|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Travelers Express Company, Inc. v.
Bahamas Connect Ltd. B-81
Claim
Number: FA0402000237571
Complainant is Travelers Express Company, Inc. (“Complainant”),
represented by Paul D. McGrady of Ladas & Parry,
224 South Michigan Avenue, Chicago, IL 60604.
Respondent is Bahamas Connect
Ltd. B-81 (“Respondent”), E. Bay Centre Box N1836, Nassau, Bahama 00000.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <casinomoneygram.com>, <globalmoneygram.com>,
<globalmoneygram.net>, <internetmoneygram.com>, <sportsmoneygram.com>,
<universalmoneygram.com>, <webnetmoneygram.com>, <world-widemoneygram.com>,
<worldmoneygram.com>, <worldmoneygram.net> and <worldwidemoneygram.com>,
registered with Bulkregister.com.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 19, 2004; the
Forum received a hard copy of the
Complaint on February 20, 2004.
On
February 24, 2004, Bulkregister.com confirmed by e-mail to the Forum that the
domain names <casinomoneygram.com>, <globalmoneygram.com>,
<globalmoneygram.net>, <internetmoneygram.com>, <sportsmoneygram.com>,
<universalmoneygram.com>, <webnetmoneygram.com>, <world-widemoneygram.com>,
<worldmoneygram.com>, <worldmoneygram.net> and <worldwidemoneygram.com>
are registered with Bulkregister.com and that Respondent is the current
registrant of the names. Bulkregister.com has verified that
Respondent is bound
by the Bulkregister.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
February 24, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 15, 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@casinomoneygram.com,
postmaster@globalmoneygram.com, postmaster@globalmoneygram.net, postmaster@internetmoneygram.com,
postmaster@sportsmoneygram.com, postmaster@universalmoneygram.com, postmaster@webnetmoneygram.com,
postmaster@world-widemoneygram.com,
postmaster@worldmoneygram.com, postmaster@worldmoneygram.net
and postmaster@worldwidemoneygram.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
March 25, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James
A. Carmody, Esq., 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s domain names are confusingly
similar to Complainant’s MONEYGRAM mark.
2. Respondent does not have any rights or
legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Travelers Express Company, Inc., has used marks containing the MONEYGRAM mark
since as early as 1940 in the United States
in connection with electronic funds
transfer services. Complainant has obtained numerous registrations for the
MONEYGRAM mark, including
U.S. Reg. No. 2,450,906, registered on the Principal
Register of the U.S. Patent and Trademark Office on May 15, 2001 and filed for
registration on March 27, 2000.
Respondent,
Bahamas Connect Ltd. B-81, registered the disputed domain names between
December 2, 2000 and June 20, 2002, without license
or permission to use
Complainant’s MONEYGRAM mark for any purpose. Respondent previously used the <casinomoneygram.com>
domain name to promote online gambling products, while placing a “coming soon”
page at the remainder of the disputed domain names.
Upon receipt of a cease and
desist letter from Complainant, the gambling content was removed from the <casinomoneygram.com>
domain name and Respondent’s “consultant” contacted Complainant to inform it
that Respondent would sell its domain name registrations
to Complainant for no
less than $1000 per domain name, for a total of $11,000. Currently, all of the
disputed domain names are inactive.
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.
Complainant has
established rights in the MONEYGRAM mark through use of the mark in commerce,
as well as through obtaining registrations
for the mark that predate
Respondent’s registration of the disputed domain names. See Microsoft Corp.
v. J. Holiday Co., D2000-1493 (WIPO Feb. 20, 2000) (“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”); see also KCTS Television Inc. v.
Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does
not matter for the purpose of paragraph 4(a)(i) of the Policy whether
Complainant’s
mark is registered in a country other than that of Respondent’s
place of business); see also Thompson v. Zimmer, FA 190625
(Nat. Arb. Forum Oct. 27, 2003) (“Complainant’s
2001 filing for the BOOK THONGS mark came before Respondent’s registration of
the disputed domain name in 2002. As Complainant’s
trademark application was
subsequently approved by the U.S. Patent and Trademark Office, the relevant
date for showing ‘rights’ in
the mark for the purposes of Policy ¶ 4(a)(i)
dates back to Complainant’s filing date.”).
