WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Continental Exchange Solutions Inc. DBA Ria Financial v. Red Soul

Case No. D2013-1690

1. The Parties

The Complainant is Continental Exchange Solutions Inc. DBA Ria Financial, of Buena Park, California, United States of America, represented by SafeNames Ltd., the United Kingdom of Great Britain and Northern Ireland.

The Respondent is Red Soul, London, the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <order-ria.com>, <orderria.com>, <point-ria.com>, <pointria.com> are registered with Internet.bs Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2013. On September 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2013.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 6, 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 is Continental Exchange Solutions Inc. doing business as Ria Financial. The Complainant 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 of 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.

The disputed domain names were all registered on April 11, 2013.

At the time of filing the Complaint, the disputed domain names resolved to a webpage which merely displayed a single search box and a few links which redirected users to commercial websites.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the RIA trademark registered in the United States, the European Union and Australia.

The Complainant asserts that the domain names in dispute are confusingly similar with the RIA trademark.

According to the Complaint, Ria Financial allows people to send money quickly and securely to numerous locations globally. The Complainant explains in the Complaint that its customers are able to locate and go to any of the Complainant’s agents around the globe and set up a money transfer. The order is then entered into the agent’s proprietary computer operating system and then sent to an order processing centre where the customer is provided a receipt with a tracking number. Once the transaction is cleared, the money order is sent to a Ria Financial correspondent in the beneficiary’s country. The correspondent notifies the beneficiary that the money is available and can be claimed upon presentation of proper identification. Alternatively, the beneficiary is entitled to access the money from the Complainant’s payment points. The Complainant points out this explanation of how the Complainant operates and the services it provides is important to understand the reason for the addition of the generic terms “order” and “point” to the disputed domain names. According to the Complaint, such additions to the RIA trademark do not in any way distinguish the disputed domain names from the RIA trademarks given that the added words are associated with the Complainant’s money order service and the pay points or agency points available in different countries. It is the view of the Complainant, that these additions merely compound the confusion created by the incorporation of the Complainant’s trademark.

The Complainant states that there are no circumstances under which the Respondent could make legitimate use of the disputed domain name in light of the fact that the Respondent has never been licensed by the Complainant or authorized in any way to use the RIA mark. According to the Complaint the Respondent is not affiliated with the Complainant in anyway whatsoever and could not make any legitimate use of the disputed domain names given the pre-existing reputation and goodwill associated with the Complainant’s trademark.

The Complainant states that the Respondent is not offering goods or services in some form or another or using the disputed domain names for a legitimate, noncommercial use. The disputed domain names all resolve to the same webpage which merely displays a single search box and a few links which redirect users to commercial websites such as, “www.location-vacances.me”; “www.keskeces.com”; and “www.moterland.com”. Furthermore, the “Contact” link on the website redirects visitors to the website “www.astusbiz.name”, a discount domain name company. The Complainant states that it is clear from the foregoing evidence that the purpose of registering the disputed domain names has been to bait unsuspecting users to one of these online locations. The Complainant asserts that the use of a confusingly similar domain name in this fashion would not constitute a bona fide offering of goods or services.

Furthermore, The Complainant denies the fact that the Respondent is commonly known by any name that incorporates the term “ria”. The Complainant asserts that on the WhoIs record, the Registrant is listed as “Red Soul”. The Respondent does not own any trademark or service mark registration that is identical, similar, or in any way related to the disputed domain names or the RIA trademark.

The Complaint states that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to other web sites, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.

The Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct. According to the Complainant, the Respondent has engaged in a customary practice of registering domains confusingly similar to the Complainant’s trademark. The Complainant states that this activity is not an isolated incident but forms part of a much larger pattern of conduct. According to the Complainant, the Respondent has specifically targeted entities which operate within the financial service sector: In addition to the four (4) domain names that form the basis of this dispute, WhoIs information identifies the Respondent as being the Registrant of the following domain names; all of which share similar characteristics: <ordermg.com>, <creditunion-point.com>, <xpressmoneyorder.com>, <order-coinstar.com>, <ordercoinstar.com>, <order-mg.com>, <ordermoneygram.com>, <pointmoneygram.com>, <Xpress-moneyorder.com>, and <Creditunion-order.com>.

