to a website that offers a number of web
services).
Respondent is
using the <moneygraminternational.com> and <wwwmoneygram.com>
domain names to provide a search engine and links to a variety of websites,
predominantly including sites that offer money orders. Complainant’s business also offers money
orders. The Panel finds that, by
creating confusion around Complainant’s mark, Respondent is attempting to
disrupt the business of a competitor.
Respondent’s use of Complainant’s mark to sell goods and services
similar to Complainant’s goods and services is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Surface
Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between Complainant and
Respondent, Respondent likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion); see
also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <moneygraminternational.com> and <wwwmoneygram.com>
domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
July 7, 2004
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