WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Transferwise Limited v. Thomas Gibson, Peggyformations Ltd / PrivacyGuardian.org

Case No. D2016-1835

1. The Parties

The Complainant is Transferwise Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by JAG Shaw Baker, United Kingdom.

The Respondent is Thomas Gibson, Peggyformations Ltd of London, United Kingdom / PrivacyGuardian.org of Phoenix, Arizona of United States of America.

2. The Domain Name and Registrar

The disputed domain name <transferwiseincome.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2016. On September 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 14, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 19, 2016.

The Center verified that the amended 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 the Respondent of the Complaint, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2016.

The Center appointed Ian Blackshaw as the sole panelist in this matter on October 25, 2016. 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 owns and operates a money and foreign currency transfer platform, which provides money transfer solutions to customers in more than 50 countries around the world and covers more than 500 currencies routes.

The “Transferwise” name has been constantly used by the Complainant since March 2010.

The Complainant is also the proprietor of several trademark registrations for the TRANSFERWISE name and logo, in the United Kingdom, China and the United States. The Complainant is also the owner of European Union trademark number 11312535, registered on February 26, 2013, and is also the proprietor of an International Registration for TRANSFERWISE and Fast Flag design (figurative). Details of the Complainant’s trademarks have been provided to the Panel.

The Complainant is also the registered proprietor of numerous domain names that incorporate the TRANSFERWISE name and mark. Amongst others, the Complainant is the owner of: <transferwise.com>; <transferwise.co.uk>; <transferwise.org>; <transferwise.uk>; <transferwise.uk.com>; <transferwise.gb.com>; and <transferwise.us.com>. Again, details of the Complainant’s domain names have been provided to the Panel.

The Complainant has also built substantial goodwill and reputation in the TRANSFERWISE name and registered trademark in connection with foreign currency transfers. For instance:

(a) the Complainant has, to date, transferred billions of GBP of customers’ money and is currently transferring over GBP500,000,000 of customers’ money every month. Its primary website, “www.transferwise.com”, also receives hundreds of thousands of unique visitors each month;

(b) the Complainant has received significant press coverage in publications such as, amongst many others, The New York Times, the Financial Times, The Economist, The Times, The Telegraph and the BBC. Details of some of the Complainant’s press coverage has been provided to the Panel;

(c) the Complainant has spent significant sums of money launching numerous high-profile TV, digital, print and billboard advertising campaigns. In particular, the Complainant’s “That Moment” campaign features prominently on the London Underground and in several of the UK’s major airports, reaching tens of millions of individuals every month. Photographic evidence of the Complainant’s “That Moment” campaign appears has been provided to the Panel;

(d) the Complainant has raised over USD 91,000,000 in venture capital from investors, such as Valar Ventures, Index Ventures, IA Ventures, Sir Richard Branson, Andreessen Horowitz, and Vikram Pandit. Press coverage of the Complainant’s investments has been provided to the Panel;

(e) the Complainant has won numerous awards. In particular, the Complainant was voted Europe’s Number 1 start-up at The Europas European Tech Startup Awards; recently, won Ernst and Young’s UK Entrepreneurs of the Year 2015 award; appears on the Fintech 50 list of the most “game changing” and entrepreneurial finance firms; and was shortlisted for the FTArcellorMittal ‘Boldness in Business’ Awards.

The Complainant has, therefore, accrued substantial legal and valuable equitable rights in the TRANSFERWISE name and registered trademark.

The disputed domain name was registered on April 1, 2015. Prior to the filing of the Complaint the disputed domain name resolved to a webpage that lists the Complainant’s company registration number, office details and purported to offer financial services. The disputed domain name no longer resolves to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The disputed domain name combines the mark TRANSFERWISE (the Complainant’s name and the subject of its many trade mark applications and registrations as mentioned above) with the descriptive and non-distinctive word “income”, terms that members of the public would readily associate with the Complainant.

