Complainant is Travellers Exchange Corporation Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Dechert LLP, United Kingdom.
Respondent is WhoisGuard, Inc. of Panama, Panama / Lord Oxford of Brisbane, Australia. 2. The Domain Names and Registrars
The following disputed domain names are registered with Uniregistrar Corp (“Uniregistrar”): , , , , , , , , , , , , , , , , , , , , , , and .
The following disputed domain names are registered with NameCheap, Inc. (“NameCheap”): , , , , , , , , , , , , , , , , , , , , , , and .
All of the above disputed domain names are hereafter referred to as the “Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2018. On October 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 2 and 3, 2018, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 12, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 16, 2018.
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 Respondent of the Complaint, and the proceedings commenced on October 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 16, 2018. 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
Complainant is part of the Travelex group of companies (“Travelex”) and is the owner of the goodwill, reputation and registered trademark rights in the TRAVELEX marks (the “TRAVELEX Mark” or “TRAVELEX Marks”) internationally. The table below sets out a listing of some of Complainant’s numerous marks:
Trade Mark
Country
Registration Number
Classes
Registration Date
TRAVELEX
USA
1694803
36
June 16, 1992
TRAVELEX
UK
1343462
36
September 20, 1991
TRAVELEX
UK
2207981
16
February 4, 2000
TRAVELEX
UK
2520101
09, 35, 36
January 15, 2010
TRAVELEX
UK
2382787
09, 35,43
July 29, 2005
TRAVELEX
EU
9145285
09, 35,36
November 12, 2010
TRAVELEX
CHINA
868046
9, 16, 35, 36, 39
February 15, 2005
TRAVELEX
CHINA
1014563
9,35, 36
July 30, 2009
TRAVELEX
TURKEY
1014563
9,35, 36
July 30, 2009
TRAVELEX
AUSTRALIA
663330
36
November 28, 1997
TRAVELEX
AUSTRALIA
1325931
9, 35, 36
March 17, 2011
TRAVELEX
INDIA
1293743
36
July 1, 2004
TRAVELEX
THAILAND
Kor 178533
16
April 4, 2003
TRAVELEX
THAILAND
BOR19205
35
March 26, 2003
TRAVELEX
THAILAND
BOR19206
36
March 26, 2003
Travelex is a retail foreign exchange specialist, serving 37 million customers every year and operating 1,100 ATMs and over 1,500 branded retail branches across 30 countries. Travelex has been operating a currency exchange business since 1976. Travelex also provides money transfer services.
Travelex has widely advertised its goods and services under the TRAVELEX Marks throughout the world, including to the public through print media (newspapers and magazines), billboards, television and on the Internet. Travelex also engages in significant sponsorship activity under the TRAVELEX Marks and has sponsored sports stars and sports teams as well as cultural institutions. For example, Travelex is a longstanding and prominent sponsor of the UK National Theatre. Travelex has been recognized for the quality of its products and services and has received numerous awards and nominations. The global revenue of Travelex for the year ending December 31, 2016 was over GBP 777.5 million. Travelex operates websites at “”, “” and “”.
The Domain Names were all registered during the period from June 22, 2018 through August 6, 2018 (with the exception of registered February 5, 2018). The Domain Names resolve to websites apparently related to either transportation, environmental concerns, or disparaging comments directed towards Complainant. A number of the Domain Names do not resolve to active websites. 5. Parties’ Contentions A. Complainant (i) Identical or Confusingly Similar
Complainant states that the Domain Names are identical and/or highly similar to the TRAVELEX Marks in which Complainant has extensive rights. In particular, first, the Domain Names that consist of the TRAVELEX Mark in its entirety together with a top-level domain (“TLD”) (i.e., “.claims”, “.email”, “.exchange”, “.fail”, “.fun”, “.icu”, “.international”, “.life”, “.link”, “.live”, “.network”, “.online”, “.services”, “.store”, “.team”, “.today”, “.zone”, and “.global”) are identical to the mark. In addition, the following Domain Names are confusingly similar to the TRAVELEX Marks: , , , , , , , , , , , , , , , , , , and . Complainant asserts that it is well‑established by previous UDRP panel decisions that a domain name incorporating a distinctive trademark (such as the TRAVELEX Mark) in its entirety creates sufficient similarity between the mark and the domain name as to render it confusingly similar. Lastly, the Domain Names , , , , , , , , , and are also confusingly similar to the TRAVELEX Marks, as each consists of a minor variation of the spelling of the TRAVELEX Mark, together with a descriptive gTLD – a classic typosquatting strategy.
