Western Union Holdings, Inc. v. Click Search
Claim Number: FA0701000890725
Complainant is Western Union Holdings, Inc. (“Complainant”), represented by Elisabeth
A. Langworthy, of Sutherland Asbill
& Brennan LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <westerunion.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 17, 2007.
On January 17, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <westerunion.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 January 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 7, 2007 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@westerunion.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s
<westerunion.com>
domain name is confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <westerunion.com> domain name.
3. Respondent registered and used the <westerunion.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Western Union Holdings, Inc., has continuously
and extensively used the
Complainant holds over 900 trademark registrations for the WESTERN UNION mark and numerous variations with trademark authorities around the world, including forty-nine registrations with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,858,889 issued October 18, 1994).
Respondent’s <westerunion.com> domain name, which it registered on May 9, 2000, resolves to a commercial web directory with links to various websites unrelated to Complainant but offering similar services, including money transfer services that compete with Complainant.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Because Complainant has registered the
The <westerunion.com> domain name is just
one letter off from Complainant’s
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent lacks rights and
legitimate interests in the <westerunion.com>
domain name. Complainant must first make
a prima facie case in support of its
allegations, and then the burden shifts to Respondent to show it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See
Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6,
2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant
prove the presence of this element (along with the other two), once a
Complainant makes out a prima facie
showing, the burden of production on this factor shifts to the Respondent to
rebut the showing by providing concrete evidence that it has rights to or
legitimate interests in the Domain Name.”); see
also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not
have rights or legitimate interest in the subject domain names, which burden is
light. If Complainant satisfies its
burden, then the burden shifts to Respondent to show that it does have rights
or legitimate interests in the subject domain names.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <westerunion.com> domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see
also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20,
2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Click Search,” and there is no other evidence
in the record suggesting that Respondent is commonly known by the <westerunion.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the <westerunion.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record); see also
Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul.
17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Moreover, Respondent’s <westerunion.com> domain name, which
is confusingly similar to Complainant’s WESTERN UNION mark, resolves to a
commercial website providing links to websites offering money transfer and
other services that compete with Complainant’s own services under the WESTERN
UNION mark. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum
Jan. 11, 2002), the respondent was using a domain name confusingly similar to
the complainant’s AMERITRADE mark to divert Internet users to a competing
financial services website. The panel
concluded that redirecting Internet users to a competing website could not be
deemed a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i), and that such use for Respondent’s
own commercial gain could not be a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the confusingly similar <westerunion.com> domain name to
redirect Internet users seeking Complainant’s money transfer and other services
to competing websites through Respondent’s pay-per-click website. Respondent likely generates revenue for each
consumer it diverts to these websites.
Therefore, Respondent is taking advantage of the confusing similarity
between the <westerunion.com>
domain name and Complainant’s
Moreover, Respondent has registered and used the domain name in order to disrupt Complainant’s business, as Respondent is using the <westerunion.com> domain name to maintain a website with links to Complainant’s competitors. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel found that the respondent had registered and used the <euro-disney.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because it resolved to a website promoting a competing theme park. Here, then, Respondent’s use of the disputed domain name to promote the money transfer services of Complainant’s competitors provides evidence that it registered the domain name primarily to disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with Complainant’s business).
The Panel concludes that Complainant has satisfied 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 <westerunion.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 20, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum