The Complainant is TTT Moneycorp Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Guiying Huang of Sanya, China. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2016. On October 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2016, the Registrar 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2016.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on November 14, 2016. 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. 4. Factual Background
The Complainant was incorporated in 1962 and operates, since 1993, under the name of TTT Moneycorp Limited, in the field of financial services, offering foreign exchange services to business and individual customers.
The Complainant is essentially operating bureaux de change in and around London with 30 airport stores, including at Heathrow, Gatwick and Stansted in the United Kingdom. The Complainant’s international payments business earned revenues of GBP 31.3 million, experiencing significant growth in online channel sales. In 2014 the Complainant has carried out 7.2 million transactions dealing with over 90 different currencies.
The Complainant owns trademark rights in the “MONEYCORP and TTT MONEYCORP marks as follows:
Registration/
Application no.
Country/Region
Date of
registration
Trade mark
Class
000894980
EU
14.12.1999
MONEYCORP
36, 39, 41
000967968
EU
14.3.2000
MONEYCORP
16
000968016
EU
14.3.2000
TTT MONEYCORP
16
009378019
EU
3.2.2011
MONEYCORP GPS
9, 36
000895151
EU
14.12.1999
TTT MONEYCORP
36, 39, 41
2399042
US
26.3.1999
MONEYCORP
36
TMA711280
CA
8.4.2008
MONEYCORP
36
UK00002173709
UK
26.3.1999
MONEYCORP
36
UK00002180286
UK
2.1.2000
MONEYCORP
16
2396878
US
15.1.1999
TTT MONEYCORP
36
UK00002180292
UK
2.1.2000
TTT MONEYCORP
16
UK00002173710
UK
15.1.1999
TTT MONEYCORP
36
867507
International Registration
12.9.2005
MONEYCORP
36
Besides that, the Complainant registered the domain in 1998, which hosts the Complainant’s official website and, in addition, owns the domain which was registered in 2008. The Complainant promotes a multi-currency pre-paid “Moneycorp card” and has seen growth in its reserve and collect services, which allow consumers to order online at a preferential rate for collection at branches, including those at airports. The Complainant carries out promotions which is a form of advertising for its “Moneycorp card”.
The disputed domain was registered on June 8, 2015. It resolves to a pay-per-click (“PPC”) site providing PPC links to competitors of the Complainant. The Respondent owns several other domain names incorporating names of financial institutions with typographical errors.
The Complainant sent the Respondent a cease-and-desist letter via email. The Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical to its registered trademarks. It submits that it is also confusingly similar to its Moneycorp Card services and therefore infringes rights held by the Complainant according to paragraph 4(a)(i) of the Policy.
According to the Complainant, the words “Moneycorp Card” are solely used by it and have become synonymous with the Complainant’s card service. Also, the Complainant contends that the disputed domain name is composed of a name identical to the MONEYCORP trademark and the non-distinctive term “cards”.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii). The Complainant submits that circumstances as set out by paragraph 4(c)(i) to (iii) are not met. The Complainant’s trademark rights predate the Respondent’s registration of the disputed domain named by far. Moreover, the burden of proof in this respect is subject to the Respondent’s responsibility. So far no preparations for business or trade efforts according to 4(c)(i) have been monitored.
The Complainant further argues that the Respondent is not making legitimate use of the disputed domain named as the Respondent is attracting Internet users to PPC links of competitors of the Complainant making use of the mark MONEYCORP which the public associates with the Complainant only, thereby misleading the general public to visit a website that they believe belongs to the Complainant.
The Complainant confirms it has not licensed or otherwise authorized the Respondent to use the mark.
The Complainant contends that the disputed domain name has evidently been registered and is being used in bad faith according to paragraph 4(a)(iii) as circumstances indicating bad faith according to paragraph 4(b) of the Policy are present. The registration of the Complainant’s domain name and the MONEYCORP trademarks predate the registration of the disputed domain. The Complainant further argues that by using the disputed domain name the Respondent clearly intends to take advantage of unintentional typo errors by Internet users seeking the aforementioned card services of the Complainant. Moreover, that fact that the Respondent owns a number of other domain names incorporating trademarks of financial institutions with typographical errors shows a pattern of conduct of the Respondent that speaks for itself. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that
(i) the disputed domain name is identical or confusingly similar to a trademark 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 name;
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(b)(i), it is expected of a respondent to “[r]espond specifically to the statements to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.
