Complainant is Travellers Exchange Corporation Limited of United Kingdom of Great Britain and Northern Ireland, represented by Dechert, United Kingdom.
Respondent is E Kumar of Kathmandu, Nepal.
The disputed domain name <travelexnepal.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2010. On April 23, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On April 26, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 21, 2010.
The Center appointed Gary J. Nelson as the sole panelist in this matter on June 23, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is the owner of numerous trademark registrations throughout the world for the TRAVELEX mark, including United States Trademark Registration No. 1694803, among many others.
Complainant operates a website corresponding to the URL address “www.travelex.com” which allows Internet users to select from a number of global web pages dealing with travel-related topics.
Respondent appears to have registered the <travelexnepal.com> domain name on January 19, 2010. There does not appear to be a functioning website corresponding to this URL address.
Complainant has made the following allegations:
Complainant is the owner of trademark rights in the TRAVELEX and TRAVELEX WORLDWIDE MONEY Logo marks throughout the world.
Complainant is part of the Travelex group of companies that has been operating a currency exchange business throughout the world under the TRAVELEX trademark since the 1970s. Complainant's business group is the world's largest retail foreign exchange specialist operating in over 780 branded retail branches, principally in airports and tourist locations, worldwide.
The global income of the Complainant's business group in the year ending December 31, 2009 was £583 million.
Complainant has built up and owns a large trademark registration portfolio for TRAVELEX and related marks throughout the world.
The domain name registered by Respondent, <travelexnepal.com> is confusingly similar to its TRAVELEX trademarks.
Respondent has no rights or legitimate interest in the contested domain name, <travelexnepal.com>.
Respondent registered and is using the <travelexnepal.com> domain name in bad faith.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the 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 shall 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:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Complainant has established that it owns prior rights in the TRAVELEX trademark and the disputed domain name is confusingly similar to Complainant's trademark.
Complainant owns numerous TRAVELEX and TRAVELEX-based trademark registrations throughout the world. As part of this collection, Complainant has registered at least one of its TRAVELEX trademarks with the United States Patent and Trademark Office (the “USPTO”) as Reg. No. 1694803. The registration date for this trademark (i.e., August 5, 1990) registrations precedes the date upon which Respondent registered the disputed domain name (i.e., January 19, 2010).
Therefore, Complainant has established rights in its TRAVELEX mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the 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 name, <travelexnepal.com>, is confusingly similar to Complainant's TRAVELEX trademark because the disputed domain name incorporates the entirety of Complainant's TRAVELEX trademark and merely adds a geographic location along with the generic top-level “.com,” domain name. Neither the addition of a purely geographic term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similarity. See Net2phone Inc. v. Netcall Sagl, WIPO Case No. D2000-0666 (finding that the combination of a geographic term with an established trademark does not prevent a domain name from being found confusingly similar); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (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, paragraph 4(a)(i) is satisfied).
Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has not rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that the Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff v. Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the disputed domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <travelexnepal.com> domain name, or that it is commonly known by any name consisting of, or incorporating the names, “travelex,” “nepal,” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) Respondent is not a licensee of Complainant; (2) Complainant's rights in its related trademarks precede Respondent's registration of the disputed domain name; and (3) Respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, the Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in the TRAVELEX trademark.
Respondent is maintaining a passive and undeveloped website at “www.travelexnepal.com”. Respondent's failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no right or legitimate interest in the contested domain name. See Pharmacia & Upjohn AB v. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Accordingly, the Panel concludes Respondent is not using the <travelexnepal.com> domain name in association with a bona fide offering of goods and service pursuant to Policy, paragraph 4(c)(iii). See America. Online, Inc. v. Xiangfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent's operation of [a] web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Complainant has proven the requirement of Policy, paragraph (a)(ii).
The Panel finds that Respondent registered and is using the contested domain name in bad faith.
Respondent is maintaining the disputed domain name as a passive website. This is evidence that Respondent registered and is using the disputed domain name in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also, Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766 (finding that respondent's expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with complainant, and thus is the equivalent to bad faith use).
The Panel also finds that Respondent likely chose the <travelexnepal.com> domain name with full knowledge of Complainant's rights in the TRAVELEX trademark. Respondent's awareness of Complainant's TRAVELEX trademark may be inferred because the mark was registered with the USPTO prior to Respondent's registration of the contested domain name and since the TRAVELEX trademark is well-known in the travel industry. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <travelexnepal.com>, be transferred to the Complainant.
Gary J. Nelson
Dated: June 28, 2010