Respondent’s <casinomoneygram.com>,
<globalmoneygram.com>, <globalmoneygram.net>, <internetmoneygram.com>,
<sportsmoneygram.com>, <universalmoneygram.com>, <webnetmoneygram.com>,
<world-widemoneygram.com>, <worldmoneygram.com>, <worldmoneygram.net>
and <worldwidemoneygram.com> domain names are all confusingly
similar to Complainant’s MONEYGRAM
mark. The dominant feature of each of the disputed domain names is
Complainant’s registered MONEYGRAM mark, and Respondent’s
addition of such
generic words as “casino,” “global,” “internet,” “universal,” and “world” does
not dispell any confusion resulting
from this use of Complainant’s mark. See
Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6,
2001) (“the fact that a domain name wholly incorporates a Complainant’s registered
mark is sufficient to
establish identity or confusing similarity for purposes
of the Policy despite the addition of other words to such marks.”); see also
Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (“neither 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).
Accordingly, the
Panel finds that the disputed domain names are confusingly similar to Complainant’s MONEYGRAM mark
under Policy ¶ 4(a)(i).
Respondent initially used the <casinomoneygram.com> domain name to promote online casino
services, without authorization to use Complainant’s MONEYGRAM mark for this or
any purpose.
Using the goodwill Complainant had acrued in its MONEYGRAM mark to
promote its own commerical enterprise is not evidence of any of
the criteria
laid out in Policy ¶¶ 4(c)(i)-(iii), and operates as evidence that Respondent
lacks rights and legitimate interests
in the <casinomoneygram.com>
domain name. See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8,
2002) (finding no rights or legitimate interest where Respondnet used the
disputed domain name
to redirect Internet users to an online casino); see
also Oly Holigan, L.P. v. Private,
FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate
interest in a misspelled domain name as Respondent was
merely using it to
redirect Internet users to, inter alia, an online casino).
Respondent has made no use of the <casinomoneygram.com> domain name since Complainant sent it
a cease and desist letter pertaining to that domain name, and has made no use
at all of the remainder of
the disputed domain names. Respondent’s non-use of
the disputed domain names is evidence that it lacks rights and legitimate
interests
in the disputed domain names. See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that Respondent
made preparations to use the domain name or one like it
in connection with a bona fide offering of goods and services before notice
of
the domain name dispute, the domain name did not resolve to a website, and
Respondent is not commonly known by the domain name);
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).
Further evidence that Respondent lacks rights
and legitimate interests in the disputed domain names is found in the fact that
Respondent,
through its “consultant,” expressed a willingness to sell each of
its unused domain name registrations to Complainant, the rightful
holder of the
MONEYGRAM mark. This offer to sell its domain name registrations is additional
evidence that Respondent lacks rights
and legitimate interests. See 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.”); see also J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites
that are
located at the domain names at issue, other than to sell the domain names for
profit).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
disputed domain names under Policy
¶ 4(a)(ii).
Pursuant to Policy ¶ 4(b)(i) Respondent’s bad faith registration and
use of the disputed domain names is evidenced by its verbal attempt
to sell its
domain name registrations to Complainant for $1000 each, a price that is in
excess of any out-of-pocket expenses Respondent
could have incurred through
registration of the domain names. See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000)
(finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in
communication with
Complainant, “if you are interested in buying this domain
name, we would be ready to sell it for $10,000”); see also Nabisco Brands Co. v. Patron Group,
D2000-0032 (WIPO Feb. 23, 2000) (finding that Respondent registered and used
the domain names to profit where Respondent offered
to sell the domain names
for $2,300 per name); see also Tech.
Prop., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding
bad faith where Respondent verbally offered the domain names for sale for
$2,000).
Furthermore, Respondent’s passive holding of the disputed domain names
is evidence of Respondent’s bad faith. Respondent’s only use
of the <casinomoneygram.com> domain name was illegitimate, and it has
made no use of that domain name or the remainder of its domain names since that
time. Especially
in light of Respondent’s attempt to sell its domain name
registrations to Complainant, this passive holding is evidence of Respondent’s
bad faith. See Telstra Corp. v. Nuclear
Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is
possible, in certain circumstances, for inactivity by the Respondent to amount
to the domain name being used in bad faith”); see also 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).
The Panel thus
finds that Respondent registered and used the disputed domain names in bad faith, and that Policy ¶
4(a)(iii) is 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 <casinomoneygram.com>, <globalmoneygram.com>,
<globalmoneygram.net>, <internetmoneygram.com>, <sportsmoneygram.com>,
<universalmoneygram.com>, <webnetmoneygram.com>, <world-widemoneygram.com>,
<worldmoneygram.com>, <worldmoneygram.net> and <worldwidemoneygram.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
April 7, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/509.html