In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.
In the event of default, under the Rules, paragraph 14(b) “[…] the Panel shall draw such inferences therefore as it considers appropriate.” As stated by numerous UDRP panels (e.g., Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: “[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”
In the present administrative proceeding, the Respondent has chosen not to submit a response. Its default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the contentions of the Complainant. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable. A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark “MONEYCORP” which predate the registration of the disputed domain name. The disputed domain name consists of the term “moneycorpcards”.
The disputed domain name contains the Complainants trademark in its entirety and differs from the trademarks only by the addition of the word “cards” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of the gTLD suffix does not dispel confusion. The gTLD of the disputed domain name is to be ignored for the purposes of assessing confusing similarity as it is a functional requirement of the domain name system, which is the common view of UDRP panelists and held in earlier cases such as DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694; Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493.
The additional word “cards” is an expression commonly used in the financial services industry to indicate certain means by which financial services are being provided. For this reason, the Panel concludes that the word “cards” is solely descriptive. The use of the added descriptive word does not change the overall impression of the domain name as being dominated by the MONEYCORP mark and does not serve to distinguish the disputed domain name from the Complainant’s mark (See Microsoft Corporation v. Hassan Pennock,WIPO Case No. D2005-1020; Dell Inc. v. DI_4747995,WIPO Case No. D2007-0803; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
Hence, the disputed domain name is confusingly similar to the Complainant’s trademark MONEYCORP. Moreover, the disputed domain name suggests that it resolves to a website operated or otherwise authorized by the Complainant in relation to its Moneycorp Card services. Therefore, Internet users would suppose that the domain name refers to a website of or authorized by the Complainant.
In view of the above, the Panel finds that neither the added gTLD “.com” nor the added descriptive element “cards” are apt to avoid confusion with the Complainant’s trademarks. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interest in the disputed domain name in order to place the burden of production on the Respondent (See Credit Agricole S.A. v. Dick Weisz,WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the disputed domain name and that, according to the Complainant, the Respondent has not acquired trademark or service mark rights. The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.
Hence, the burden of production is on the Respondent. In such case, the Respondent must by substantial evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.
Consequently, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the disputed domain name in bad faith.
Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating the five factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name;
(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct;
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
The Complainant has brought evidence that its trademarks are known to a substantial part of consumers due to intense use and trade activities made under the trademark, which has not been contested by the Respondent.
Further, the Complainant has brought forward considerable evidence that the Respondent is using the disputed domain name in order to attract Internet users looking in particular for the Complainant’s website at “www.” to the Respondent’s own website by creating a likelihood of confusion with the Complainant’s trademark mark. The Respondent has added only an additional “s”, demonstrating the Respondent is attempting to confuse Internet users as to the source, sponsorship, affiliation or endorsement of its website for the purposes of monetary gain. The Respondent’s website is a typical parking website, providing links to websites of the Complainant’s competitors and generating revenues by means of a PPC mechanism. The Panel concludes that the Respondent deliberately registered the disputed domain name with the Complainant’s mark in mind, seeking to derive PPC revenues from Internet users looking for the Complainant’s website.
In similar circumstances, panels have consistently recognized that the registration of domain names which are confusingly similar to a complainant’s trademark, and which are then used to operate PPC sites, may be considered to be evidence of bad faith (see Credit Industriel et Commercial S.A. v. Richard J.,WIPO Case No. D2005-0569, Société Air France v. Bing G Glu,WIPO Case No. D2006-0834 and Société Air France v. WWW Enterprise, Inc.,WIPO Case No. D2005-1160).
For all of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy. It is also taken into consideration that the numerous registrations by the Respondent amount to a conduct of pattern of registering domain names that bear significant similarity and resemblance to well-known trademarks (Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798). 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrea Jaeger-Lenz
Sole Panelist
Date: December 1, 2016
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