WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Continental Exchange Solutions, Inc. DBA Ria Financial v. Robert Stewart, Hush IP LLC
Case No. D2015-1340
1. The Parties
Complainant is Continental Exchange Solutions, Inc. DBA Ria Financial of Buena Park, California, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Robert Stewart, Hush IP LLC of Phoenix, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <riamoneytransfers.com> (the "Domain Name") is registered with PSI-USA, Inc. dba Domain Robot (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 30, 2015. On July 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 3, 2015, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 10, 2015. In accordance with the Rules, paragraph 5, the due date for the Response was August 30, 2015. Respondent did not submit any Response. Accordingly, the Center notified Respondent of its default on August 31, 2015.
The Center appointed John C. McElwaine as the sole panelist in this matter on September 21, 2015. 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 is a company incorporated in the State of Delaware. Complainant provides money transfer services, including bill payment, mobile top-ups, prepaid debit cards, check cashing and money orders.
Complainant is the owner of United States trademark registration No. 4089157 for RIA in classes 09 and 36, registered on January 17, 2012, and a Community Trademark Registration No. 002149565 for RIA in classes 16 and 36, registered on June 7, 2002. Complainant also owns two Community Trademark Registrations Nos. 007218696 and 007218977 for RIA MONEY TRANSFER in a figurative form in classes 09 and 36, registered on May 28, 2009 and May 30, 2009, respectively.
On February 26, 2015, Respondent registered the Domain Name. The Domain Name currently resolves to a pay-per-click website and is for sale on the website "www.afternic.com" for a listed price of USD 1,495.
5. Parties' Contentions
Complainant is the third largest money transfer company in the world. In 2013, Complainant processed approximately 28 million money transfers with a value of more than USD 9 billion. Complainant has a global network of 243,000 locations in 134 countries worldwide. In 2014, Complainant launched an international money transfer service with Wal-Mart, which was widely publicized through online news outlets, including CNBC, Yahoo! and Reuters.
Complainant asserts that it has a significant online presence and has registered multiple domain names containing its RIA mark which include <riafinancial.com> and <riamoneytransfer.com>.
Complainant also asserts to own protectable trademark rights in the marks RIA and RIA MONEY TRANSFER by virtue of its United States trademark registration for the RIA in classes 09 and 36, its Community Trademark registration for RIA in classes 16 and 36, and its two Community Trademark registrations for RIA MONEY TRANSFER in a figurative form in classes 09 and 36.
Complainant argues that the Domain Name is confusingly similar to Complainant's RIA trademark, as it consists merely of the word "ria" and the addition of the words "money transfers". The addition of such terms does not avoid confusing similarity of the Domain Name and Complainant's RIA mark, as Complainant has also registered the figurative mark RIA MONEY TRANSFER. Complainant also points out that the generic-Top-Level Domain ("gTLD") ".com" does not impact the overall impression of the dominant part of the Domain Name.
With respect to the second element of the Policy, Complainant asserts that the Domain Name resolves to a pay-per-click website, which contains sponsored links for "Ria Send Money", "Ria Money Transfer Tracking" and "Ria". Complainant asserts that use of a domain name with such a pay-per-click website should not confer rights or legitimate interests arising from a bona fide offering of goods or services, especially when the links are to goods or services related to or competitive with those of the rights holder. In addition, Complainant points out that Respondent has no connection to the Domain Name as a name or as a trademark.
With respect to the third element of the Policy, Complainant alleges that the Domain Name was listed for sale on Afternic, an online domain marketplace, for a price of USD 1,495. As a result, Complainant asserts that the Domain Name was registered, in violation of paragraph 4(b)(i) of the Policy, primarily for the purposes of selling the Domain Name to the owner of the trademark or to a competitor of that Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs.
In addition, Complainant alleges that Respondent has a portfolio of around 1,000 domain names, of which Complainant has identified 12 domain names containing third party trademarks or deliberately misspelled ("typo squatted") variations including: <faceboojk.com>, <vintagedisneylandtickets.com>, <toppshop.com> and <netdflix.com> in addition to the Domain Name that is the subject of this dispute. As a result, Complainant asserts that Respondent has violated paragraph 4(b)(ii) of the Policy because the Domain Name was registered in order to prevent the trademark owner from reflecting the mark in a corresponding domain name, and Respondent has engaged in a pattern of such conduct.
