The Complainant is Travellers Exchange Corporation Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Dechert LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Sudhakar M, SpaceSoft Solutions Pvt. Ltd. of Hyderabad, India. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2016. On November 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 11, 2016.
The Center verified that the Complaint together with the amended 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 November 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2016.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 20, 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 is part of the Travelex group of companies which operates a currency exchange business under the TRAVELEX brand since 1976.
The Complainant is the owner of several trademark registrations amongst which are the following:
- United Kingdom Trademark Registration No. 1343462 for TRAVELEX (word mark), registered on May 4, 1988 in class 36;
- United States of America Trademark Registration No. 1694803 for TRAVELEX (word mark), registered on June 16, 1992 in class 36;
- International Trademark Registration No. 1014563 for TRAVELEX (word mark), registered on July 30, 2009 in classes 09, 35 and 36, and
- Indian Trademark Registration No. 1293743 for TRAVELEX (word mark), registered on July 1, 2004 in class 36.
The disputed domain name was registered on June 7, 2016. The disputed domain name resolves to a parked page displaying sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is the largest retail foreign exchange specialist, serving 37 million customers every year and operating 1,250 ATMs and over 1,400 branches in 26 countries. It further states that it has been extensively using the name and trademark TRAVELEX since 1976 in relation to the currency exchange business, having built up a substantial reputation and goodwill in said trademark.
The Complainant argues that the disputed domain name is identical to its trademark and therefore is confusingly similar to it.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent registered the disputed domain name 40 years after the Complainant coined its made-up TRAVELEX trademark and therefore it is not reasonable to conceive that the Respondent independently conceive the disputed domain name without having been aware of the Complainant at the time of the registration of the disputed domain name;
(ii) the Respondent has not been commonly known by the disputed domain name, nor has made any indication of a legitimate interest in view of its use of the disputed domain name as of the time of its registration;
(iii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services and is therefore not making a legitimate noncommercial or fair use of the disputed domain name; and
(iv) the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark or apply for the disputed domain name.
As to the registration of the disputed domain name in bad faith the Complainant contends that it was done clearly in bad faith given that it has been using the TRAVELEX trademark for over 40 years, well before the registration date of the disputed domain name, what is clearly an indicative of the Respondent’s knowledge of the Complainant and accordingly of bad faith registration of the disputed domain name.
The Complainant further argues that the registration of the disputed domain name was clearly done primarily for the purpose of disrupting the Complainant’s business, diverting Internet traffic from the Complainant’s website thereby interfering with the Complainant’s business.
Furthermore, the Complainant sent a cease and desist letter to the Respondent and subsequent reminders outlining its rights but the Respondent did not reply to them.
Moreover, the disputed domain name has been passively held, given that it resolves to a directory of links, what has already been found as an indication of bad faith registration and use of a domain name when present the knowledge that the domain name infringes upon another party’s trademark rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar
The Complainant has established rights in the TRAVELEX trademark, duly registered in various countries.
The Panel finds that the disputed domain name merely reproduces the Complainant’s mark thus being confusingly similar therewith. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed, permitted or otherwise authorized the Respondent to use the TRAVELEX trademark.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Another element to consider is the fact that except for the disputed domain name resolving to a website displaying sponsored links related to the Complainant and its activities, such as “Travelex currency exchange” or “Travelex Rates”, which in the Panel’s opinion shall not be considered in the present proceeding as a legitimate, noncommercial or bona fide use of the disputed domain name, no other active use of the disputed domain name appears to have taken place which makes it even more difficult to conceive any rights or legitimate interests the Respondent could have in a domain name that reproduces in its entirety the Complainant’s 40-year-old trademark.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with a parked pay-per-click website with links related to the Complainant and its activities characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the advertisements and links that solely exist in view of the association with the Complainant’s trademark.
Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s notorious trademark, thus capitalizing on the Complainant’s mark by creating a likelihood of confusion in Internet users who likely believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, two other factors corroborate with the finding of bad faith in the registration of the disputed domain name:
(i) the absence of reply to the warning letters the Complainant sent before filing the Complaint (Annex A to the Complaint); and
(ii) the use of a privacy shield/privacy protection service in connection with a false address in the WhoIs data.
For the reasons stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: December 29, 2016
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