Complainant contends that given the near identity of these Domain Names and the TRAVELEX Marks from a phonetic perspective, individuals who are alerted to the TRAVELEX Marks orally may accidentally search online for the marks and Complainant’s website by typing one of the Domain Names into the URL bar on their devices or in a search engine. Complainant submits that Respondent has sought to take advantage of such typosquatting. (ii) Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Names. Complainant has not licensed or otherwise permitted or authorized Respondent to use its TRAVELEX Marks or to apply for a domain name incorporating the marks. Respondent’s name does not include the TRAVELEX Marks or anything similar and Respondent is not commonly known by the marks.
Complainant states that the Domain Names were registered between June and August 2018, around 41 years after Complainant’s business was established and the TRAVELEX Marks were first used. Due to the reputation and international presence of Complainant and the fact that the TRAVELEX Marks consist of the made-up word “travelex”, Complainant contends it is reasonable to assume that Respondent did not independently conceive of the name “travelex” and was aware of Complainant and its rights and reputation in the TRAVELEX Marks at the time the Domain Names were registered.
Complainant contends that Respondent is unable to rely on any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or a legitimate interests in the Domain Names. There is no obvious independent reason why the Domain Names were selected by Respondent, leading to the suggestion that they were chosen to trade off on the reputation of Complainant’s TRAVELEX Marks. By the date on which the Domain Names were registered, Complainant: (i) had been trading under the name TRAVELEX for about 41 years; (ii) had achieved significant success; and (iii) had been the subject of significant press coverage around the world. In addition, the TRAVELEX Marks had been registered in a large number of jurisdictions, including the United Kingdom, the European Union, the United States of America (“United States”), Australia and Thailand.
Complainant’s primary submission is that Respondent chose the Domain Names because Respondent knew: (i) that the TRAVELEX Marks are well-known and associated with Complainant; (ii) that use of the TRAVELEX Marks in the Domain Names would create an association with Complainant’s business; and (iii) that the Domain Names would draw traffic to Respondent’s website. Alternatively, Respondent had constructive knowledge or should have known of Complainant’s rights in the TRAVELEX Marks, which would have been revealed by a basic trademark search of the European Union, United Kingdom or United States trademark registries or by searching the word “travelex” using an Internet search engine – such constructive knowledge supports a finding of bad faith.
Complainant also contends that Respondent cannot argue, under paragraph 4(c)(iii) of the Policy, that it is making legitimate noncommercial or fair use of the Domain Names without the intent for commercial gain. Given that Respondent has registered Domain Names including Complainant’s TRAVELEX Marks identically, in no circumstances would any use of the Domain Names by Respondent constitute legitimate or fair use. Instead, the Domain Names take unfair advantage of Complainant’s rights in the TRAVELEX Marks and misleadingly divert users to Respondent’s website instead of Complainant’s website by use of Complainant’s marks. Such use is neither a legitimate nor a fair use of the Domain Names.
Complainant indicates that it has successfully brought two previous UDRP cases against Respondent involving other domain names, and alleges that Respondent has a history of involvement in numerous other proceedings under the Policy in respect of domain name registrations where Respondent has used various aliases including “Robert Seagle”, “Mike Smith” and “Mr Oxford”. See Travellers Exchange Corporation Limited v. WhoisGuard, Inc. / Lord Oxford, WIPO Case No. D2018-1523; Travellers Exchange Corporation Limited v. WhoisGuard, Inc. / Lord Oxford,WIPO Case No. D2018-1340 (includes listing of cases where Respondent, operating under different aliases, has previously been involved as respondent in nine prior UDRP proceedings resulting from abusive registration of domain names that included third-party marks or confusingly similar variants thereof).
