WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Travellers Exchange Corporation Limited v. Daniel Amelang Case No. D2009-1257 1. The Parties
The Complainant is Travellers Exchange Corporation Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” and “UK”), represented by Dechert, United Kingdom.
The Respondent is Daniel Amelang of Sunnyvale, California, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2009. On September 23, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed Domain Name. On September 30, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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”). The dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 27, 2009.
The Center appointed Derek M. Minus as the sole panelist in this matter on November 3, 2009. 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.
In accordance with the Rules, the decision due date has been extended to November 20, 2009. 4. Factual Background
The Complainant is part of the Travelex group of companies (the “Travelex Group”). The Travelex Group has been operating a currency exchange business under the TRAVELEX name since the 1970s. The Travelex Group is the world's largest retail foreign exchange specialist operating over 700 branded retail branches, principally in airports and tourist locations, worldwide. For the financial year ended December 31, 2007, the global turnover of the Travelex Group was £546 million.
The Complainant owns and has owned for a considerable number of years a large portfolio of trade mark registrations world-wide for TRAVELEX and related marks. The Complainant provided evidence in the form of a trade mark schedule of the 173 individual trade marks it owns worldwide that incorporate its TRAVELEX brand name.
The Travelex Group has built up a substantial reputation and goodwill in the mark TRAVELEX worldwide. Specifically for the United States and the United Kingdom, full case details for the mark TRAVELEX that the Complainant owns in those registries was provided for the following trade mark registrations:
Mark
Country
Classes
Registration Number
Date
TRAVELEX
US
36
1694803
5 August 1990
TRAVELEX
UK
9, 35, 43
2382787
25 January 2005
TRAVELEX
UK
36
1343462
4 May 1988
TRAVELEX
UK
16
2207981
8 September 1999
TRAVELEX
UK
9, 35, 36
2520101 (application)
3 July 2009
The Complainant's trade marked TRAVELEX name is also reflected in its domain name “” from which site the Travelex Group operates a transactional website. This website allows a visitor to select from any of twenty identified country webpages, including a page for North America at “/us” and for the United Kingdom at “/uk.” 5. Parties' Contentions A. Complainant
The Complainant asserts that:
(a) The domain name which was registered by the Respondent on September 16, 2009, is confusingly similar to the names and trade marks in which the Complainant has extensive rights. The Domain Name consists of the word “career” together with the TRAVELEX mark.
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name.
(c) The Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the Domain Name is or confusingly similar to a trademark or service mark in which the Complainant holds rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant's contentions, the Panel shall decide the complaint on the basis of the Complainant's submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)). A. Identical or Confusingly Similar
The Complaint submits that the disputed Domain Name is confusingly similar to the names and trade marks in which the Complainant has extensive rights. Here the disputed Domain Name incorporates the Complainant's TRAVELEX trade mark but adds the generic word “career”, and the top level “.com” identifier at the end.
Whether a domain name which incorporates a complainant's trade mark together with a prefix or suffix is confusingly similar to the trade mark has been considered in a number of UDRP decisions. It has been held that a domain name consisting of the complainant's trade mark and ending with the “.com” gTLD is confusingly similar to the complainant's trade mark (see Sanofi-Aventis v. The Counsel Group, LLC,WIPO Case No. D2005-0650). Merely adding the generic word “career”, and the top-level gTLD “.com” at the end, would similarly not be sufficient to create a distinct domain name, and does not distinguish the disputed Domain Name from the Complainant's trade mark (see Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH,WIPO Case No. D2001-0026).
Earlier decisions have also found that the incorporation of a trade mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered trade mark (see Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201). It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant's registered trade mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”.
The incorporation of a trade mark in its entirety, followed by a common term can also be sufficient to establish that a domain name is identical or confusingly similar to a trade mark. In PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, the panel stated: “All of the contested domain names fully incorporate the trademark ‘PEPSI,' which is a distinctive mark. The mere addition of common terms such as ‘sports', ‘basketball', ‘soccer', ‘volleyball', ‘rugby' and the like to the ‘PEPSI' mark, does not change the overall impression of the designations as being domain names connected to the Complainant”.
The Complainant relies on the panel decision in Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870, where the panel stated that whether the domain name in dispute could be considered confusingly similar would depend on many factors including the relative distinctiveness of the trade mark and the non-trade mark elements of the domain name, and whether the non-trade mark elements detract from or contradict the function of the trade mark as an indication of origin.
