DECISION

Travelers Express Co. Inc. v. Craig Satinoff D. C.

Claim Number: FA0312000221172

PARTIES

Complainant is Travelers Express Co. Inc. (“Complainant”) represented by Paul D. McGrady, Jr. of Ladas & Parry, 224 South Michigan Avenue, Chicago, IL 60604.  Respondent is Craig M. Satinoff D. C. (“Respondent”), 8994 Raft Street, Pembroke Pines, FL 33024.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <money-gram.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

William H. Andrews as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 22, 2003; the Forum received a hard copy of the Complaint on December 22, 2003.

On December 23, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <money-gram.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 19, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@money-gram.com by e-mail.

A timely Response was received and determined to be complete on January 19, 2004.

A timely Additional Submission was received from Complainant and was determined to be complete on January 23, 2004.

A timely Additional Submission was received from Respondent and was determined to be complete on January 26, 2004.

On January 29, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed William H. Andrews as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.  Respondent seeks a finding of reverse domain‑name hijacking against Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends it has rights to the mark, MONEYGRAM in several variations.  Complainant is the owner of applications and registrations for trademarks on the MONEYGRAM name in the United States and around the world.  The MONEYGRAM mark is registered in the United States, with the first such registration coming in January, 1998.  Most of the MONEYGRAM marks cover money transfer services, a business in which Complainant is engaged.  Complainant and its affiliates have used the MONEYGRAM mark in commerce and first attempted to register the mark in the United States in 1940.  Complainant contends that the domain name Respondent has registered is confusingly similar to Complaint’s mark; that Respondent has no rights or legitimate interest in connection with its use of the mark, and that Respondent registered and used the domain name in bad faith.  As evidence of bad faith, Complainant submitted the affidavit of its legal counsel to suggest that Respondent refused an offer to allow Complainant to purchase the domain name for Respondent’s out-of-pocket costs.  Complainant also alleged that the domain name is listed “for sale” on <domain systems.com>, and that Respondent attempted to “mask” his true identity as the registrant of the domain name.  Complainant requests that the domain name be transferred due to Respondent’s violation of ICANN rules and policy.

B. Respondent

Respondent contends that Complainant has failed to carry its burden of proof under the Policy.  Respondent argued that Complainant has no rights in the mark, claiming that the terms are generic and a part of general usage.  Respondent argues primarily that there is no evidence of bad faith.  Respondent alleges that it was unaware of Complainant until July, 2003, long after the domain name had been registered by Respondent.  Respondent contends that he never offered the domain name for sale, but rather that he was contacted by Complainant.  Respondent denied the allegations set forth in Complainant’s counsel’s affidavit.  Respondent further stated that he never intended to sell the domain name for a profit, and that he initially intended to use the name in connection with an online gift business, which is, in no way, competitive with Complainant.  Respondent alleged that Complainant has engaged in reverse domain name hijacking by failing to include e-mail correspondence from Respondent to Complainant following the parties’ telephone conversation in July, 2003 and suggests that the allegations contained in counsel’s affidavit are false.

C. Additional Submissions

Both parties forwarded Additional Submissions for the Panel’s consideration.  Both submissions were timely and were duly considered by the Panel in reaching its decision.  Complainant contends that certain of its marks enjoy incontestable status, through years of use and again submits that it has rights in the MONEYGRAM name through its numerous registrations and applications.  Complainant notes that Respondent has never been known by the MONEYGRAM name and that Respondent is making no legitimate non-commercial uses of the name. Complainant also argues that Respondent’s failure to put the domain name to use and his rejection of Complainant’s offer to reimburse Respondent’s expenses constitute ample evidence of Respondent’s “bad faith.”  

In his supplemental response, Respondent again alleges that Complainant has submitted no evidence of bad faith.  According to Respondent, Complainant has attempted to “manufacture” evidence through submission of an affidavit and Respondent contends there is no evidence as to whether he accepted or rejected Complainant’s offer for reimbursement.