Complainant states that Respondent registered the Domain Names in this case after receipt of Complainant’s complaints in relation to the domain names involved in the two previous UDRP cases between the parties, thereby indicating that Respondent deliberately chose to register the Domain Names incorporating the TRAVELEX Marks in order to tarnish Complainant’s marks and business. The websites linked to some of the Domain Names contain disparaging commentary against Complainant, while other sites linked to certain of the Domain Names contain a stream of consciousness on various environmental and social issues, as well as the following commentary directed against banks: “Corporate, mining and banking entities just want more consumers to rip off, Governments likewise” and “Thieves come and take what they want for themselves. Bankers do it with legal indemnity - even legal help”. Complainant asserts that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark, as is the case here.
Complainant’s solicitors sent a cease and desist letter to Respondent regarding the domain names involved in the prior UDRP cases on February 2, 2018, requesting signed undertakings and a transfer of the Domain Names to Complainant. A response was received from Respondent on February 16, 2018 claiming to have received no letter and insinuating that Complainant’s lawyers had been hired by Complainant “to purchase or to steal domains from me”. Furthermore, Respondent inquired whether Complainant’s lawyers were “asked to steal from, bully, threaten or frighten me, for Example” [sic]. A second email was sent by Complainant’s solicitors to Respondent on February 16, 2018. On March 12, 2018, Respondent responded. Similar to the first response, Respondent’s second response was threatening and hostile. Moreover, Respondent asked whether Complainant was interested in purchasing some of the domain names and wished to make an offer or for Respondent to name a price. Complainant’s representatives did not respond to this correspondence but sought Complainant’s instructions. Respondent followed up with an email on May 20, 2018, which appeared to offer to sell the domain name “if the price is right”. Complainant contends that the aggressive and accusatory comments of Respondent amount to threatening behavior and confirm that Respondent has no rights or legitimate interests in the Domain Names. (iii) Registered and Used in Bad Faith
Complainant contends that the Domain Names were registered and are being used in bad faith. In particular, Complainant asserts that Respondent registered the Domain Names in order to unfairly benefit from Complainant’s rights in its TRAVELEX Marks and primarily for the purpose of disrupting Complainant’s business. For the reasons set out above, Respondent must have been aware of the TRAVELEX Marks and Complainant’s rights in those marks when registering the Domain Names. Respondent’s use of the TRAVELEX Marks in the Domain Names is intended to lead consumers to believe that they have reached (or have not been able to reach, as the case may be) Complainant’s website and so divert Internet traffic from Complainant, thereby interfering with Complainant’s business. Respondent could not have chosen or subsequently used the TRAVELEX Marks in the Domain Names for any reason other than to trade on Complainant’s rights in that name and to confuse Internet users. Complainant contends that is, in itself, evidence of bad faith both generally and specifically, within the meaning of Rule 4(b)(iii) of the Policy.
Complainant also states there is a pattern of abusive registrations and bad faith conduct by Respondent. Previous UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration.
Complainant alleges that in response to the cease and desist letter sent on February 2, 2018, Respondent uploaded websites with abusive content. The following statements could be read on the websites linked to the domain names in dispute in the two prior cases: “as 900 lawyers and a rich London quasi banking ‘practices’ make a few people rich by blatant theft from many ‘marks’ or ‘customers’”, “A seedy, puffed up vainglorious pseudo banker. Claiming any name with ‘Travel’ in it, rightfully his”. As set out above, Respondent also posted websites with other harmful content. Furthermore, in his email from March 12, 2018, Respondent used threatening and hostile language in order to insinuate theft and criminality: “so What’s your Problem, Amanda?”, “or do you plan to obtain them as your rights as an authorized thief?” and “Perhaps You have already decided to declare war on me”. The websites with abusive content and the hostile email responses show a pattern of threatening behavior.
