WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Travellers Exchange Corporation Limited v. Galaxy International Pty Limited
Case No. D2011-1914
1. The Parties
Complainant is Travellers Exchange Corporation Limited of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Dechert, U.K.
Respondent is Galaxy International Pty Limited of Victoria Park, Australia.
2. The Domain Name and Registrar
The disputed domain name <travelexperth.com> is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on
November 3, 2011. On November 3, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On November 4, 2011, the Registrar 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 November 4, 2011. The proceedings were suspended on November 10, 2011 and were reinstituted on February 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2012. Respondent did not submit any response.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on March 2, 2012. 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.
4. Factual Background
Complainant owns the mark TRAVELEX, which it has been using since the 1970s to conduct a currency exchange business. Complainant operates 780 branches worldwide under the TRAVELEX mark, including 150 in Australia. Complainant holds various trademark registrations, including 3 in Australia, dating back to 1997. Complainant also conducts business at <travelex.com>.
The <travelexperth.com> domain name was registered on July 3, 2011. The domain name at one time redirected to Respondent’s website at <merofx.com>, offering money transfer services. Presently the domain name resolves to a notice stating “website comming [sic] soon.”
5. Parties’ Contentions
Complainant makes the following assertions:
1. Respondent’s <travelexperth.com> domain name is confusingly similar to Complainant’s TRAVELEX mark.
2. Respondent does not have any rights or legitimate interests in the <travelexperth.com> domain name.
3. Respondent registered and used the <travelexperth.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
6. Discussion and Findings
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.).
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.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its TRAVELEX mark through its registration with Australian IP office, the World Intellectual Property Organization, and elsewhere around the world. See Expedia, Inc. v. Blake Emmerson, NAF Claim No. FA 873346 (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy 4(a)(i).”)
Respondent’s <travelexperth.com> domain name is confusingly similar to Complainant’s TRAVELEX mark. Respondent merely adds the geographic identifier “perth,” and (4) the generic top level domain (“gTLD”) “.com.” The Panel finds that the addition of a geographic identifier does not sufficiently distinguish the domain name. See MFI UK Ltd. and MFI Furniture Group plc v. Mr. Raymond Jones, WIPO Case No. D2003-0102 (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom). The Panel also finds that the addition of a gTLD does not differentiate the domain name from Complainant’s mark under Policy, paragraph 4(a)(i). See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Thus, the Panel concludes that Respondent’s <travelexperth.com> domain name is confusingly similar to Complainant’s TRAVELEX mark pursuant to Policy, paragraph 4(a)(i).
The Panel finds that Policy, paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to Policy, paragraph 4(a)(ii), Complainant bears the burden of making a prima facie case that Respondent lacks rights and legitimate interests in the domain name. After Complainant meets this burden, the burden shifts to Respondent to demonstrate why it does have rights or legitimate interests in the domain name. See TotalFinaElf E&P USA, Inc. v. Farnes, NAF Claim No. FA 117028 (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”); see also Intel Corp. v. Marilyn Macare, NAF Claim No. FA 660685 (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant satisfied the burden of producing a prima facie case. Because of Respondent’s failure to submit a response to these proceedings, the Panel may assume Respondent does not possess any rights or legitimate interests in the domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed.) However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy, paragraph 4(c).
Complainant argues that Respondent is not commonly known by the <travelexperth.com> domain name and does not have permission from Complainant to use the TRAVELEX mark. The WhoIs information identifies Respondent as “Galaxy International Pty Limited,” which does not indicate that Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent does not possess any rights or legitimate interests in the domain name pursuant to Policy, paragraph 4(c)(ii). See IndyMac Bank F.S.B. v. Grant Eshback d/b/a eMit Mortgage, Inc, NAF Claim No. FA 830934 (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Communications, Inc. v. WORLDTRAVELERSONLINE.COM, NAF Claim No. FA 740335 (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy, paragraph 4(c)(ii) based on the WhoIs information and other evidence in the record).
Respondent originally used the domain name to resolve to a website that displayed Respondent’s competing services. The <travelexperth.com> domain name now resolves to a site that simply states “website comming [sic] soon.” The Panel finds that Respondent’s use of the domain name does not amount to a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy, paragraph 4(c)(iii). See Glaxo Group Limited v. WWW Zban c/o David Glenmore, NAF Claim No. FA 203164 (finding that the respondent was not using the domain name within the parameters of Policy, paragraph 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant’s mark by diverting Internet users to a competing commercial site); see also George Weston Bakeries Inc. v. Charles McBroom, NAF Claim No. FA 933276 (finding that the respondent had no rights or legitimate interests in a domain name under either Policy paragraph 4(c)(i) or Policy paragraph 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds that Policy, paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Respondent disrupted Complainant’s business by redirecting Complainant’s potential customers to its own website, which originally offered services in competition with Complainant. The Panel finds that this is evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(iii). See Marriott International, Inc. v. MCM Tours, Inc., NAF Claim No. FA 444510 (“The [r]espondent is a travel agency and thus operates in the same business as the [c]omplainant. The parties can therefore be considered as competitors. The Panel thus finds that the [r]espondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy[, paragraph] 4(b)(iii).”); see also Paul Barnett Puckett, Individually and d/b/a Nature’s Window v. Christopher D. Miller, WIPO Case No. D2000-0297 (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy, paragraph 4(b)(iii)).
Complainant asserts that, due to its trademark registrations and widespread use of its TRAVELEX mark, Respondent must have had knowledge of Complainant’s rights in the mark when Respondent registered the domain name. The Panel agrees and finds that Respondent had actual knowledge, further evidence of bad faith according to Policy, paragraph 4(a)(iii). See Immigration Equality v. William Brent c/o ImmigrationEquality.us, NAF Claim No. FA 1103571 (“That [r]espondent proceeded to register a domain name identical to, and with prior knowledge of [c]omplainant’s mark is sufficient to prove bad faith registration and use under Policy 4(a)(iii).”).
The Panel finds that Policy, paragraph 4(a)(iii) is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <travelexperth.com> be transferred to Complainant.
Sandra J. Franklin
Dated: March 13, 2012