FINDINGS

Complainant, its affiliates and agents are involved in money transfer and other financial services.  Complainant and its affiliates are the owners of numerous applications and registrations for trademarks of the term MONEYGRAM.  MONEYGRAM was first registered with the U.S. Patent and Trademark Office (“USPTO”) on January 13, 1998, and the term was used in commerce as early as January, 1988.  Other variations of the MONEYGRAM name and logo have subsequently been registered after 2000. 

Respondent registered the domain name <money-gram.com> on March 5, 2000.  The WHOIS directory initially listed Domainsystems.com as the registrant of the name.  Respondent has not used the MONEYGRAM name and has not shown evidence of any demonstrable preparations to use the name in commerce or for any purpose. 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

      Complainant alleges that the domain name, <money-gram.com> is confusingly similar to the MONEYGRAM mark in which Complainant claims to have rights.  Complainant has introduced evidence linking its affiliates to numerous registrations of the MONEYGRAM mark across several countries including the United States.  The ICANN Policy does not require Complainant to demonstrate exclusive rights to the mark, but Complainant must show a bona fide interest.  On the basis of the submissions, the Panel concludes that Complainant does have an interest in the mark.  Respondent does not challenge Complainant’s link to the marks, but instead alleges that the terms “money” and “gram” are generic and that Complainant therefore has no rights to the mark, in part because the terms have been used by others.  Whether or not the term has been used by others is not at issue here.  In any event, many of the documents set forth to establish other uses of the term “moneygram” appear to be related to or linked with Complainant and its affiliates.  Complainant does have an interest in the mark by virtue of the numerous registrations and prior use in commerce through money transfer services.  The domain name <money-gram.com> is nearly identical to Complainant’s mark.  The mere addition of a hyphen does not distinguish the domain name from the registered mark.  (See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000), where the Panel found that the domain name tele-place.com was confusingly similar to Complainant’s TELEPLACE trademark).  

Rights or Legitimate Interests

      Finding that Complainant has demonstrated rights to the MONEYGRAM mark, the next issue is whether Respondent has any rights or legitimate interests in the mark himself.  Respondent has set forth no evidence establishing any rights or legitimate interest to use of the name “moneygram.”  There is no evidence that Respondent has ever been known by that name, or that Respondent ever made a legitimate non-commercial use of the name or that Respondent has made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services, all factors that, pursuant to the Policy, could establish Respondent’s legitimate interest.  Respondent contends he planned to use the site for a gift-type website business.  Respondent’s designation in Annex 4, submitted to indicate the type of business Respondent conceptualized, does not establish any demonstrable attempt to use the website for that purpose.  To the contrary, Complainant’s submissions show that the website is and has been listed “For Sale.”   Respondent claims he registered the domain name on April 15, 1999, and Complainant alleges that the registration was in March, 2000.  In any event, Respondent registered the domain name at least three years ago and has made no use of it.  Respondent’s passive holding does not establish rights or legitimate interest in the name, MONEYGRAM.  See Am. Home Prod. Corp. v. Malgioglo, D2000-1602 (WIPO Feb. 19, 2001)(finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use the disputed domain names in any way). 

Registration and Use in Bad Faith

            The central argument concerns the issue of whether or not “bad faith” was evident. 

      Four non-exclusive factors are indicative of “bad faith” pursuant to the Policy.   Complainant has focused its argument on Policy ¶ 4(b)(i) which states that the following shall be evidence of bad faith:  “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” 

