The Complainant is TransferWise Ltd, United Kingdom, represented by Foot Ansley LLP, United Kingdom.
The Respondent is Victor Hagi Roua, Spain, self-represented, Roua Europa, United Kingdom, and GlobalHosting, Inc., United States of America. 2. The Domain Name and Registry
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, and December 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing that the Respondent GlobalHosting, Inc. “manages this domain name for their client” and informing the Center of the “holder data”, identifying an organization named Roua Europa, and providing the contact details. On December 11, 2020, the Center transmitted by email to the “Registry” a request for verification in connection with the disputed domain name. On December 14, 2020, the Registry transmitted by email to the Center its verification response confirming that the Respondent GlobalHosting, Inc. is listed as the registrant in its public WhoIs database 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 January 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. On February 3, 2012, the Center received a communication from the contact email address of the Respondent Roua Europa, requesting an extension of time to file the Response. Pursuant to paragraph 5(b) of the Rules, the Center granted an extension of time until February 8, 2021. The Response was filed by the Respondent Victor Hagi Roua with the Center in Spanish on February 8, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on February 19, 2021. 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 provides currency exchange and transfer services. The Complainant has operated a global currency exchange and transfer platform through its main website at “www.transferwise.com” since 2011. It markets and provides all its services on that site under the TRANSFERWISE brand. In December 2014, its website received over 427,000 visits. In 2015, the Complainant had 485,000 active customers, of which 398,000 were in the European Union. The Complainant holds multiple trademark registrations, including European Union Trade Mark registration number 011312535 for TRANSFERWISE and device, registered on February 26, 2013, specifying foreign currency trading, exchange and transfers and other services in class 36; and European Union Trade Mark registration number 013791314 for TRANSFERWISE and device (the “fast flag logo”), registered on June 18, 2015, also specifying services in class 36. Those trademark registrations remain in effect. The Complainant has also registered multiple domain names that incorporate “transferwise” in different Top-Level Domains (“TLDs”), such as The Respondent GlobalHosting, Inc., is a web hosting company that appears to be the named registrant of the disputed domain name according to the publicly available WhoIs (and as confirmed by the Registry), managing the disputed domain name for its client Roua Europa (as confirmed by the Registrar). The Respondent Roua Europa seems to be the actual or beneficial holder of the disputed domain name. Its contact address and telephone number in the Registrar’s private WhoIs database are in the United Kingdom and its contact person is Cristina Dinu. The Response in this proceeding was sent from Roua Europa’s contact email address by Victor Haji Roua (who was also addressed as a Respondent in the Complaint). According to evidence provided by the Complainant, Mr. Roua’s Facebook page indicates that he is also known as “Ianis Nicolas” and that his partner is Cristina Dinu. Roua Europa’s Facebook page indicates that it sells remote control devices. Mr. Roua and Roua Europa are referred to below collectively and separately as “the Respondent”. The disputed domain name was acquired by the Respondent on April 11, 2015. According to evidence provided by the Complainant, on January 16, 2016, the disputed domain name redirected to a website that prominently displayed an image of a leaping customer from one of the Complainant’s advertisements together with the Complainant’s slogan in English “Take charge, not charges” as well as the Complainant’s fast flag logo above the name “TransferWise.ROmania”. On July 25, 2017 the disputed domain name resolved to a website that displayed an advertisement for TransferGo, a third party online money transfer service. At the time of filing of the Complaint, the disputed domain name resolves to a website displaying a notice in English that reads “The domain name transferwise.ro may be for sale. Not owned by TransferWise.com”. The website is presented as the blog of “TransferWise Romania”, which publishes articles in Romanian about money transfers. It includes an article that invites Internet users to try TransferGo and displays the logo of TransferGo. A sidebar to the blog displays multiple addresses for TransferGo among the main tags. During the period June 16, 2020 to September 1, 2020, the Complainant’s Romanian legal representative corresponded with the Respondent (although the Respondent did not sign his emails, they were sent from the Respondent’s contact email address, as was the Response). In an email dated June 17, 2020, the Respondent stated that if TransferWise UK wanted to make him an offer for the disputed domain name, he was available. The Respondent’s emails included a footer, identical or similar to one on the Respondent’s website, that may be translated as follows: “|TransferWise.ro|, through this Blog, we want to help you save money; by accessing our links, you will be led directly to the discounts we have established with various companies. – Direct money transfer from Spain and 32 other countries | Perform transfers more quickly and with lower costs, simple and secure | Quicker and safer money transfers from Spain, to family and friends | A cheaper and faster method of sending money abroad | Transfers for large amounts of money, designed to help you save |” 5. Parties’ Contentions A. Complainant The disputed domain name incorporates the Complainant’s TRANSFERWISE trademark in its entirety which makes the disputed domain name confusingly similar to the Complainant’s trademarks. The Respondent has no rights or legitimate interests in respect of the disputed domain name. Neither the Respondent nor his businesses are known as TransferWise and there is no evidence that he has traded under the TRANSFERWISE brand since the disputed domain name was registered in 2015. