ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Travellers Exchange Corporation Limited v. Anonymize, Inc. Case No. D2023-0949 1. The Parties The Complainant is Travellers Exchange Corporation Limited, United Kingdom, represented by Deloitte LLP, United Kingdom. The Respondent is Anonymize, Inc., United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Epik, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 2, 2023. On March 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2023, 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 ("Redacted for Privacy, Anonymize, Inc") and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2023, providing the registrant and contact information disclosed by the Registrar, and informed the Complainant that no action is required in light of this information. 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 March 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 11, 2023. The Center appointed Anna Carabelli as the sole panelist in this matter on April 17, 2023. 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. page 2 4. Factual Background The Complainant is a retail foreign exchange specialist since 1976, operating in over 20 countries with over 1,000 retail stores and over 900 ATMs. In its retail business, the Complainant operates stores in the world's top international airports and in major transports hubs, premium shopping malls, supermarkets, and city centers, and has also developed a growing online and mobile foreign exchange platform, having achieved 260,000 mobile and online transactions in 2019. The Complainant also provides money transfer services. The Complainant owns a portfolio of registered trademark for TRAVELEX (the "TRAVELEX Mark") internationally, including the following: Trademark Country Registration Number Registration Date TRAVELEX USA 1694803 June 16, 1992 TRAVELEX (logo) USA 6564976 November 23, 2021 TRAVELEX UK 2207981 January 15, 2010 TRAVELEX UK 2520101 January 15, 2010 TRAVELEX UK 2382787 July 29, 2005 TRAVELEX (logo) UK 3429410 March 20, 2020 TRAVELEX EU 9145285 November 12, 2010 TRAVELEX EU 18130041 January 31, 2020 The Complainant further owns multiple domain names consisting of the word "travelex", under both the generic Top-Level Domain ("gTLD") and country code top-level domain ("ccTLD") extensions, including which resolves to the Complainant's main website. The Complainant also operates websites at "www.travelx.co.uk" and "www.travelex-corporate.com". The Complainant has widely advertised its goods and services under the TRAVELEX Mark throughout the world, including to the public through print media (newspapers and magazines), billboards, television, and on the Internet. The Complainant has also in the past engaged in significant sponsorship activity under the TRAVELEX Mark and has sponsored sports stars and sports teams as well as cultural institutions. The Complainant has been recognized for the quality of its products and services and has received numerous awards and nominations. The disputed domain name was registered on October 15, 2022. As disclosed in the Registrar's verification response to the Center, "the registrant of the domain is a client of Epik and is utilizing Anonymize as a private proxy. Anonymize a Whois proxy service provider, which this domain is currently using". The evidence in the Complaint is that the disputed domain name is inactive and resolves to a holding page which states "contact domain owner". 5. Parties' Contentions A. Complainant The Complainant submits and contends that: - The disputed domain name is confusingly similar to the TRAVELEX Mark in which the Complainant has rights. In this regard, the Complainant notes that the disputed domain name entirely incorporates the TRAVELEX Mark, which is distinctive and well known internationally and firmly associated with the Complainant, as recognized by previous UDRP panel decisions. The gTLD "exchange" when added to the TRAVELEX Mark describes the travel currency exchange services for which the Complainant is known, which reinforces the proximity to the Complainant's registrations and activities. page 3 - The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized or somehow given consent to the Respondent to register and use the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. - The disputed domain name was registered in bad faith. The Respondent must have known of the Complainant's TRAVELEX Mark when it registered the disputed domain name. The Complainant's mark has a strong reputation and is the subject of substantial goodwill, as recognized by previous UDRP decisions. By the date on which the disputed domain name was registered, the Complainant had been trading under the name TRAVELEX for over 40 years, had achieved significant success, and had been the subject of significant press coverage around the world. - The disputed domain name is also used in bad faith. The fact that the disputed domain name resolves to a holding page will nonetheless cause confusion amongst the Complainant's consumers and business partners, as the disputed domain name appears dormant. The Complainant further submits that the Respondent seeks to use the disputed domain name in connection with the Complainant's brand as a means of enticing a sale, either to the Complainant or to a competitor of the Complainant, of the disputed domain name within the meaning of paragraph 4(b) of the Policy. - The Respondent's concealment of his, her or its identity by using a proxy service is also indicative of bad faith. Based on the above, the Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the panel to decide the complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the complainant must prove each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the respondent, shall be evidence of the respondent's rights to or legitimate interests in a disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the TRAVELEX Mark based on the evidence submitted in the Complaint. page 4 The disputed domain name consists of the Complainant's TRAVELEX Mark, followed by the gTLD ".exchange". As highlighted in section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the addition of a gTLD such as ".exchange" is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. As highlighted in section 1.7 of the WIPO Overview 3.0, the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The disputed domain name entirely incorporates the Complainant's TRAVELEX Mark and this is a sufficient element to establish the first element, as held by previous UDRP panels (e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409). Accordingly, the Panel finds that disputed domain name is identical to a mark in which the Complainant has rights. Therefore, the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) before any notice to it of the dispute, its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, based on the following: (a) the Complainant holds prior rights in the registered and well-known TRAVELEX Mark, (b) the Respondent has not been authorized to use the Complainant's mark in any way, and (c) the Respondent cannot demonstrate any legitimate noncommercial or fair use of the disputed domain. In this connection, the Complainant has provided evidence that the disputed domain name does not resolve to an active website. According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. By not submitting a response, the Respondent has failed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy. There is no indication before the Panel of any activity in relation to the disputed domain name that would give rise to rights or legitimate interests to the Respondent. Moreover, the disputed domain name is identical to the Complainant's TRAVELEX Mark and page 5 given the Complainant's operations in currency exchange, the addition of the gTLD ".exchange" reinforces the direct inference that the disputed domain name is associated with the Complainant, contrary to the fact. Such a high risk for implied affiliation cannot constitute fair use. WIPO Overview 3.0, section 2.5.1. Therefore, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, which includes: (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location". The disputed domain name incorporates the Complainant's TRAVELEX mark and was registered long after the Complainant started its business and had registered and used the TRAVELEX Mark. Given the distinctiveness and well-established reputation of the Complainant's trademark, in all likelihood the Respondent could not ignore the Complainant's TRAVELEX Mark at the time the disputed domain name was registered. The Panel's finding is reinforced given the purposeful registration of the Complainant's TRAVELEX Mark in the gTLD ".exchange", which directly references the services provided by the Complainant under its TRAVELEX Mark. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2). As to bad faith use, the evidence submitted with the Complaint shows that the disputed domain name does not resolve to an active website and points to a holding page which states: "contact domain owner". The current inactive status of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. As stressed by many previous UDRP decisions, "While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated goodfaith use, (iii) the respondent's concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put." (See section 3.3 of the WIPO Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Each of these considerations points to the Respondent's passive holding of the disputed domain name being in bad faith. Specifically: (i) the Complainant's trademark is distinctive and well established; (ii) the Respondent has failed to submit a response to the Complaint or provide any evidence of good-faith use; (iii) the Respondent has registered the identical disputed domain name through a privacy service, which under the circumstances of the case and the Registrar's verification response provided to the Center, this fact suggests the Respondent's has taken steps to conceal its identity and supports an inference of bad faith (see section 3.6 of the WIPO Overview 3.0); (iv) the absence of any relationship between the Respondent and the Complainant; and, (v) there is no conceivable good faith use to which the disputed domain name could be put by the Respondent. For all the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent. Therefore, the Complainant has established also paragraph 4(a)(iii) of the Policy. page 6 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. /Anna Carabelli/ Anna Carabelli Sole Panelist Date: May 1, 2023
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