The Domain Name uses the Complainant's TRAVELEX trade mark together with the ordinary descriptive word “career”. This Complainant's TRAVELEX brand is a distinctive mark which together with the common usage of the word “career” would appear to indicate the Domain Name to relate to career opportunities offered by the Complainant or other members of the Travelex Group.
The Panel finds that the Domain Name is confusingly similar to the Complainant's registered trade mark in which the Complainant has rights, as neither the addition of the contextually generic word “career” nor the gTLD “.com” nor both together, is sufficient to prevent confusion with the Complainant's unique registered trade mark. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
(i) before any notice to you 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 (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 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 Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name because the Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trade mark or to register a domain name incorporating any such mark. The Respondent has not, to the knowledge of the Complainant, previously been known by the Domain Name and the Complainant is not aware that the Respondent has any trade mark rights in the words comprising the Domain Name.
Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, the burden is on the Respondent to establish its rights or legitimate interests in the disputed Domain Name (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174). The Respondent has not demonstrated or established any such rights or legitimate interests.
There is no evidence of the Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary the Complainant has provided evidence that the Domain Name is currently automatically redirected to the website “/uk” which is owned by Travelex UK Limited (a member of the Travelex Group).
There is no evidence that the Respondent is making a legitimate, noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's trade mark.
The Panel finds that the Complainant has therefore made a prima facie case for the Respondent's lack of rights or legitimate interests in the disputed Domain Name. The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant submits that the Respondent's conduct, although it does not fall within paragraphs 4(b)(i) to (iv) of the Policy, is nevertheless evidence of bad faith registration and use.
The TRAVELEX mark is in global use and predates the Respondent's recent registration of the Domain Name. It is therefore highly unlikely that the Respondent was unaware of the Complainant's mark when it registered the disputed Domain Name. The registration of the disputed Domain Name by the Respondent without authorization is evidence of its bad faith registration. See Heineken Brouwerijen B.V. v. Mark Lott,WIPO Case No. D2000-1487 (where there was a finding that the international fame of a trade mark precludes innocent registration of a confusingly similar domain name).
However, the Complainant provides evidence that the Respondent's use of the trade mark is not just in respect of the Domain Name, as envisaged by paragraph 4(b) of the Policy, but rather for a blatant fraudulent purpose. As far as the Complainant is able to determine, the email addresses derived from the Domain Name are being used to front a money laundering scam. Using an email address associated with the Domain Name, the Respondent has been phishing to attract people to fictitious jobs with Travelex UK Limited (a member of the Travelex Group).
Email communications are being sent out from the email address, encouraging would-be applicants to provide their bank details and send and receive cash through these accounts. These email communications promise employment as an “eCommerce manager” or “eCommerce Payment Collection operator” on the successful completion of a free training course. Further, the Complainant's trade marks are freely utilized by the Respondent on fake documents (e.g., employment application forms). These email communications contain live links to the Complainant's actual website to establish their legitimacy to the unsuspecting victims of the scam. To avoid normal contact, the Respondent's email instructions require the prospective victim of the scam to communicate only by an instant messaging service, as “e-mail is too slow for our purposes” and “phone conversations and all information about training would cost too much”.
In this way the Respondent's use of the Complainant's trade mark is far more insidious and damaging. Through the use of the email addresses based on the Domain Name, the Respondent has sought to cloak itself with the identity of the Complainant to give credibility to its fraudulent activities.
The activities of the Respondent in adopting the identity of the Complainant to conduct a phishing scam, clearly has the potential to cause enormous harm to the reputation of the Complainant, which operates a global and successful business. Any fraudulent use of the Domain Name inevitably conflicts with Complainant's trade marks by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant's products and services (see Ente Autonomo Fiera Internazionale di Milano v. b.o.n.d. srl, WIPO Case No. D2004-0791 where use of a domain name confusingly similar to a widely-known registered trade mark held to be not for a bona fide business or commercial purpose).
The list of four circumstances set out in paragraph 4(b) of the Policy, which are deemed to indicate bad faith, is expressly non-exclusive. The Panel finds that the information regarding fraudulent activity, which is unchallenged by the Respondent, is clear evidence of its use of the Domain Name in bad faith. 7. Decision
It is therefore established that the Complainant has made out each of the three elements that it is required to prove. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Dated: November 20, 2009
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