ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Travellers Exchange Corporation Limited v. dfg dgg Case No. D2024-1999 1. The Parties The Complainant is Travellers Exchange Corporation Limited, United Kingdom (“U.K.”), represented by Deloitte LLP, U.K. The Respondent is dfg dgg, Hong Kong, China. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2024. On May 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (PRIVACYGUARDIAN.ORG LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 17, 2024 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 May 21, 2024. 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 May 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default June 18, 2024.
page 2 The Center appointed Marilena Comanescu as the sole panelist in this matter on June 21, 2024. 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, a U.K. based corporation, and its group of companies operate a market foreign exchange business, which operates since 1976, has extended across 60 countries and covers the entire value chain of retail foreign exchange industry. In its retail business, the Complainant operates stores in the international airports, major transport hubs, premium shopping malls, high street locations, supermarkets ad city centers. Also, the Complainant has developed a growing network of ATMs and has built a growing online and mobile foreign exchange platform, having achieved 260,000 mobile and online transactions in 2019. The Complainant, directly and through its group of companies, holds worldwide trademark registrations for TRAVELEX, such as the following: - the U.K. trademark registration number 01343462 for TRAVELEX (word), filed on May 4, 1988, and registered on September 1202, 1991, for services in International class 36; - the Chinese trademark registration number 868046 for TRAVELEX (word), registered on February 15, 2005, for goods and services in International classes 9, 16, 35, 36, 39; and - the European Union trademark registration number 09145285 for TRAVELEX (word), filed on June 1, 2010 and registered on November 12, 2010, for goods and services in International classes 9, 35, 36. The Complainant holds domain names incorporating the TRAVELEX mark, such as , the main website registered since March 1996, , or . The Complainant has widely advertised its goods and services under the mark, including to the public through print media, billboards, television and on the Internet; has also engaged in significant sponsorship activities under the mark; and has received numerous awards and nominations. The international reputation of the Complainant’s mark is also confirmed by numerous UDRP decisions. See Travellers Exchange Corporation Limited v. Wei Cao, WIPO Case No. D2022-2388, or Travellers Exchange Corporation Limited v. Epic Promoters, WIPO Case No. D2022-2385. The disputed domain name was registered on June 9, 2023, and, at the time of filing of the Complaint, it was inactive and resolved to a holding page. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that it has a longstanding and well-established goodwill and reputation in the TRAVELEX mark on a global basis; the disputed domain name is identical or confusingly similar to its trademark and domain names, adding to the TRAVELEX trademark the descriptive term “forex”, which is generally recognised as a contraction of the words “foreign” and “exchange” whereas the Complainant operates a business related to foreign exchange and has acquired a significant goodwill and reputation in this area; that the Respondent has no rights or legitimate interests in the disputed domain name; and that
page 3 the Respondent registered and is using the disputed domain name in bad faith, registering it more than four decades after the Complainant’s first use of its mark; the “forex” portion makes the use of the disputed domain name for financial services highly likely; and the fact that the disputed domain name resolves to a holding page will continue to cause confusion against the Complainant’s consumers and business partners and/or could be taken by the public to be indicative of a failed business endeavor and/or technological issues on the part of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “forex”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel notes that the composition of the disputed domain name, which combines the Complainant’s distinctive trademark with the term “forex”, descriptive for the Complainant’s business, suggests an affiliation with the trademark owner. Panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the disputed domain name was registered in bad faith, with knowledge of the Complainant, its trademark and business, particularly because the Complainant’s trademark predates the registration of the disputed domain name with more than four decades and because the disputed domain name is a combination between the Complainant’s trademark and the descriptive term “forex”, whereas the Complainant operates a foreign exchange business and has acquired a significant goodwill and international reputation in this area. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. At the time of filing the Complaint, the disputed domain name directs towards an inactive page. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the international reputation of the Complainant’s trademark; the composition of the disputed domain name; the Respondent’s failure to respond to the present proceedings; and the use of privacy shield and inaccurate/incomplete contact details in the WhoIs (which prevented the delivery of the Center’s Written Notice), and finds that, in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Further, it has been consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s famous or widely-known trademark can create, by itself, a presumption of bad faith for the purpose of Policy. WIPO Overview 3.0, section 3.1.4. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Marilena Comanescu/ Marilena Comanescu Sole Panelist July 5, 2024
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