MoneyGram International, Inc. v. Zhichao Yang
Claim Number: FA1307001511887
Complainant is MoneyGram International, Inc. (“Complainant”), represented by Sheldon H. Klein of GRAY, PLANT, MOOTY, MOOTY & BENNETT, P.A., Washinton, D.C., USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2013; the National Arbitration Forum received payment on July 29, 2013.
On July 29, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mymoneygramcard.com, postmaster@mymoneygramacountnowvisa.com, postmaster@wwwmymoneygramaccountnowvisa.com, postmaster@mymoneygramaccountvisa.com, and postmaster@mymoneygramaccount.com. Also on July 29, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the second largest money transfer company in the world and has more than 321,000 authorized agent locations in 198 countries and territories, including the United States and China. Complainant is the owner of the MONEYGRAM mark, used in connection with global money transfers, bill payment, prepaid debit cards, and financial paper products. Complainant is the owner of registrations for the MONEYGRAM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,127,954 registered Jan. 13, 1998), as well as with the Chinese State Administration for Industry and Commerce (“SAIC”) (Reg. No. 4,509,986 registered Aug. 28, 2008).
2. The disputed domain names are confusingly similar to Complainant’s mark, MONEYGRAM. The disputed domain names contain Complainant’s mark along with generic or descriptive terms which do not eliminate the confusing similarity created.
3. Respondent is not affiliated with Complainant or authorized to use the MONEYGRAM mark.
4. Respondent uses the <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names for commercial gain by hosting pay-per-click links at the websites where the act of clicking on one of the ad links generates income for Respondent. Some of the links are to the websites of Complainant’s direct competitors, such as Western Union and Xoom.
5. Respondent misleadingly diverts customers of Complainant and tarnishes the MONEYGRAM mark specifically in order to attract users to Respondent’s own websites.
6. Respondent is attempting to attract Internet users to the disputed domain names for commercial gain by creating a likelihood of confusion with the MONEYGRAM mark. Respondent is seeking to create a false connection between the disputed domain names and Complainant. Respondent’s intentional and deceptive conduct, which is calculated to cause confusion, is obvious.
7. The MONEYGRAM mark is a famous mark, registered decades before Respondent registered the domains at issue. The domain names incorporate Complainant’s mark along with descriptive indicators of Complainant’s business. Respondent clearly had constructive and actual knowledge of Complainant’s rights in the MONEYGRAM mark when the disputed domain names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MONEYGRAM mark. Respondent’s domain names are confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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."
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.
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.”).
Complainant argues that it is the owner of the MONEYGRAM mark, used in connection with global money transfers, bill payment, prepaid debit cards, and financial paper products. Complainant is the owner of registrations for the MONEYGRAM mark with the USPTO (e.g., Reg. No. 2,127,954 registered Jan. 13, 1998), as well as with the Chinese SAIC (Reg. No. 4509986 registered Aug. 28, 2008). Thus, the Panel finds that Complainant has rights in the MONEYGRAM mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant asserts that the disputed domain names are confusingly similar to Complainant’s mark, MONEYGRAM. Complainant states that the disputed domain names contain Complainant’s mark along with generic or descriptive terms which do not eliminate the confusing similarity created. The addition of generic or descriptive terms does not remove a domain name from the realm of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The <wwwmymoneygramaccountnowvisa.com> domain name also includes the string of letters “www” which would commonly be followed by a period before the substantive part of a domain name. In Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003), the panel found that the addition of “www” preceding a domain name did not distinguish the domain name from the mark within it.
Additionally, the Panel notes that each of the disputed domain names also includes the generic top-level domain (“gTLD”) “.com,” which is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names are confusingly similar to the MONEYGRAM mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent is not affiliated with Complainant or authorized to use the MONEYGRAM mark. The WHOIS records list “Zhichao Yang” as the domain name registrant for the <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names. In the absence of any affirmative evidence to the contrary and based on the foregoing, the Panel finds that Respondent is not commonly known by the disputed domain names 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).
Complainant next alleges that Respondent uses the <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names for commercial gain by hosting pay-per-click links at the resolving websites. Complainant notes that some of the links are to the websites of Complainant’s direct competitors, such as Western Union and Xoom. The panel in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) held that the display of links to competitors is not a use within the protective bounds of Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the disputed domain names in bad faith. Complainant notes that the disputed domain names display links to the websites of competitors of Complainant. According to Complainant, Respondent misleadingly diverts customers of Complainant and tarnishes the MONEYGRAM mark specifically in order to attract users to Respondent’s own websites. Displaying competitive links on a disputed domain name’s resolving website is disruptive to a complainant’s business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent’s registration and use of the <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names constitute bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent is attempting to attract Internet users to the disputed domain names for commercial gain by creating a likelihood of confusion with the MONEYGRAM mark. According to Complainant, Respondent is seeking to create a false connection between the disputed domain names and Complainant. Complainant asserts that Respondent’s intentional and deceptive conduct, which is calculated to cause confusion, is obvious. The display of competitive pay-per-click links on a disputed domain name’s resolving website implies an intent to create a likelihood of confusion so that a profit can be generated from Internet users’ mistakes. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, the Panel finds that Respondent has engaged in bad faith registration and use of the <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names pursuant to Policy ¶ 4(b)(iv).
Lastly, Complainant asserts that the MONEYGRAM mark is a famous mark, registered decades before Respondent registered the domains at issue. Complainant notes that the domain names incorporate Complainant’s mark along with descriptive indicators of Complainant’s business. Complainant argues that Respondent clearly had actual knowledge of Complainant’s rights in the MONEYGRAM mark when the disputed domain names were registered. Under the circumstances, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds 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 <mymoneygramcard.com>, <mymoneygramacountnowvisa.com>, <wwwmymoneygramaccountnowvisa.com>, <mymoneygramaccountvisa.com>, and <mymoneygramaccount.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 11, 2013
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