Finally, Complainant argues that Respondent has violated paragraph 4(b)(iv) of the Policy because Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website. In support, Complainant alleges that its RIA mark is strongly associated with its money transfer services and that Respondent has registered the Domain Name to create a likelihood of confusion for the purposes of commercial gain. It is asserted that the links Respondent's website redirect traffic to Complainant's competitors showing an intention for commercial gain based on a connection with Complainant's RIA and RIA MONEY TRANSFER marks. Respondent, Complainant states, cannot argue that he is not responsible for such links, as a registrant is normally deemed responsible for links appearing on an automatically generated basis unless it can show some good faith attempt towards preventing inclusion of advertising which profits from trading on third-party trademarks. In addition, it is pointed out that Respondent has failed to respond to two cease and desist notifications sent by the Complainant, which is alleged amounts to willful infringement of Complainant's rights.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant has proven ownership of registered trademark rights for RIA, which predate the registration of the Domain Name in the United States where Respondent claims to reside. It is important to note that this United States Registration No. 4089157 recites services in International Class 36 that includes money transfer services.
The Domain Name contains Complainant's RIA trademark in its entirety, as a dominant element. It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. The term "money transfer" is not only related to Complainant's core business, but is a specific term referenced in the identification in Complainant's United States RIA trademark registration. Thus, the public is likely to believe that <riamoneytransfers.com> is related to a website from which Complainant's financial services could be rendered. The Panel finds that the addition of the descriptive words "money transfer" do not serve to sufficiently distinguish or differentiate the Domain Name from Complainant's RIA trademark.
Also, the addition of the gTLD ".com" to the Domain Name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the Domain Name and it does not serve to identify the source of the goods or services provided by the registrant of the Domain Name.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the RIA mark in which Complainant has valid trademark rights.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. See Vicar Operating, Inc. v. Domains by Proxy, Inc./Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1145; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant asserts that Respondent is not commonly known by the name "Ria Money Transfers", or is otherwise known by the Domain Name. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the Domain Name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Complainant asserts that the Domain Name resolves only to a pay-per-click website which contains sponsored links to competing services. Domain name parking is a type of advertisement syndication. In this scheme, the subject domain name is typically listed or parked with a domain name parking company that has developed software for such syndication. The domain name parking service analyzes the domain name and then displays advertisements and pay-per-click links as the main content of the page to the website visitor. Alternatively, the domain name owner can enter certain "keywords" to display related advertisements and pay-per- click links. The domain name owner is paid a small sum for Internet users that subsequently click on such links. For domain name owners to attract sufficient traffic in order to generate profits from serving ads, in order to justify the cost of the domain name registration, such parked domains are sometimes well-known trademarks with a generic addition or typographical error.
This Panel agrees with the viewpoint that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name is not in all circumstances to be considered a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name. See Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. However, the Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in paragraph 2.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). None of those factors are present here. There is no evidence that the Domain Name consists of dictionary or common words or phrases that support the pay-per-click links genuinely related to the generic meaning of the domain name at issue. Instead, the Domain Name appears to have been registered with the intent that confused Internet users searching for Complainant will be directed to Respondent's parked webpage for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita, WIPO Case No. D2014-1726.
Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(i) of the Policy indicates that bad faith exists where a respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Here, the evidence establishes that the Domain Name was listed for sale on Afternic for USD 1,495 along with a statement to "MAKE AN OFFER". Without a response from the Respondent, notice may be taken that USD 1,495 far exceeds the registration cost of most domain names. If the Domain Name has any commercial value over the normal amount for a domain name, it is only because this Domain Name incorporates the Complainant's RIA and RIA MONEY TRANSFER marks. In fact, by adding the words "Money Transfers", Respondent narrowed its possible legitimate market to the Complainant or its competitors. See, e.g., Pfizer Inc. v. Capital Market Advisors LLC, WIPO Case No. D2004-0733; Gateway, Inc. v. Bellgr, Inc., WIPO Case No. D2000-0129. Accordingly, the Panel finds from the circumstances of this case that Respondent registered the Domain Name primarily for the purpose of selling or otherwise transferring the domain names to the Complainant or to a competitor of the Complainant, which constitutes bad faith registration and use for purposes of Paragraph 4(b)(i) of the Policy.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, 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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107. Complainant has used the RIA mark for decades and acquired registrations for RIA and RIA MONEY TRANSFER in multiple jurisdictions throughout the world, including a registration for RIA in the United States. Based on Complainant's submissions, which were not rebutted by Respondent, it is asserted that Respondent must have known of Complainant's RIA or RIA MONEY TRANSFER marks when Respondent registered the Domain Name because the website displayed at the Domain Name contained links to related financial services and Complainant's competitors.
Since the website displayed at the Domain Name uses the RIA and RIA MONEY TRANSFER mark and provides links to related services, without a response by Respondent, there is no credible explanation for Respondent to have chosen to use the Domain Name other than to trade-off the goodwill and reputation of Complainant's trademark or otherwise create a false association with Complainant.
For these reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Domain Name <riamoneytransfers.com> be transferred to Complainant.
John C McElwaine
Date: October 5, 2015