Complainant contends that Respondent attempted to sell the domain to Complainant for a price in excess of out-of-pocket costs.  As noted, an attempt to sell a domain name in excess of out-of-pocket costs can be considered evidence of bad faith pursuant to the Policy.  Complainant submitted an affidavit from counsel stating, in effect, that Respondent rejected an offer of out-of-pocket expenses, demanding payment of sums in excess of his out-of-pocket expenses.  (Aff’d, par. 4).  Respondent contends, among other things, that this evidence should not be considered indicative of bad faith because Complainant contacted him.  But See Marrow v. iceT.com, D2000-1234 (WIPO November 22, 2000)(stating that the Panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name).  In his additional submission, Respondent cites Minnesota Mining and Mfg. Company v. Mark Overby, D2001-0727 (WIPO Oct. 2001) in support of his position.   In Minnesota Mining, however, the panel found that an offer of actual out-of-pocket costs was never made.  Complainant had offered the original costs but did not take renewal costs into consideration when it made an offer for a specific dollar amount.  The panel also concluded that Respondent did not make any offer to sell, but simply stated a basis for rejecting the original proposal.  The present case is distinguishable.  Complainant’s affidavit indicates that an offer of out-of-pocket expenses was made, and that Respondent made a specific counter-offer of $2,000 by telephone.  The allegations made in the affidavit relating to a phone call in July, 2003, are not controverted in a corresponding affidavit from Respondent and Respondent’s submission of his e-mail response to counsel’s August 15 letter does not indicate that the alleged conversation never took place or that the $2,000 offer was not made.

In any event, the Panelist notes that the four factors set forth in the Policy are not exclusive, and other circumstances can indicate “bad faith” in a particular situation.

Although Respondent alleges he had no notice of Complainant’s rights in the mark, Complainant submitted evidence of registration of the mark as early as 1998, and there are indications that the mark has been used in commerce since 1988.  Complainant stated that it first attempted to register the mark in 1940 and that the mark is famous and widely known across the globe.  Respondent registered the domain name after Complainant’s usage of the mark in commerce and after Complainant’s application for registration of the mark.  Respondent should have been aware, at least constructively, of Complainant’s rights to the mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)(“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively).   Complainant also contends that Respondent attempted to “mask” his identity, by providing false WHOIS information.  A WHOIS inquiry by Complainant revealed that DomainSystems.com was the Registrant of <money-gram.com>.  Respondent argues that it had nothing to do with such a listing and that there was no intentional attempt to mask his identity.  In any event, Domain Systems is in the business of selling domain names among other things.  An excerpt of a website search shows that                 <money-gram.com> is listed “for sale” on a Domain Systems site.  Although Respondent says he never offered the <money-gram.com> domain name for sale, he, as owner, should be ultimately responsible for content listing the name for sale. 

Respondent has not developed a website for the <money-gram.com> domain name for over three years.  There is no evidence to suggest demonstrable preparations to use the site by Respondent.  The Panel finds that this lack of activity constitutes a passive holding and the same permits an inference of bad faith under the Policy.  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)(finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).  The inference of bad faith from this passive holding has not been rebutted. 

In sum, the Panelist concludes that past registration and usage of the MONEYGRAM mark should have put Respondent on notice of Complainant’s interest in the mark, and the fact that the domain name has been put to no use by Respondent for more than three years and was offered “for sale” by Domains.com, the original entity listed as the Registrant of the name, permits a finding of “bad faith” in this instance.

Reverse Domain Name Hijacking

Respondent contends that Complainant committed reverse domain name hijacking by submitting false information or neglecting to include information that was contrary to the facts Complainant asserted.  Respondent, however, has not shown that it has an unassailable interest in the domain name and Respondent has failed to prove its allegations that Complainant’s evidence was fabricated.  Respondent contends that Complainant’s submission of portions of e-mail correspondence was deceptive.  However, the e-mail correspondence submitted by Respondent does not deny the contents of the telephone conversation between the parties.  Because of the foregoing and because the Panel has concluded that the domain name should be transferred, Respondent’s claim of Reverse Hijacking is hereby DENIED.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the relief sought by Complainant shall be GRANTED.

The Panel finds that Respondent’s claim of Reverse Domain Name Hijacking is DENIED.

Accordingly, it is Ordered that the <money-gram.com> domain name be TRANSFERRED from Respondent to Complainant.

William H. Andrews, PanelistDated:  February 10, 2004

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