WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Continental Exchange Solutions, Inc dba Ria Financial v. Fundacion Private Whois, Domain Administrator
Case No. D2013-1516
1. The Parties
The Complainant is Continental Exchange Solutions, Inc dba Ria Financial of Buena Park, California, United States of America (“USA”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama.
2. The Domain Names and Registrar
The disputed domain names <financial-ria.com>, <money-ria.com>, <moneyria.com>, <ria-financial.com>, <rialocation.com> and <ria-money.com> are registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2013. On August 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 29, 2013, the Registrar transmitted by email to the Center its verification response confirming:
(a) that it is the Registrar for the disputed domain names;
(b) that the disputed domain names are all registered in the name of the Respondent;
(c) the contact details are correct;
(d) the registration agreements are in English; and
(e) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to all the disputed domain names.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 the Respondent of the Complaint, and the proceedings commenced on August 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2103.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 3, 2013. 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
The Complainant does business, amongst other things, under the name “Ria Financial”.
Ria Financial was founded in New York in the USA in 1987. It provides money transfer services. Since its foundation, it has grown to be the third largest global money transfer company, processing USD 8 billion transactions each year. It has 240,000 agents in 135 countries around the world. In addition to these agencies, the primary sources of information about its services are provided through its websites at “www.riafinancial.com” and “www.riamoneytransfer.com”.
The Complainant has registered numerous trademarks in connection with its business. These include:
- CTM No. 002149565 for RIA in respect of a range of financial services including electronic funds transfer in International Class 36 and telephone calling cards in International Class 16, which was registered on June 7, 2002;
- US TM No. 4089157 for RIA in respect of a similar range of financial services and magnetically encoded cards in International Class 9, which was registered on January 11, 2011 (claiming first use in commerce in relation to the financial services from September 9, 1987); and
- Similar registrations for stylized versions of RIA in the European Community, the USA and Australia, some of which were registered in 2010.
The disputed domain name <rialocation.com> was registered on March 25, 2013. The other disputed domain names <financial-ria.com>, <money-ria.com>, <moneyria.com>, <ria-financial.com> and <ria-money.com> were all registered on May 6, 2013.
At the time this decision was being prepared, the disputed domain names resolve to websites which appear to provide information about “RIA Money Transfer (Ria Financial Services)”. While they include statements which appear to explain or promote the services of Ria Financial, such as: “This site was created for the convenience of people who would like to send money abroad with the help of the third largest remittance system RIA Money Transfer.” (emphasis in original), they all contain click-through advertising for electronic funds transfer services by competitors of Ria Financial. In the case of the website to which the disputed domain name <rialocation.com> resolves, the Complainant’s trademark for RIA in its stylized form appears prominently.
5. Discussion and Findings
No response has been filed. The Complaint and the Written Notice have been served, however, on the electronic and the physical coordinates, respectively, specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
At a minimum, the Complainant has proven ownership of the registered trademarks for RIA (in plain type and stylized forms) referred to in Section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain names themselves to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, in the present circumstances it is permissible to disregard the “.com” component of the disputed domain names as a functional aspect of the domain name system: see Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
Each of the disputed domain names consists of the Complainant’s registered trademark, RIA, in its entirety plus a descriptive term – “location”, “money” or “financial” and, in four cases, a hyphen interposed between RIA and the descriptive term.
Viewing each disputed domain name as a whole, it is plain that the term “ria” is the distinctive element in the sense of indicating the trade source, if any. The descriptive terms (whether with or without hyphen) do nothing to counteract that. If anything, they draw attention to association with the Complainant by emphasizing the relevance of the disputed domain name to “money” or financial services or, in the case of “location” have a natural affinity with the service. While the addition of a hyphen would normally be fairly insignificant, in the present case it serves to emphasise the distinctive role played by the term “ria” by separating it visually from the descriptive element. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g.,WIPO Overview 2.0, paragraph 2.1.
In the present case, the Complainant points out that none of the disputed domain names can be said to be derived from the Respondent’s name (as recorded with the Registrar). Further, the Complainant states that the Respondent has not been licensed by the Complainant to use its trademark, nor is the Respondent affiliated with the Complainant in any way. In addition, so far as the Complainant can establish, the Respondent does not own any trademarks for RIA nor is there a relevant company incorporated by that name.
The use of the Complainant’s trademark RIA as a vehicle for click-through advertisements for money transfer services that compete with the Complainant’s own service does not qualify as a legitimate offering of goods or services for the purposes of the Policy. Nor, given the presence of such click-through advertisements, can the Respondent seek the protection of paragraph 4(c)(iii).
The Panel notes that the Respondent’s name is suggestive of some sort of “privacy” service, rather than the true Respondent’s actual name. The Registrar, however, has not identified any other or different person as the real registrant of the disputed domain names. Moreover, it seems unrealistic to suspect that the Complainant would authorize one or other of its agents to use its trademark in connection with click-through advertisements to competing services rather than to its own services which are readily available online.
In these circumstances, therefore, the Panel finds that the Complainant has established a clear prima facie case that the Respondent does not have rights or legitimate interests in any of the disputed domain names. If “Fundacion Private Whois” is not the actual registrant of the disputed domain names, it fell to the Registrar or the actual registrant to come forward and identify itself and, in addition, provide any evidence on which it relied to rebut the strong prima facie case established by the Complainant.
The Respondent has not sought to do that.
Accordingly, the Panel finds that the Complainant has established for the purposes of this proceeding that the Respondent does not have any rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been all registered and are being used in bad faith by the Respondent.
The Complainant points out that the content of the websites to which the disputed domain names resolve demonstrates that the Respondent was well aware of the Complainant and its services.
The use of the disputed domain names to resolve to websites which are vehicles for click-through advertising to services in competition with the Complainant’s services is a clear case of use in bad faith under the Policy.
As a matter of logic, it is theoretically possible that the Respondent came to this knowledge after it registered the disputed domain names.
The term ”ria”, however, is not one that is descriptive of money transfer services so that a person wishing to provide those services would honestly wish to use it in connection with such a service. “Ria” has significance in relation to money transfer services only through its adoption and use by the Complainant as its trademark to identify the trade source of its services. This suggests quite strongly that the Respondent knew of the Complainant and its trademarks before it registered the disputed domain names.
In addition, the Complainant has identified that a number of other domain names have been registered in the Respondent’s name based on the registered trademarks of other providers of money transfer services, including Western Union, Coinstar, Xpress Money and Moneygram. Each of these other domain names was registered through the same Registrar, using the same name servers and, apparently, the same I.P. address. They were also registered in the Respondent’s name in the period when the disputed domain names were being registered, save for <westernunion-order.com> which was registered on May 7, 2013 (i.e., the day after most of the disputed domain names were registered).
Accordingly, the Panel also infers that each of the disputed domain names was also registered in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <financial-ria.com>, <money-ria.com>, <moneyria.com>, <ria-financial.com>, <rialocation.com> and <ria-money.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: October 17, 2013