Complainant is MoneyGram Payment Systems Inc. of Minneapolis, Minnesota, United States of America, represented by Hoogenraad & Haak, advertising + IP advocaten, the Netherlands.
Respondent is Kan of Glenside, Wellington, New Zealand. 2. The Domain Name and Registrar
The disputed domain name (hereafter: the “Domain Name”) is registered with SIDN through Internet Service Europe B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On December 13, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On December 14, 2012, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 18, 2012. In accordance with the Regulations, article 7.1, the due date for Response was January 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 8, 2013.
The Center appointed Dinant T.L. Oosterbaan as the panelist in this matter on February 6, 2013. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
According to the evidence submitted by Complainant, Complainant holds several trademark registrations for MONEYGRAM, including a Benelux wordmark with registration number 0556298 and a registration date of September 8, 1994. The Benelux trademark has been issued prior to the registration of the Domain Name by Respondent. The trademark MONEYGRAM is being used by Complainant and its associated companies in assisting customers in making global money transfers.
The Domain Name was registered by Respondent on August 28, 2004. 5. Parties’ Contentions A. Complainant
Complainant submits that the Domain Name is confusingly similar to the MONEYGRAM trademark as it contains the MONEYGRAM trademark in its entirety.
According to Complainant, in view of Complainant’s trademarks, Respondent has no rights to or legitimate interests in respect of the Domain Name. Internet users are directed to a website which is a (parking) page displaying pay-per-click links. According to Complainant since the registration of the Domain Name there has been no real trade activity on the website under the Domain Name. Complainant submits that Respondent uses the Domain Name without permission from Complainant for commercial gain and with the purpose of benefiting from the reputation of the trademarks of Complainant. Complainant submits that Respondent has registered or is using the Domain Name in bad faith as Respondent no doubt had or should have had knowledge of the well-known trademark of Complainant and is intentionally misleading Internet users for commercial gain. In addition the Domain Name is offered for sale on the website to which it resolves. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; and
b. the respondent has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of a Benelux trademark registration for MONEYGRAM. The Domain Name incorporates the entirety of the MONEYGRAM trademark. The top level domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations.
The Panel finds that the Domain Name is identical to Complainant’s MONEYGRAM trademark. B. Rights or Legitimate Interests
In the Panel’s opinion, Complainant has made a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, it appears that by using the Domain Name, Respondent diverts Internet users to a website which is a pay-per-click site featuring links to various commercial websites including websites in the Dutch language and websites offering global money transfers, including competitors of Complainant. Respondent makes use of the value of the MONEYGRAM trademark and the likelihood of confusion with the trademarks of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. See also paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).1 Furthermore, on the basis of the record, the Panel finds that Respondent is not commonly known by the Domain Name nor has Respondent acquired trademark rights corresponding to the Domain Name.
Under these circumstances the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The MONEYGRAM trademark of Complainant was first registered as a Benelux trademark on September 8, 1994. This date is well before the registration of the Domain Name by Respondent. Considering also the distinctiveness of Complainant’s mark, the Panel finds that Respondent knew or should have known that the Domain Name included Complainant’s trademark entirely.
Further, Respondent uses the Domain Name for a website displaying pay-per-click links and the Domain Name is offered for sale. On this basis, the Panel finds that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website, which constitutes registration and use in bad faith pursuant to article 3.2(d) of the Regulations. This finding is not made any different because of a substantial delay in filing the Complaint. Remedies under the Regulations are injunctive and the purpose is to avoid ongoing or future confusion as to the source of communications, goods or services.
Accordingly, the Panel finds that Complainant has established the third criterion of article 2.1 of the Regulations. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name be transferred to Complainant.
Dinant T.L. Oosterbaan
Panelist
Date: February 12, 2013
1 The mechanism of the Regulations is comparable to the Uniform Domain Name Dispute Resolution Policy (UDRP), see Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002.
Full & Egal Universal Law Academy