Furthermore, Complainant asserts that the following facts are particular to this case and lead to the conclusion that the Domain Names were registered and are being used in bad faith are:
- Respondent harmed Complainant’s rights in the TRAVELEX Marks when it registered the Domain Names, in particular by diluting those rights. Such behavior constitutes a breach of clause 7 of Respondent’s registration agreement with Namecheap and clause 2.2 of its registration agreement with Uniregistry Corp.;
- Respondent has registered the Domain Names featuring the TRAVELEX Mark in its entirety together with gTLDs that correspond to Complainant’s area of activity or a natural zone of expansion;
- Respondent registered the Domain Names immediately prior to or just following the decision being handed down in Complainant’s favor in respect of the domain names in the prior UDRP cases between the parties; and
- Respondent has taken active steps to conceal Respondent’s true identity, by registering the Domain Names through a WhoIs privacy service.
As a result, Complainant states it is not possible to conceive of any plausible actual or contemplated active use of the Domain Names by Respondent that would not be illegitimate, such as by passing off or an infringement of Complainant’s rights under trademark law. As such, Complainant submits that this equates to further evidence that the Domain Names were registered and are being used in bad faith.
Complainant notes that, as explained above, the Domain Names were registered 41 years after Complainant was founded and Complainant has substantial goodwill and reputation in the TRAVELEX Marks. Accordingly, in the absence of any legitimate interests in the Domain Names, the registration of the Domain Names by Respondent cannot have been in good faith. In addition, trademark searches on the date of the registration of the Domain Names would have revealed Complainant’s trademark registrations. This is further evidence of registration and use of the Domain Names in bad faith. Given Complainant’s substantial international reputation, it is reasonable to infer that Respondent had actual knowledge of, or at least constructive knowledge of, Complainant’s rights in the TRAVELEX Marks when Respondent registered the Domain Names and since then. To have proceeded with registration knowing of Complainant’s rights demonstrates Respondent’s bad faith. Bad faith exists where there can be no question that Respondent knew or should have known about Complainant’s trademark rights before registering the Domain Names.
Finally, Complainant asserts that the Domain Names are confusingly similar to Complainant’s TRAVELEX Marks. Previous UDRP panels have ruled that a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site. To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established strong rights in its TRAVELEX Marks, based on its trademark registrations and extensive use of the marks internationally for more than 40 years.
Further, the Panel determines that all of the Domain Names are confusingly similar to Complainant’s TRAVELEX Marks. Most of the Domain Names incorporate the TRAVELEX Mark in its entirety, while adding different descriptive TLDs (i.e., “.claims”, “.email”, “.exchange”, “.fail”, “.fun”, “.icu”, “.international”, “.life”, “.link”, “.live”, “.network”, “.online”, “.services”, “.store”, “.team”, “.today”, “.zone”, and “.global”). Well‑established UDRP precedent holds that “the addition of a gTLD, the deletion of spaces or other such trifling changes are utterly de minimus, if not completely irrelevant, in assessing confusing similarity/identicality and thus are typically ignored”. See, e.g., Jelani Jenkins v. Amy Lewis, WIPO Case No. D2014-0695.
