DECISION

Travelers Express Company. Inc. v. N.J. Industrial Research Center, Inc.

Claim Number: FA0402000234378

PARTIES

Complainant is Travelers Express Company, Inc. (“Complainant”) represented by Paul D. McGrady Jr., of Ladas & Parry, 224 South Michigan Avenue, Chicago, IL 60604.  Respondent is N.J. Industrial Research Center, Inc. (“Respondent”) represented by Mohammad Hamzeh, 1059 Main Avenue, Clifton, NJ 07011.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <moneygramsoftware.com> and <moneygramprogram.com>, registered with Bulkregister, Inc.

PANEL

The undersigned, Daniel B. Banks, Jr., 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 30, 2004; the Forum received a hard copy of the Complaint on February 2, 2004.

On February 4, 2004, Bulkregister, Inc. confirmed by e-mail to the Forum that the domain names <moneygramsoftware.com> and <moneygramprogram.com> are registered with Bulkregister, Inc. and that the Respondent is the current registrant of the names.  Bulkregister, Inc. has verified that Respondent is bound by the Bulkregister, 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 February 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 24, 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@moneygramsoftware.com and postmaster@moneygramprogram.com by e-mail.

A timely Response was received and determined to be complete on February 24, 2004.

A timely Additional Submission was received from Complainant and was determined to be complete on February 25, 2004.

On March 8, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of applications and registrations for trademarks which incorporate the MONEYGRAM name in the United States and around the world.  The first registration for the MONEYGRAM mark was issued by the United States Patent and Trademark Office on January 13, 1998.  Complainant claims to have filed applications for registrations for the marks containing the element MONEYGRAM as early as 1940 in the United States.  The MONEYGRAM marks represent to the worldwide consuming public the goods and services offered by Complainant, namely electronic money funds transfers.  Due to extensive use and registrations of the MONEYGRAM marks, these marks have become famous and have obtained the status of notorious marks and enjoy liberal protection under the Paris Convention. 

The dominant element MONEYGRAM appears in the offending domains with the addition of the descriptive or generic words “software” and “program” which describe the competing goods being offered by Respondent, namely software programs for the electronic transfer of funds.  The offending domains promote Respondent’s “Money Transmit_V2” software which competes directly with the goods and services offered by Complainant under its MONEYGRAM mark.  Complainant claims that the disputed domain names are confusingly similar to Complainant’s mark; that Respondent has no rights or legitimate interests in the mark; and that Respondent registered and used the domain names in bad faith.  With respect to the allegations that Respondent has no rights or legitimate interests in the domain names, Complainant asserts that Respondent has no trademark or other intellectual property rights in the offending domains; that the domain names are not the legal name of Respondent; that Respondent has made no lawful use of the offending domains and, that Respondent is not commonly known under the domain names.  With respect to the allegations of bad faith, Complainant contends that Respondent knew of the registrations and expansive use of the trademark prior to registering the domain names due to pre-existing applications and registrations for the MONEYGRAM mark.  Also, using Complainant’s MONEYGRAM mark to promote competing software programs for the electronic transfer of funds could only be considered an intentional imitation of Complainant’s mark.  Respondent intended to obtain the offending domains for the sole purpose of using them in conjunction with goods which compete directly with the goods and services offered by Complainant through confusing and diverting potential customers.  Finally, it is clear that Respondent registered the offending domains primarily for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation of endorsement of its website and its products offered by its website. 

B. Respondent

Respondent admits that Complainant has registered MONEYGRAM as a service mark but contends that the mere registration of a descriptive term in widespread use as a service mark cannot confer any exclusive ownership privileges.  MONEYGRAM is a descriptive name for money transmit service and the additions of the words “software” and “program” completely changes the meaning of the name.  It constructs a new descriptive name that represents a software product.  The disputed domain names sound different, look different and have different meanings from the name MONEYGRAM.  Complainant alleges that it filed applications for the registrations for the marks as early as 1940; however, the documents that they have provided show that their first application was filed in 1994.  Also, Complainant claims that it has approximately 80,000 retail locations while its website and database indicates the number is less than 5,000.  Respondent is a research and development firm that specializes in applications of computers and automation systems in different industries.  Development of financial software and programming for specific applications has been a major focus of Respondent since 1990.  Moneygram software has been a product of Respondent since 1998. Respondent’s program records the money order and then transmits the information to the destination office for payment in office or home delivery.  The disputed domain names are used for promotion and sales of a software product and not “electronic funds transfer service.”   Respondent is not a competing business as it does not provide the same service as Complainant. 

