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 Colli Wood of Texas, United States of America ("United States"). 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 14, 2016. On November 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 November 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 14, 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 name since 1976.
The Complainant is the owner of several trademark registrations amongst which are the following:
- United Kingdom Trademark Registration No. 1,343,462 TRAVELEX (word mark), registered on May 4, 1988 in class 36;
- United States Trademark Registration No. 1,694,803 TRAVELEX (word mark), registered on June 16, 1992 in class 36;
- International Trademark Registration No. 1,014,563 TRAVELEX (word mark), registered on July 30, 2009 in classes 9, 35 and 36; and
- Indian Trademark Registration No. 1,293,743 TRAVELEX (word mark), registered on July 1, 2004 in class 36.
The disputed domain name was registered on April 19, 2016. No active webpage resolves from the disputed domain name. 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 and related business such as insurance, having built up a substantial reputation and goodwill in said trademark.
The Complainant argues that the disputed domain name is confusingly similar with its trademark given that the addition of the word "insurance" enhances the likelihood of confusion since the Complainant also operates in the insurance industry.
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 TRAVELEX trademark and therefore it is not reasonable to conceive that the Respondent independently conceived 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 not making a legitimate noncommercial or fair use of the disputed domain name; and
(iii) 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 the bad faith in the 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 Complainant asserts that the disputed domain name has been passively held, given that it does not resolve to an active webpage, what has already been found as an indication of bad faith registration and use of a domain name. 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 addition of the term "insurance" to the Complainant's trademark under this Panel's view indeed does not diminish the likelihood of confusion in view of the Complainant's activities and therefore the first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the 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 first 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 no active use of the disputed domain name appears to have taken place which makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in a domain name that reproduces in its entirety the Complainant's 40-year-old trademark TRAVELEX.
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) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
Previous UDRP panels have already dealt with the question of whether the "passive holding" of a domain name could constitute bad faith. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that "[…] panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity".
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(ii) The Complainant's trademark TRAVELEX is widely recognized and it has been in use for decades to identify one of the largest retail foreign exchange companies. The Panel's understanding is that it would be unlikely that the Respondent would come up, naturally and by an act of creativity, with the dominant part of the disputed domain name, especially considering the addition to this dominant part of the term "insurance", which is one of the activities in which the Complainant operates.
Taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.
For the reasons stated above, the Respondent's conduct amounts, in this Panel's view, to bad faith registration and use of the disputed domain name. 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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