The Complainant is XE Corporation of Newmarket, Ontario, Canada, represented by Bereskin & Parr LLP, Canada.
The Respondent is Slavomir Bures carrying on business as “Tas Nerina S Bures” and “Susky (Ltd.)” of London, United Kingdom of Great Britain and Northern Ireland and Hong Kong, SAR of China, respectively. 2. The Domain Names and Registrar
The disputed domain names , , , , , and are registered with Advantage Interactive Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2010. On June 24, 2010, the Center transmitted by email to Advantage Interactive Ltd. a request for registrar verification in connection with the disputed domain names. On June 25, 2010, Advantage Interactive Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 29, 2010. The Center verified that the Complaint together with the amendment to 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”).
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 July 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on August 9, 2010. 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.
The Center received an email on June 25, 2010 from a solicitor from a law firm in London, stating that the firm had been instructed to represent the Respondent. She requested that the Complaint and all further correspondence relating to the domain name dispute be copied to her. The Center subsequently received, on July 16, 2010, an email from another firm of solicitors, stating that the law firm mentioned earlier at no time had been instructed by the Respondent in relation to the matter. It requested that further communication from the Center relating to this matter be copied to them and that no further copies be sent to the other law firm. As a result of the conflicting communications received, on July 16, 2010 the Center sent an email to the Respondent requesting confirmation as to the name and contact information of the authorized representative in the matter. Both firms of solicitors were copied in the email. On the same day the Respondent confirmed to the Center, copying the Complainant and both law firms, that he was represented by the latter law firm. However, no formal response was submitted and neither did the Center receive any further correspondence from either of the solicitors firms. 4. Factual Background
The Complainant has, since its inception in 1993, grown into one of the world’s most popular foreign currency website. It is a leading provider of online currency exchange products and services, all of which are claimed to be provided in association with the trade mark XE. The XE trade mark is claimed to be known worldwide and is highly distinctive, and is associated exclusively with the foreign exchange and trade related services provided by the Complainant.
The Complainant owns rights in the trade mark XE in many other countries for use in association with, inter alia, currency conversion and currency exchange. The Complainant cited the details of a number of its trade mark applications and/or registrations for the mark XE, as well as for the mark in combination with design elements, in the European Community, the United States of America, Canada, Australia, China, Hong Kong, India, New Zealand, South Africa and the United Arab Emirates.
The XE mark has been used by the Complainant as part of a URL since at least 1994. The domain name was registered by the Complainant in December 1994. The Complainant appears to own over a hundred other domain names containing the trade mark XE, all of which would resolve to the Complainant’s website (“the XE website”). The XE website is apparently very popular, being regularly accessed by Internet users around the world. The XE website had allegedly more than 400 million page views per month and more than 16 million unique visitors per month for each of the months of June and July 2008, before the disputed domain names were registered. The Complainant’s goods and services offered in association with the XE mark are extensively promoted and advertised in Europe, the United States, Canada and throughout the world through online advertising. In 2009, the Complainant earned over USD 2 million in advertising revenue from third parties’ advertisements on the XE website. Since 2002, over USD 5 billion in global payments have been booked under the XE trade mark.
With the exception of the domain name which was registered in October 2008, the remaining disputed domain names were registered around June/July 2009. A cease and desist letter was sent to the Respondent on October 6, 2009 but no response was received from the Respondent.
On May 12, 2010, the Complainant received an email from a representative of the Respondent with an offer to sell the domain name, which was copied to a number of the Complainant’s competitors.
The Complainant submitted evidence of a press release that the Respondent issued on June 21, 2010 which referenced several of the Complainant’s proprietary tools bearing the XE trade mark (namely XE TRADE and CURRENCY ENCYCLOPEDIA) and offered these as his. 5. Parties’ Contentions A. Complainant
(1) The Complainant asserts, firstly, that the disputed domain names are confusingly similar to a trade mark and service mark in which the Complainant has rights.