Other Domain Names in this case – including, among others, , , , , , , , , , , , , , , and – either (i) use a misspelling of the TRAVELEX Mark that presents the near-phonetic or aural equivalent of the mark or (ii) add terms such as “fast”, “express”, “rapid”, “evil”, “nazi” or “barracuda”, to the TRAVELEX Mark which is recognizable within the Domain Names. Thus, here too, the Panel finds that these Domain Names are confusingly similar to Complainant’s TRAVELEX Marks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
Accordingly, the Panel finds that that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its TRAVELEX Marks; that Respondent is not commonly known by the marks or the Domain Names; that Respondent has not used the Domain Names for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services – instead, based on the facts of record, particularly the screenshots of Respondent’s websites, there is no evidence that Respondent is offering any goods or services through any of its corresponding websites or has made any demonstrable preparations to do so. Rather, the Domain Names were registered afterComplainant had sent a cease and desist letter to Respondent regarding domain names involved in another prior UDRP proceeding. The Panel also notes that Complainant had filed two complaints against Respondent in two prior UDRP cases and the sites linked to the Domain Names provide commentary that disparages Complainant, its solicitors and apparently bankers in general, and also commentary concerning various environmental and social issues. Respondent’s use of the Domain Names in this manner does not give rise to any rights or legitimate interests in them, especially where the Domain Names are identical or confusingly similar to Complainant’s TRAVELEX Marks. The Panel notes the use of some terms to disparage Complainant’s TRAVELEX Mark, which considering Respondent’s pattern of conduct attempting to profit from the sale of some of the domain names involved in a previous UDRP proceeding, support the Panel’s conclusion that Respondent does not have rights or legitimate interests in the Domain Names. As the panel found in previous UDRP case involving Complainant and Respondent, Travellers Exchange Corporation Limited v. WhoisGuard, Inc. / Lord Oxford,WIPO Case No. D2018-1523:
“[Respondent’s] intent becomes rather evident to the Panel by the Respondent’s actions of having deliberately registered multiple domain names in order, as discussed in the section on bad faith registration and use below, to likely solicit an offer from the Complainant to purchase the names from the Respondent at a profit rather than using any of them primarily as a vehicle in posting noncommercial, even derogatory, content that would qualify under paragraph 4(c)(iii) of the Policy. Exploiting the names in this manner cannot and does not qualify under paragraph 4(c)(iii) as a legitimate noncommercial or fair use of any of the names without intent for commercial gain.”
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Names, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrates that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Names were registered and are being used in bad faith. First, based on the evidence, the Panel finds that Respondent was undoubtedly aware of Complainant and its TRAVELEX Marks, and targeted those marks when registering the Domain Names. The Panel observes that the Domain Names were registered only after Complainant had filed two prior UDRP cases against Respondent. Further, Complainant started its business and began using its TRAVELEX Marks and developing substantial goodwill and reputation in them approximately 41 years prior to the period of June through August 2018, during which Respondent registered the Domain Names. Moreover, Respondent registered the Domain Names, which either incorporate the TRAVELEX Marks in their entirety, or misspell it, or in some instances add a word that either reinforces a connection to Complainant and its brand and business, or disparages the same. The Panel considers that the only logical conclusion from these facts is that Respondent targeted Complainant and its TRAVELEX Marks when registering the Domain Names in bad faith.
As to bad faith use, Complainant submitted evidence to show that the Domain Names were registered only after Complainant had sent a cease and desist letter to Respondent regarding the domain names involved in one of the prior UDRP proceedings. In addition, Complainant filed two prior UDRP cases against Respondent (which resulted in the transfer of the domain names), and provided evidence that the websites linked to the Domain Names provide commentary that, among other things, disparages Complainant and its solicitors. This timing, in the circumstances of the case, and the evidence of a pattern of abusive domain name registrations and bad faith conduct by Respondent, leads the Panel to conclude that Respondent registered the Domain Names as a form of retaliation, primarily for the purpose of disrupting Complainant’s business. Moreover, Respondent has taken active steps to conceal Respondent’s true identity, by registering the Domain Names through a WhoIs privacy service. Thus, in this case where Respondent targeted Complainant’s TRAVELEX Marks and failed to submit a response to the Complaint, and where the Domain Names were registered in retaliation and linked to websites containing disparaging content, these circumstances, when considered in context with all of the other circumstances of the case, support the Panel’s finding of bad faith registration and use.
Accordingly, the Panel therefore finds that Complainant has established the third element of the Policy in accordance with paragraph 4(a)(iii). 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 following Domain Names be transferred to Complainant: , , , , , , , , , , , , , , , ,, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and .
Christopher S. Gibson
Sole Panelist
Date: December 6, 2018
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