MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1610001698585
Complainant is MoneyGram International, Inc. (“Complainant”), represented by Aric S. Jacover of Jacover Law LLC, Illinois, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walmartmoneygram.com>, registered with Internet Domain Service BS Corp.
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 Forum electronically on October 17, 2016; the Forum received payment on October 17, 2016.
On October 21, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <walmartmoneygram.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 October 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2016 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@walmartmoneygram.com. Also on October 24, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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" 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 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
1. Complainant is a money transfer and payment services company. Complainant owns several governmental trademark registrations of the MONEYGRAM mark, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,127,954, registered Jan. 13, 1998; Reg. No. 3,367,799, registered Jan. 15, 2008).
2. Respondent’s domain name is confusingly similar to Complainant’s MONEYGRAM mark as it incorporates the mark in its entirety, merely adds the famous mark “WALMART” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in <walmartmoneygram.com>. Respondent is neither commonly known by the domain name as it registered the domain name using a privacy service, nor does Respondent have permission to use the MONEYGRAM mark.
4. Furthermore, Respondent has not operated with any bona fide offering of goods or services or with any legitimate noncommercial or fair use. Instead, <walmartmoneygram.com> redirects users to a rotating series of different websites for competing services, surveys, hit farms and others—some of which appear to be suspicious or illegal phishing schemes.
5. Respondent registered and is using the <walmartmoneygram.com> domain name in bad faith. By redirecting Internet users to suspicious websites this presumably operates as a revenue-generating scheme through which Respondent receives monetary compensation. Lastly, Respondent registered and uses <walmartmoneygram.com> with actual or constructive knowledge of the MONEYGRAM mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MONEYGRAM mark. Respondent’s domain name is confusingly similar to Complainant’s MONEYGRAM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <walmartmoneygram.com> domain name, and that Respondent registered and uses the domain name 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(f), 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 (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 is a money transfer and payment services company. Complainant owns several governmental trademark registrations of the MONEYGRAM mark, including the USPTO (Reg. No. 2,127,954, registered Jan. 13, 1998; Reg. No. 3,367,799, registered Jan. 15, 2008), which establishes rights for the purposes of the Policy¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (FORUM Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).). Next, Complainant argues that Respondent’s domain name[1] is confusingly similar to Complainant’s MONEYGRAM mark as it incorporates the mark in its entirety, merely adds the famous mark “WALMART” and the gTLD “.com.” Combining marks and adding a gTLD has been found to constitute confusing similarity under Policy ¶ 4(a)(i). See Educational Testing Services v. Atak Teknoloji Ltd. STI., D2010-0479 (WIPO June 15, 2010) (“In line with previous UDRP decisions, the Panel finds that the addition of another mark (owned by a person or entity which is not part of the proceedings) does not create a distinct mark or domain name, capable of overcoming a claim of confusing similarity.”); see also Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (FORUM July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Therefore, the Panel agrees that Respondent’s <walmartmoneygram.com> is confusingly similar to Complainant’s mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <walmartmoneygram.com> domain name. 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 argues that Respondent has no rights or legitimate interests in <walmartmoneygram.com>. Complainant argues that Respondent is neither commonly known by the domain name as it registered the domain name using a privacy service, nor does Respondent have permission to use the MONEYGRAM mark. Where a privacy service has been used, and a respondent has not submitted any evidence, there is no basis to find a respondent commonly known by the domain name in dispute pursuant to Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (FORUM Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Because the WHOIS record indicates Respondent has shielded its identity, and because Respondent has not supported this decision through any submission, the Panel agrees that Respondent is not commonly known by the <walmartmoneygram.com> domain name per Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent has not operated with any bona fide offering of goods or services or with any legitimate noncommercial or fair use. Instead, <walmartmoneygram.com> redirects users to a rotating series of different websites for competing services, surveys, hit farms and others—some of which appear to be suspicious or illegal phishing schemes—none of which are associated with Complainant. Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy. See Costco Wholesale Membership, Inc. v. Domain Admin, Whois Privacy Corp./Ryan G Foo, PPA Media Services, D2015-2095 (WIPO Jan. 12, 2016) (finding no legitimate interest where disputed domain name “leads to a rotating sequence of web pages among which some bore the Complainant’s mark, as well as a survey request to the Complainant’s shoppers.”). Thus, the Panel holds that Respondent’s use of the <walmartmoneygram.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <walmartmoneygram.com> domain name in bad faith. Specifically, Complainant asserts that the redirection of Internet users to suspicious websites presumably operates as a revenue-generating scheme through which Respondent receives monetary compensation—proscribed conduct under Policy ¶ 4(b)(iv). Bad faith has been found in such circumstances. See Costco Wholesale Membership, Inc. v. Domain Admin, Whois Privacy Corp./Ryan G Foo, PPA Media Services, D2015-2095 (WIPO Jan. 12, 2016) (finding bad faith where respondent used domain name to “direct Internet traffic to the rotating web pages from which it most likely derives profit.”). The Panel agrees.
Finally, Complainant argues that Respondent registered and uses <walmartmoneygram.com> with actual or constructive knowledge of the MONEYGRAM mark and Complainant’s rights in the mark because of Complainant’s use and registration of the mark in over 180 countries, as well as its relationship with Walmart. The Panel agrees that by incorporating Complainant’s mark in its entirety in Respondent’s domain name, it is apparent that Respondent registered the mark with actual knowledge of Complainant’s rights in the mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (FORUM Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
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 <walmartmoneygram.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 28, 2016
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