The XE mark is extremely valuable and has enormous goodwill attached to it. The disputed domain names incorporate the XE mark in their entirety and are preceded by the word “money” which is descriptive of the services associated with the XE trade mark. The disputed domain names are confusingly similar to the Complainant’s XE mark as:
(i) XE is an invented word with a high degree of inherent distinctiveness reinforced by its widespread and longstanding international use;
(ii) “money” is an ordinary descriptive word, which describes the very services associated with the XE mark;
(iii) the word “money” exploits the trade mark significance of XE as an indication of origin as consumers will understand the disputed domain names to offer the Complainant’s currency, foreign exchange, trade and related services; and
(iv) the prefix “money” does nothing to dispel the connection in the public mind between the XE trade mark and the Complainant, but rather reinforces it.
The disputed domain names are likely to result in both “initial interest confusion” and actual confusion with the Complainant’s XE trade mark. Consumers would likely mistake the disputed domain names with the XE trade mark. Internet users who wish to access the Complainant’s website are likely to enter a “money XE” domain name into the address bar of their Internet browser or into the Internet search engine. They may mistakenly arrive at the Respondent’s website and be confused and misled as a matter of first impression. A Google™ search for “money XE” renders the Complainant’s website as the first and second hits, which demonstrates that the disputed domain names are confusingly similar to the XE trade mark.
The Respondent’s domain name resolves to an active website offering very similar products and services to those offered by the Complainant in association with its XE mark. It also contains advertisements that trade on the goodwill associated with the XE trade mark, and compete with the Complainant’s services. The other disputed domain names resolved to a pay-per-click website that advertises third party goods and services that compete with the Complainant’s services.
The letters “XE” are emphasized as the dominant portion of the money XE logo on the Respondent’s website, and the website offers substantially similar goods and services to those offered by the Complainant in association with the XE trade mark. The disputed domain names were selected by the Respondent precisely for their strong and misleading resemblance to the Complainant’s XE mark.
(2) The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. This is because:
(i) there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names with a bona fide offering of goods or services before the Respondent had notice of the dispute in October 2009;
(ii) the Respondent was not and is not commonly known by the disputed domain names and could not have acquired trade mark or service mark rights therein, given that they infringe the Complainant’s prior rights in the XE trade mark; and
(iii) the Respondent has not made legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain and has misleadingly diverted consumers through confusion with the XE mark.
The Respondent’s interest in the disputed domain names has been to reap the benefits of the goodwill attached to the Complainant’s distinctive name and mark, for the purposes of diverting users away from the Complainant’s website, deny the Complainant’s ability to fully reflect its name and mark on various top level domains, and profit by attracting Internet users to the Respondent’s websites which promote products and services that directly compete with the Complainant’s.
The Respondent is not a licensee of the Complainant, and the latter has not consented to, authorized or acquiesced to the former’s use, registration or display of the XE mark, or a term confusingly similar thereto, in any manner. There is no relationship or association between the parties. The Respondent is not now nor has he ever been commonly known by the name or trade mark XE.
The Respondent had actual knowledge at the time of registering the disputed domain names of the Complainant’s prior rights to the XE trade mark and of its business. The prominence given to XE in the Respondent’s “www.” website strongly suggests that the Respondent had set out deliberately to increase the likelihood of confusion with the Complainant and its mark.
The domain name resolves to a website that confuses consumers into believing that it is operated by or affiliated with the Complainant. The remaining disputed domain names resolve to a portal website that links to other websites offering competing services. Such use is not a bona fide offering of services or legitimate fair use.
(3) The Complainant asserts that the disputed domain names were registered and are being used in bad faith. The reasons given are as follows:
(i) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, products and services.
(ii) The Respondent registered the disputed domain names to prevent the Complainant from reflecting the XE mark in its domain names. By registering the disputed domain names sequentially over time, the Respondent has deliberately and unlawfully competed with the Complainant and disrupted its business.
(iii) The Respondent’s registration and use of the disputed domain names unlawfully trades on the goodwill association with the Complainant’s XE mark to attract traffic to his website through confusion and diversion of consumers away from the Complainant’s website.
(iv) The Respondent’s primary interest in the disputed domain names has always been for the financial benefits potentially gained in using a trade mark that has already acquired significant goodwill internationally by the Complainant. This is reflected in the fact that the Respondent’s website adopted ad verbatim the Terms of Use as found on the Complainant’s website. Internet users misdirected to the Respondent’s website that read the terms of use would be misled into believing that the website was provided by the Complainant.
