WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Western Union Holdings, Inc. v. Mail & Media LLC and Robert Demyanovich
Case No. D2001-0708
1. The Parties
The Complainant is Western Union Holdings, Inc., a Delaware corporation whose address is 6200 South Quebec Street, Engelwood, Colorado 80111, USA. The Complainant is represented by Patricia B. Cunningham, Esq. and Candice C. Decaire, Esq., of Sutherland Asbill & Brennan LLP, 999 Peachtree Street NE, Atlanta, Georgia 30309-3996, USA.
The Respondent is Mail & Media LLC, a company whose address is 2241 Bellingham, Troy, Michigan 48083-2005, USA. Robert Demyanovich is the principal of the respondent entity.
2. The Domain Name and Registrar
The domain name in dispute is <wumailgram.com>.
The registrar for the disputed domain name is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on May 28, 2001, in hard copy. On May 31, 2001, the Center notified the Complainant it was necessary to submit the Complaint in electronic format, and on June 6, 2001, the Complainant corrected this deficiency.
On June 21, 2001, the Center requested that the registrar NSI check and report back on the registrant for the domain name <wumailgram.com>. On June 22, 2001, NSI reported to the Center that the registrant was the Respondent in this proceeding, that the domain name was on active status, and that the Policy was in effect.
On July 4, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. The Respondent did not file a response within the 20 day time period prescribed by Rule 5, and on July 25, 2001, was declared in default. (The Panel notes that the Respondent did address an e-mail of a few lines to the Center on May 26, 2001). In accord with Rule 5e, the Panel is rendering its Decision based on the Complaint.
The Administrative Panel submitted a Declaration of Impartiality and Independence on August 7, 2001, and the Center then appointed the Panel on August 13, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.
This Decision is due by August 27, 2001.
4. Factual Background
The Complainant is a provider of communication and mail services in the United States and throughout the world. The Respondent uses the website at the disputed domain name <wumailgram.com> to link to another website, <mail2mail.com>, where the Respondent offers a broad range of communication and mail services such as fax, mail, parcel post.
The Respondent registered the disputed domain name, <wumailgram.com>, on April 23, 1999. The Respondent renewed the registration on June 22, 2001.
The Complainant wrote to the Respondent on June 10, 1999, to allege trademark infringement and to demand transfer of the domain name. The Respondent answered on June 22, 1999, denying any trademark infringement (Complaint Exhibit K).
The Complainant again wrote to the Respondent to allege trademark infringement on July 9, 1999. The Respondent replied on August 24, 1999, and again denied any infringement but solicited an offer from the Complainant to purchase the domain name (Complaint Exhibit L).
The Complainant now is seeking transfer of the domain name in this proceeding.
5. The Parties' Contentions
- Complainant has used its Western Union marks since 1856, its Mailgram mark since June of 1971, and its Western Union Mailgram mark since November 1989. Through substantial and sustained advertising efforts, the Complainant has endowed those marks with great value.
- Complainant maintains a significant presence on the Internet through its website located at <westernunion.com>, which describes the mailgram service.
- The disputed domain name is confusingly similar to Complainant’s Western Union Mailgram marks. It fully incorporates the marks WU and Mailgram, in which Complainant has prior rights. Moreover, Respondent offers services similar to those offered by the Complainant under its WU, Western Union and Western Union Mailgram marks. The disputed domain name thus is calculated to lead to consumer confusion.
- Complainant has never assigned, granted, licensed, sold, transferred or authorized Respondent to register or use the WU, Western Union, Western Union Mailgram or Mailgram marks.
- Complainant owns (U.S.) federal registrations for the Western Union Mailgram and Mailgram service marks.
- Complainant's dates of first use and application for the Mailgram and Western Union Mailgram marks, June 1971 and November of 1989 respectively, are well before the creation date of the disputed domain name, April 23, 1999.
- Complainant's Mailgram and Western Union Mailgram marks have been widely promoted among consumers and are exclusively identified with Complainant.
- Complainant's WU mark, in which Complainant has common law rights, likewise is strongly identified with Complainant and, through Complainant's use and promotion of services associated with the WU mark, is invested with tremendous good will. Common law rights are a sufficient basis for an action under the Policy.
- Respondent is not known by the name WUMailgram and has no legitimate business justification for using that domain name.
- Respondent, a direct competitor of Complainant with full knowledge of Complainant’s prior rights in the WU Western Union Mailgram marks, has registered and continues to use the domain name <WUMailgram.com>, which is deceptively similar to Complainant's trademarks and service marks, for the purpose of drawing to Respondent's website potential customers attracted by the good will in Complainant's marks.
- Respondent has registered and continues to use the domain name for the alternative purposes of renting, selling, or otherwise transferring the domain name to the Complainant or to a competitor of the Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs.
The Respondent is in default in this proceeding.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name <wumailgram.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has provided a printout from the data base of the principal register of the United States Patent and Trademark Office showing its Western Union Mailgram service mark registration no. 1,857,933 dated October 11, 1994; and its Mailgram service mark registration no. 1060988 dated March 8, 1977 (Complaint Exhibit F).
In addition, the Complainant has furnished ample evidence that it commonly is known as WU, including through its multiple Internet domain name presence using WU (Complaint p. 6 and Exhibit E).
The Respondent registered the disputed domain name <wumailgram.com>. This domain name is identical to a combination of the Complainant's service marks. On top of this the Panel finds that, even if we discounted the Complainant's common law rights in the service mark WU, the disputed domain name would still be confusingly similar to the Complainant's registered service marks because WU coupled with mailgram immediately evokes the Complainant Western Union and its services.
The Panel thus finds the disputed domain name is identical to service marks in which the Complainant has rights.
Legitimate Rights or Interests
The Complainant states it has never authorized the Respondent to use its service marks in the disputed domain name. The Respondent, being in default, has not attempted to demonstrate any legitimate rights or interests under the Policy at 4c.
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Complainant has shown that the Respondent offers the same services at the disputed domain name website as the Complainant. Thus the Panel finds the Complainant has shown that the Respondent has violated the bad faith provisions of the Policy at 4b(iv):
"by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It appears from the Respondents' own letters to the Complainant that the Respondent had worked for years for businesses similar to the Complainant's, and that the Respondent was quite familiar with the Complainant and its business methods (Complaint Exhibit L).
The Complainant alleges the Respondent also violated the Policy by attempting to sell the domain name back to the Complainant for more than its out-of-pocket costs (4b(i)) and by attempting to disrupt Complainant's business (4b(iii)). It does not appear to that the Panel the Respondent wanted to disrupt the Complainant's business beyond the inevitable disruption resulting from diverting the Complainant's customers. However, it does appear to the Panel that the Respondent had in mind from the beginning, as a primary motive, that it could both use the domain name to attract the Complainant's clients and also later sell the domain name back to the Complainant at a nice profit in violation of the Policy at 4b(i). In the Panel's view, the Respondent's solicitation letter of August 24, 1999, (Exhibit L) bears this out.
The Panel finds the Respondent registered and was using the disputed domain name in bad faith.
The Panel has found the Respondent registered a domain name identical to the discrete trademarks of the Complainant that, taken together, comprise the disputed domain name. The Panel also has found the Respondent has no legitimate rights or interests in the domain name and registered and was using it in bad faith.
Hence, per the Policy 4i and Rule 15, the Panel orders that the disputed domain name, <wumailgram.com>, be transferred from the Respondent, Mail & Media LLC, to the Complainant, Western Union Holdings, Inc.
Dennis A. Foster
Dated: August 17, 2001