The Complainant points out that COINSTAR, XPRESS MONEY and MONEYGRAM are all registered trademarks by third parties other than the Respondent and have been incorporated into confusingly similar domain names by the Respondent. From the examples presented above it is quite clear that the Respondent does not limit himself to the registration of singular domain names but registers trademarked domain names in a variety of arrangements such as <orderTRADEMARK.com>, <order-TRADEMARK.com>, <pointTRADEMARK.com>.

Finally, due to a series of coincidences, the Complainant states that this respondent may be the same respondent as the one involved in the case Continental Exchange Solutions, Inc. dba Ria Financial v. Fundacion Private Whois, WIPO Case No. D2013-1516.

The Complainant requests the transfer of all the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

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, trademarks in which the Complainant has rights. The Complainant has proven ownership of the registered trademarks for RIA as evidenced by the documents attached to the Complaint in Annex 7.

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 trademarks.

Each of the four disputed domain names consists of the Complainant’s registered trademark, RIA, in its entirety plus a descriptive term – “point” or “order”. In addition, in two of the four disputed domain names, there is a hyphen interposed between the descriptive term and the RIA trademark.

Viewing each disputed domain name as a whole, it is plain that the term “ria” is the distinctive element. The descriptive terms (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 names to “point” or “order”, given the fact that both terms have a natural affinity with the service offered by the Complainant. While the addition of a hyphen would normally be fairly insignificant, in the present case it serves to emphasize the distinctive role played by the term “ria” by separating it visually from the descriptive element.

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 prong of the Policy is satisfied.

B. Rights or Legitimate Interests

Under the second requirement the Complainant must prove 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.

The onus of proving this requirement, like each element, falls on the Complainant. Previous cases have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. The consensus view states that it is sufficient for a complainant to raise a prima facie case against the respondent under this head, upon which the burden of production shifts to the respondent to rebut that prima facie case. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.

The Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent has never been licensed or authorized by the Complainant to use the RIA trademark or the disputed domain names. Moreover, it does not appear that the Respondent is commonly known by the disputed domain names or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. The Respondent has failed to come forth with any demonstration of rights or legitimate interests in the disputed domain names.

The Panel accordingly determines that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances that constitute evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel is of the opinion that it is inconceivable that the Respondent was unaware of the RIA trademark when registering the four disputed domain names on April 11, 2013. The disputed domain names contain the Complainant’s trademark in its entirety as the dominant part and also contain the terms “order” and “point” as suffixes. These words are closely related to the Complainant’s activity and this is evidenced by the explanation of how the service provided by the Complainant works. In addition the four disputed domain names were registered on the same date.

With respect to bad faith use, at the time of filing the Complaint, the Respondent was using the disputed domain names to resolve to a webpage which merely displayed a single search box and a few links which redirected users to commercial websites. The Complainant has attached screenshots of that website and other destinations hyperlinked from that website as Annex 10 of the Complaint. The Panel has reviewed those documents and was able to verify that those hyperlinks took users to a website called “Location Vacances” where tourist services seem to be offered. Another website offered domain names for sale.

The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants' mark.

In addition, the Complainant has identified that a number of other domain names have been registered in the Respondent’s name (Red Soul) based on the registered trademarks of other providers of money transfer services, including 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. The Panel notes that this is one more element that weighs in the overall finding of bad faith in this case.

However the Panel was not able to verify that the respondent in Continental Exchange Solutions, Inc. dba Ria Financial v. Fundacion Private Whois, WIPO Case No. D2013-1516 is the same respondent as in this case because in that case there was a private whois.

The Panel is convinced that the preponderance of the evidence, combined with the inferences drawn due to the Respondent’s failure to respond, shows that the Respondent has registered and is using the disputed domain names in bad faith. Accordingly, it is found that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <order-ria.com>, <orderria.com>, <point-ria.com>, <pointria.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: November 20, 2013