(v) Further, the meta data used by the Respondent to describe his website at “www.”, namely “the world’s favorite provider of Internet foreign tools exchange and services” is a virtually identical copy of the Complainant’s well-known slogan, “the world’s favorite currency and foreign exchange site”. This shows a clear intention to trade on the Complainant’s goodwill in the XE trade mark.
(vi) The Respondent’s domain name was listed for sale on the Internet, which shows that the Respondent had registered the said domain name for purposes of selling it for profit.
(vii) Given the Respondent’s knowledge of the XE trade mark and website, and the widespread recognition that the trade mark has achieved, there can be no doubt that the Respondent’s actions were motivated by monetary considerations. The offer of sale of the domain name to the Complainant, while copying the email to the Complainant’s competitors is evidence of the Respondent’s bad faith.
(viii) The Respondent’s press release of June 21, 2010 further demonstrates the Respondent’s intention to trade on the goodwill associated with the Complainant’s trade mark XE, in bad faith.
(ix) The remaining domain names redirected to pay-per-click websites with links that trade on the goodwill associated with the Complainant’s XE mark and divert consumers from the Complainant’s website. Income has been generated from this as well as from advertising on the Respondent’s website. B. Respondent
The Respondent did not file a Response. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which the Complainant must satisfy in order to succeed in these proceedings:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of, and has rights in the trade mark XE, both by virtue of its trade mark registrations as well as by its acquired reputation.
The Panel agrees that the disputed domain names, all of which are preceded by the generic word “money”, are confusingly similar to the trade mark XE. The addition of the word “money” in the context of this case does not at all serve to distinguish it from the client’s trade mark. In fact, it adds to the confusion as the Complainant provides currency, foreign exchange and other related services. It is now well-established that the addition of generic terms to a domain name which incorporates in totality a complainant’s trade mark does not necessarily distinguish the domain name from a trade mark.
The Panel accordingly finds that the first element of the Policy has been met for each of the disputed domain names. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three ways (which are without limitation) in which a respondent may demonstrate his rights or legitimate interests in the disputed domain name:
“(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 trade mark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
To succeed on this element, the Complainant has to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Once a prima facie case is established, the Respondent has the burden of demonstrating his rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
In the absence of a Response and on the facts as presented, there is nothing to indicate that the Respondent would have been able to establish any of the circumstances set out in paragraph 4(c) of the Policy. The Respondent’s website to which the domain name resolves to is confusing to consumers as it gives the false impression that it is operated by or affiliated with the Complainant. The remaining disputed domain names resolved to a portal website that links to other websites offering competing services. The Panel agrees that such use is not a bona fide offering of services or legitimate fair use.
The Panel accordingly finds that the second element of the Policy has been met. C. Registered and Used in Bad Faith
The Panel considers the following factors to be particularly relevant to its finding that the disputed domain names were registered and are being used in bad faith:
(i) The fact that the Respondent’s website adopted ad verbatim the same terms of use found on the Complainant’s website.
(ii) The fact that the meta data used by the Respondent to describe his website at “www.” is a virtually identical copy of the Complainant’s slogan, “the world’s favorite currency and foreign exchange site”.
(iii) The fact that the Respondent offered to the Complainant the sale of the domain name, while copying the email to the Complainant’s competitors.
(iv) The Respondent’s press release of June 21, 2010, which referenced several of the Complainant’s proprietary tools bearing the XE trade mark and which gave the impression that these were his.
(v) The fact that the Respondent did not respond to the cease and desist letter of October 6, 2009.
(vi) The fact that the Respondent was aware of the Complainant’s reputation, products and services, and the trade mark XE under which these products and services were provided.
The Panel also draws a negative inference from the Respondent’s failure to file a Response notwithstanding the Respondent having initially sought legal representation with regard to this matter.
The Panel accordingly finds that the third element of the Policy has been met. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , , , , , and be transferred to the Complainant.
Francine Tan
Sole Panelist
Dated: August 23, 2010
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