DECISION

Travelers Express Company, Inc. v. Henry Tsung

Claim Number:  FA0405000275511

PARTIES

Complainant is Travelers Express Company, Inc. (“Complainant”), represented by Paul D. McGrady, of Ladas & Parry, 224 South Michigan Avenue, Chicago, IL 60604.  Respondent is Henry Tsung (“Respondent”), No. 2, Alley 4, Lane 177, Swei Road, Taipei, Taiwan 256021.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <moneygraminternational.com> and <wwwmoneygram.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

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

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 24, 2004; the Forum received a hard copy of the Complaint on May 25, 2004.

On May 24, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <moneygraminternational.com> and <wwwmoneygram.com> are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a  Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 May 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 17, 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@moneygraminternational.comand postmater@wwwmoneygram.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <moneygraminternational.com> and <wwwmoneygram.com> domain names are confusingly similar to Complainant’s MONEYGRAM mark.

2. Respondent does not have any rights or legitimate interests in the <moneygraminternational.com> and <wwwmoneygram.com> domain names.

3. Respondent registered and used the <moneygraminternational.com> and <wwwmoneygram.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Travelers Express Company, Inc., is a global leader in international money transfers and the largest processor of money orders in the United States.

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the MONEYGRAM and related marks (Reg. No. 2,127,954 issued January 13, 1998, Reg. No. 2,145,583 issued March 24, 1998, Reg. No. 2,440,717 issued April 3, 2001, Reg. No. 2,450,906 issued May 15, 2001, and Reg. No. 2,484,700 issued September 4, 2001).  Additionally, Complainant holds or has applied for the MONEYGRAM mark in seventeen other countries, including Taiwan.

Complainant has helped people and businesses by providing affordable, reliable and convenient payment services throughout the world.  Complainant’s products are available in more than 100,000 locations worldwide.  Complainant’s parent company, Viad Corporation, is a $1.6 billion services company.  Complainant, through acquisition, has used the MONEYGRAM mark in commerce since 1988. 

Complainant’s main website is operated at the <moneygram.com> domain name.

Respondent registered the disputed domain names on December 30, 2003.  Respondent is using the domain names to redirect Internet users to a website that features advertising for a variety of services and hosts a search engine to link viewers to a variety of websites, predominantly including sites that offer money orders and money grams.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 that it has rights in the MONEYGRAM mark through registration with the United States Patent and Trademark Office and through continued use of its mark in commerce.  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).

The disputed domain names are confusingly similar to Complainant’s MONEYGRAM mark because the domain names incorporate Complainant’s mark in its entirety and simply add the generic or descriptive term, “international” or the “www” prefix.  The mere additions of a generic or descriptive term or a “www” prefix to a registered mark do not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  See also 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 Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Marie Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark).

Therefore, Complainant has established that the disputed domain names <moneygraminternational.com> and <wwwmoneygram.com> are confusingly similar to Complainant’s MONEYGRAM mark.

 

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the domain names that contain in their entirety Complainant’s mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain names.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Moreover, where Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent is using the <moneygraminternational.com> and <wwwmoneygram.com> domain names to direct Internet users to a website that features links to a variety of services and hosts a search engine to link viewers to a variety of websites, predominantly including sites that offer the same type of services that Complainant offers.  Respondent’s use of domain names that are confusingly similar to Complainant’s MONEYGRAM mark dilute Complainant’s mark by diverting Internet users to a website unrelated to that mark and therefore is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

Furthermore, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <moneygraminternational.com> and <wwwmoneygram.com> domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use). 

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent intentionally registered domain names that contain in their entirety Complainant’s well-known mark and did so for Respondent’s commercial gain.  Respondent’s disputed domain names divert Internet users who seek Complainant’s MONEYGRAM mark to Respondent’s commercial website through the use of domain names that are confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill and reputation associated with Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name to a website that offers a number of web services).

Respondent is using the <moneygraminternational.com> and <wwwmoneygram.com> domain names to provide a search engine and links to a variety of websites, predominantly including sites that offer money orders.  Complainant’s business also offers money orders.  The Panel finds that, by creating confusion around Complainant’s mark, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s mark to sell goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Complainant has established Policy ¶ 4(a)(iii).

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 <moneygraminternational.com> and <wwwmoneygram.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  July 7, 2004

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