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name was registered and is being used in bad faith. The Complainant’s brand was well-known throughout the European Union and in Romania when the Respondent registered the disputed domain name in 2015. The Respondent was clearly aware of the reputation of the TRANSFERWISE mark at that time because he registered an account with the Complainant on May 21, 2014 and made two transactions using the Complainant’s service before he registered the disputed domain name. The Respondent has made several attempts to sell the disputed domain name, no doubt for more than his out-of-pocket expenses, which started immediately after he acquired the disputed domain name and has continued ever since. The Respondent’s website includes some articles relating to money transfer services which offer customers a referral fee, but the links in the article resolve to the website of a third party, TransferGo. B. Respondent The Respondent alleged he has been working for six years with the disputed domain name, during which time he has worked hard with a SEO in the Romanian language to gain lots of views without any intention to harm anyone; the disputed domain name being a simple blog that talked about travel. At no time has there been bad faith on the part of the Respondent, nor has the disputed domain name been used to harm the Complainant. The disputed domain name has not been used for profit, nor has other content been created to cause confusion with the Complainant’s mark. The Respondent’s website does not claim that the disputed domain name is owned by the Complainant. The disputed domain name was lawfully acquired on a first-come, first-served basis on April 11, 2015 from GlobeHosting, Inc. Therefore, the disputed domain has never been used fraudulently. All the evidence regarding the Respondent in the investigator’s report commissioned by the Complainant is manipulated and the translations are unverified. The evidence includes personal data, including a photograph of a minor, contrary to Spanish law. Since its purchase up to the present time, the disputed domain name has been used in good faith and without any damage to the Complainant’s brand. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in English. The Complainant requests that English be the language of the proceeding as the language of the Registration Agreement. The Respondent requests that all communications be sent to him in Spanish. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English and the Response was filed in Spanish. The language of the Registration Agreement is English; the website to which the disputed domain name resolves displays a notice in English; the contact address and telephone number of the Respondent Roua Europa are in the United Kingdom, where Mr. Roua has also previously resided, all of which gives rise to the inference that the Respondent understands English. Moreover, the content of the Response shows that the Respondent has indeed understood the Complaint. Accordingly, the Panel sees no reason why the Complainant should translate the Complaint into Spanish. On the other hand, the Panel considers that requiring the Respondent to translate the Response into English would create delay, whereas accepting each Party’s submission in the original language without translation will not cause unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all submissions as filed in English or Spanish, without translation. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (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. A. Identical or Confusingly Similar Based on the evidence presented, the Panel finds that the Complainant has rights in the TRANSFERWISE and device marks. The disputed domain name wholly incorporates the non-figurative element of the TRANSFERWISE marks as its only operative element. For technical reasons, the disputed domain name cannot include the respective device elements of those trademarks, hence those other elements can be disregarded in the comparison between the disputed domain name and these marks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.10. The disputed domain name also includes the country code TLD (“ccTLD”) suffix for Romania (“.ro”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] 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, even if [the respondent has] acquired no 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. As regards the first and third circumstances set out above, the disputed domain name wholly incorporates the non-figurative element of the Complainant’s TRANSFERWISE trademarks, with no additional element besides a ccTLD suffix. The Respondent’s website is presented as “TransferWise Romania” and provides information on money transfer services, which is the same service provided by the Complainant. It is not contested by the Parties that the Respondent is not affiliated with, or endorsed by, the Complainant in any way. The Respondent’s website and the Respondent’s emails state that it offers discounts with various companies. In particular, the website invites Internet users to try the money transfer service of a competitor of the Complainant (TransferGo) and displays the logo of that competitor. This evidence shows that the Respondent uses the Complainant’s trademark as bait to attract Internet users to his website then switch them to a competitor’s service while they browse that website. That is not a use of the disputed domain name in connection with a bona fide offering of goods or services. Nor is it a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. As regards the second circumstance set out above, the Respondent is identified in the Registrar’s private WhoIs database as “Roua Europa” and the Response was sent by Victor Hagi Roua, who also appears to be known as Ianis Nicolas. There is no evidence that either is commonly known as “TransferWise”. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Turning to the Respondent’s arguments, he claims that he has not used the disputed domain name to harm the Complainant and that his website does not claim that the disputed domain name is owned by the Complainant. However, the Panel considers that the Respondent’s “bait and switch” use of the Complainant’s trademark is indeed intended to mislead and divert actual and potential customers of the Complainant, for the reasons given above. Further, the Respondent’s website gives the false impression that, as TransferWise Romania, it is at least affiliated with, or endorsed by, the Complainant, despite displaying a notice that the disputed domain name may be for sale because it is not owned by the Complainant. In addition, the Panel notes that the disputed domain name is identical to the Complainant’s trademark, which carries a high risk of implied affiliation. The Respondent argues that the disputed domain name has not been used for profit. However, the Panel considers that the Respondent’s website operates with intent for commercial gain to misleadingly divert consumers either for the benefit of the Respondent, or of the service provider to which it refers Internet users, or both. The Respondent also argues that he acquired the disputed domain name lawfully. However, the Panel does not consider that the mere registration of a domain name creates rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134. Accordingly, the Panel does not consider that the Respondent has succeeded in rebutting the Complainant’s prima facie case under this element of the Policy. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(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 online 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] web site or location.” The disputed domain name was acquired by the Respondent in 2015, after the Complainant obtained a trademark registration for TRANSFERWISE and device in 2013. The disputed domain name wholly incorporates the non-figurative element of that mark as its only operative element. The Complainant’s mark had already gained a considerable reputation in the money transfer service sector by the time that the Respondent acquired the disputed domain name and, given that the Respondent provides information on that specific type of service, he could be expected to have been aware of the Complainant at that time. Moreover, the Respondent’s website subsequently redirected to a site displaying the Complainant’s advertising, the Complainant’s fast flag logo, and information about the Complainant. These circumstances give the Panel reason to find that the Respondent knew of the Complainant and its TRANSFERWISE trademark at the time that he registered the disputed domain name and deliberately targeted that mark in bad faith. The Respondent uses the disputed domain name in connection with a website providing information on money transfer services. It is intended to operate for the commercial gain of the Respondent, or the service provider to which his website refers Internet users, or both. In any such scenario, it is intended to operate for commercial gain. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. In view of the findings in Section 6.2B above, the Panel considers that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s TRANSFERWISE trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website within the terms of paragraph 4(b)(iv) of the Policy. The Respondent claims that the Complainant’s evidence is manipulated and that the translations are unverified. The Panel notes that the Respondent does not challenge any specific aspect of the evidence or translations and that he does not submit any corrections. The Panel has conducted its own search of the Internet Archive and verified that the archived web pages submitted by the Complainant are indeed accurate.1 The Panel also notes that some evidence is originally in English and that the Complainant has certified the Complaint, including the annexes, unlike the Respondent, who did not certify the Response. Accordingly, the Respondent’s objections do not alter the Panel’s conclusions. The Respondent also raises issues of privacy. However, the Panel observes that the information provided by the Complainant regarding the Respondent in this proceeding appears to be on the public record already, notably on the Respondent’s social media accounts, the Respondent’s other websites, and databases of WhoIs, company and VAT registration. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 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 Matthew Kennedy 1 The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has searched for archived Web pages in the Internet Archive (www.archive.org), which is a matter of public record because the Respondent challenged the veracity of the archived Web pages submitted by the Complainant. The Panel considers this process of corroboration useful to assessing the case merits and reaching a decision. See WIPO Overview 3.0, section 3.8.
Sole Panelist
Date: March 5, 2021
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