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Generic Top Level Domain Name (gTLD) Decisions |
Travelers Express Co. Inc. v. Florin
Dragnea
Claim
Number: FA0407000293539
Complainant is Travelers Express Co. Inc. (“Complainant”),
represented by Paul D. McGrady of Ladas & Parry,
224 South Michigan Avenue, Chicago, IL 60604.
Respondent is Florin Dragnea (“Respondent”),
Str. Libertatii, bloc L5, sc.A, ap.9, Alexandria, Romania 0700.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <moneygram.ro>, registered with National
Institute for R&D in Informatics.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically July 6, 2004; the Forum
received a hard copy of the Complaint July
7, 2004.
On
July 15, 2004, National Institute for R&D in Informatics confirmed by
e-mail to the Forum that the domain name <moneygram.ro> is
registered with National Institute for R&D in Informatics and that
Respondent is the current registrant of the name. National Institute for R&D in Informatics verified that
Respondent is bound by the National Institute for R&D in Informatics
registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
July 15, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
August 4, 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@moneygram.ro 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
August 11, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<moneygram.ro>, is identical to Complainant’s MONEYGRAM mark.
2. Respondent has no rights to or legitimate
interests in the <moneygram.ro> domain name.
3. Respondent registered and used the <moneygram.ro>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Travelers Express Co. Inc., established by extrinsic proof offered in this
proceeding that it is in the business of providing
various financial services
such as money transfers, money orders, and a variety of other services.
Complainant
holds numerous trademark registrations for marks including the MONEYGRAM mark
in countries around the world, including
Romania (Reg. No. M2002-04899) and the
United States (Reg. No. 2,484,700 issued September 4, 2001 and Reg. No.
2,450,906 issued May
15, 2001).
Complainant owns
retail business lines that are available in approximately 80,000 retail
locations in the United States.
Complainant’s agents are located throughout the world, including
numerous locations in Romania and two locations in Respondent’s hometown
of
Alexandria, Romania. Complainant has
used the MONEYGRAM mark in commerce in the United States since at least as
early as 1988, when it started filing for
applications for registrations for
the marks in the United States.
Respondent
registered the <moneygram.ro> domain name May 7, 2003. The disputed domain name resolves to a page
that displays the message “Forbidden.
You don’t have permission to access / on this server.” No evidence was provided to show that the
domain name had been put to any use.
On August 10,
2003, Respondent sent an e-mail to Complainant in response to an August 3,
2003, conversation between Complainant and
Respondent. In the e-mail, Respondent offered to sell
the <moneygram.ro> domain name registration for $5,500. or to sell
the domain name registration and create a website for Complainant at the domain
name
for $6,500.
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
will draw such inferences as the Panel considers
appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant
established that it has rights in the MONEYGRAM mark through registration with
the United States Patent and Trademark
Office and by continuous use of its mark
in commerce for the last sixteen years.
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 <moneygram.ro>
domain name registered by Respondent is identical to Complainant’s
MONEYGRAM mark because the domain name incorporates Complainant’s
mark in its
entirety, deviating only with the addition of the country code top-level domain
“ro.” The addition of a country code
top-level domain is irrelevant, because top level domains are required and do
not negate the identical
nature of the domain name. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb.
Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us”
fails to add any distinguishing
characteristic to the domain name, the
<tropar.us> domain name is identical to Complainant’s TROPAR mark); 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights to and legitimate interests in the MONEYGRAM
mark and contends that Respondent can show
no such rights to or legitimate
interests in the <moneygram.ro> domain name, which contains
Complainant’s entire MONEYGRAM mark.
Respondent failed to respond to the Complaint and in such cases the
Panel assumes that Respondent lacks rights and legitimate interests
in the
disputed domain name. In fact, once
Complainant makes a prima facie case in support of its allegations, which
this Complainant has done, the burden shifts to Respondent to show that it has
such rights
to or legitimate interests in the domain name 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 name, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and
legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent
never submitted a response or
provided the Panel with evidence to suggest otherwise).
Furthermore,
where Complainant makes the prima facie showing and 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 Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in
the allegations of Complainant to be deemed
true).
The <moneygram.ro>
domain name resolves to a page with a “forbidden” message displayed. Other than posting this message, Respondent
has made no use of the disputed domain name.
Respondent’s passive holding of the disputed domain name does not
constitute a bona fide offering of goods or services pursuant to
Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint
and had made no
use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept.
18, 2000) (finding that prior to any notice of the dispute, Respondent had not
used the domain names in connection
with any type of bona fide offering of
goods and services); see also Boeing
Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or
legitimate interests where Respondent has advanced no basis on which the Panel
could conclude that it has a right or legitimate interest in the domain names,
and no use of the domain names has been established).
In
August 2003, Respondent offered to sell the <moneygram.ro> domain name registration to Complainant for $5,500. or
$6,500., depending on whether Complainant wanted to purchase it outright or
to
have Respondent create a website at the domain name for Complainant’s
benefit. The Panel finds that
Respondent’s willingness to sell the domain name registration also suggests
that Respondent lacks rights and
legitimate interests in the domain name
pursuant to Policy ¶ 4(a)(ii). See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb.
Forum May 27, 2003) (holding that under the circumstances, Respondent’s
apparent willingness to dispose of
its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct
purporting to sell the domain name suggests it has no legitimate use);
see
also Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain
name registration to Complainant,
the rightful holder of the RED CROSS mark.”).
Finally,
Respondent offered no evidence and nothing in the record suggests that
Respondent is commonly known by the <moneygram.ro> domain
name. Furthermore, Complainant has not
licensed Respondent to use the MONEYGRAM mark.
Thus, Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark
and never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant
alleges that Respondent registered and used the domain name in bad faith. The Panel finds that Respondent’s offer to
sell the <moneygram.ro> domain name registration to Complainant,
the owner of the MONEYGRAM mark, for an amount in excess of Respondent’s
out-of-pocket expenses
is evidence of Respondent’s bad faith use and
registration pursuant to Policy ¶ 4(b)(i).
See Dollar Rent A Car Sys.
Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that
Respondent demonstrated bad faith by registering the domain name with the
intent to transfer it to Complainant for $3,000, an amount in excess of its out
of pocket costs); see also Universal
City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000)
(finding bad faith where Respondent made no use of the domain names except to
offer them for sale
to Complainant); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding
that a failure to use the domain name in any context other than to offer it for
sale to
Complainant amounts to a use of the domain name in bad faith).
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of a domain name,
the Panel should look to
additional factors as well to determine if the totality of the circumstances
support findings of bad faith
registration and use. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel
must look at the “totality of circumstances”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[t]he
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive.”).
Respondent made
no use of the <moneygram.ro> domain name except to place a
“forbidden” message at the website and to offer the domain name to Complainant
for sale. The Panel finds that
Respondent’s passive holding of the domain name constitutes evidence of bad
faith use and registration pursuant
to Policy ¶ 4(a)(iii). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6,
2000) (finding that mere passive holding of a domain name can qualify as bad
faith if the domain name
owner’s conduct creates the impression that the name
is for sale); see also Educ.
Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a
general offer of sale combined with no legitimate use of the domain name
constitutes
registration and use in bad faith); see also 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 Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <moneygram.ro> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 25, 2004
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