C. Additional Submissions

In its additional submission, which was considered by the Panelist, Complainant points out two typographical errors in the Complaint.  First, the date of first attempted registration should read “1994” and not “1940.”  Second, the Complaint should read that Complainant “has approximately 60,000 authorized agents in the United States and around the world.”  Regarding the pertinent issues, the bulk of Respondent’s Response is an attempt to claim that the MONEYGRAM mark is a mere amalgamation of two generic words and that Complainant’s trademark rights do not exist in the United States.  Respondent made identical arguments in a prior panel decision involving the MONEYGRAM mark and in that case, the panel was not persuaded.  See Travelers Express Co. v. Craig Satinoff D.C., FA 221172 (Nat. Arb. Forum Feb. 10, 2004) (holding that while the respondent “… alleges that the terms “money” and “gram” are generic and that Complainant therefore has no rights in the mark …” the complainant “does have an interest in the mark by virtue of the numerous registrations and prior use in commerce through money transfer services.”).  Respondent raises no arguments tending to show rights to the domain names.  Instead, Respondent admits that the domain names are used to promote its “Money Transmit V2” software, which allows a user to send their own electronic funds transfers rather than using Complainant’s services.  This is an admission of infringing behavior designed to misdirect consumers.  Regarding bad faith use and registration, Respondent’s argument that it had no idea that MONEYGRAM was a registered mark is unusual given that Complainant’s rights are a matter of public record.  Also, Complainant offers a list of approximately 650 authorized MONEYGRAM agents in Respondent’s home state of New Jersey.  There can be little doubt that Respondent knew of Complainant’s rights.  Respondent claims that it is not a competing business; however, Respondent’s customers are direct competitors of Complainant.  Registration and use of a domain name to offer goods and services to those who compete directly with a registered trademark owner cannot be construed as evidence of good faith. 

FINDINGS

(1) The disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.

(2) Respondent has no rights or legitimate interests in respect of the disputed domain names.

(3) The disputed domain names were registered and are being used in bad faith.

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 has established rights in the MONEYGRAM mark through registration of the mark with several trademark authorities across the world, including the U.S. Patent and Trademark Office (“USPTO”).  Complainant holds several registrations for the MONEYGRAM mark with the USPTO, including Reg. Nos. 2,127,954 and 2,484,700 (registered on January 13, 1998 and September 4, 2001, respectively).  The undersigned Panelist finds that Complainant has rights in the MONEYGRAM mark.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Furthermore, Complainant contends that its mark is famous and has obtained the status of a notorious mark and therefore enjoys liberal protection under the Paris Convention. 

The domain names are confusingly similar to Complainant’s MONEYGRAM mark because each domain name fully incorporates the mark and merely adds the generic word “program” or “software.”  The addition of the generic words “program” and “software” is insufficient to distinguish the domain names from Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement,” did not add any distinctive features capable of overcoming a claim of confusing similarity).

Moreover, the addition of the generic top-level domain “.com” in the domain names is irrelevant in determining whether the domain names are confusingly similar to Complainant’s mark.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Rights or Legitimate Interests

Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s mark.  Moreover, Respondent is not commonly known by the domain names.  The undersigned Panelist finds that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent is using the domain names to offer goods and services that compete with those offered by Complainant.  Respondent’s competitive use of domain names that are confusingly similar to the MONEYGRAM mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

The domain names are confusingly similar to Complainant’s mark, and Respondent is using the domain names for commercial benefit.  Use of a domain name confusingly similar to another’s mark for commercial benefit does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

In its Additional Submission, Complainant refutes Respondent’s claim that the MONEYGRAM mark is generic and therefore Respondent cannot claim rights and legitimate interests in the domain names based on the theory that the mark is generic.  This issue has been previously decided by a panel in the case of Travelers Express Co. v. Craig Satinoff D.C., FA 221172 (Nat. Arb. Forum Feb. 10, 2004), in which the panel found that the MONEYGRAM mark was not generic. 

Registration and Use in Bad Faith

Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent is using domain names that are confusingly similar to Complainant’s mark for commercial gain and to compete with Complainant’s business.  See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites).

Moreover, Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because the domain names are confusingly similar to Complainant’s mark and are used for commercial gain.  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

This Panel finds that Respondent had actual or constructive knowledge of Complainant’s mark because the mark is registered throughout the world, is registered on the USPTO’s principal registry, is used within Respondent’s state of residence (New Jersey) and Respondent uses the domain names to offer goods and services that compete with Complainant’s business.  Registration of a domain name confusingly similar to a mark, despite knowledge of another’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  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”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

DECISION

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

Accordingly, it is Ordered that the <moneygramsoftware.com> and <moneygramprogram.com> domain names be TRANSFERRED from Respondent to Complainant.

Daniel B. Banks, Jr., Panelist
Dated: March 22, 2004

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