For instance, the disputed domain name strongly alludes to monetary affairs and/or money transfer services, areas in which the Complainant is well-known and to which the specification of its trade marks extend.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

It seems inconceivable to the Complainant that the Respondent was not aware of the Complainant and/or its trademarks when the disputed domain name was registered. In fact, the registration of the disputed domain name suggests that it was deliberately chosen to ride on the goodwill and reputation of the Complainant and its trademarks.

In addition, the Complainant relies on the following assertions and evidence:

(a) the Respondent is fraudulently claiming to be the Complainant. For instance, the webpage accessible from the domain name cites the Complainant’s company registration number, office details, UK Financial Conduct Authority registration number and United Kingdom Her Majesty’s Revenue and Customs certificate number. This strongly indicates that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Screenshots showing that the Respondent is claiming to be the Complainant has been provided to the Panel;

(b) the disputed domain name is being used to perpetrate a financial scam, using the Complainant’s name and reputation to target victims. This strongly indicates that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the underlying registrant has used a privacy service to hide his/her/its true identity. The Complainant suggests this is remarkably telling and, again, indicates that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A copy of the WhoIs database search, conducted on September 9, 2016, and showing that the Respondent has hidden his/her/its identity, has been provided to the Panel.

In light of the above, there is no evidence to suggest:

(a) the Respondent’s use of, or demonstrable preparations to use, the disputed domain name is in connection with a bona fide offering of goods or services;

(b) the Respondent has been commonly known by the disputed domain name; or

(c) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue

(iii) The disputed domain name was registered and is being used in bad faith.

The Complainant relies on the following facts:

(a) the disputed domain name was registered in bad faith a number of years after the Complainant had built considerable goodwill and reputation in the TRANSFERWISE name and registered trademark in order to intentionally perpetrate a fraudulent financial scam for commercial gain by creating a likelihood of confusion with the Complainant’s registered trademark;

(b) the Respondent is fraudulently claiming to be the Complainant. For instance, the disputed domain name resolves to a webpage that lists the Complainant’s company registration number, office details, UK Financial Conduct Authority registration number and United Kingdom Her Majesty's Revenue and Customs certificate number. Screenshots showing that the Respondent is claiming to be the Complainant have been provided to the Panel;

(c) the disputed domain name is being used in a way that infringes the Complainant’s name, registered trademarks and other intellectual property rights.

B. Respondent

The Respondent, having been duly notified of the Complaint and of this proceeding, did not reply to the Complainant’s contentions nor take any part in the proceeding.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the Complainant’s TRANSFERWISE registered trademark, which makes the disputed domain name confusingly similar to this trademark. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its services marketed under its TRANSFERWISE registered trademark.

The Panel agrees with the Complainant’s contention that confusing similarity has been found where, as in the present case, the Respondent has added, as a suffix, the generic word “income” to the Complainant’s TRANSFERWISE registered trademark in the disputed domain name. See Saks & Co. v. saksfifthavenue-sale.com, WIPO Case No. D2013-1644. This addition does nothing to distinguish the disputed domain name from the Complainant’s TRANSFERWISE registered trademark. On the contrary, this addition, in the view of the Panel, tends to lead to more confusion, as the Complainant is a company operating in the financial services sector. See Facebook Inc. v. Naija Host, WIPO Case No. D2015-1057.

In view of all of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s TRANSFERWISE registered trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and interests, including prior promotional and commercial use of and valuable goodwill established in the same.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel in the Case File to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

In the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s TRANSFERWISE registered trademark inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services.

Further, the Panel finds that the Respondent is trading unfairly on the Complainant’s TRANSFERWISE registered trademark and also the valuable goodwill that the Complainant has established in its registered trademark through prior promotion and commercial use.

Also, the Panel finds no evidence in the Case File that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, the Panel finds that no evidence has been adduced in the Case File that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all of the above reasons, and also those advanced and set out above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constituteevidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Based on the evidence provided in the Case File, the Panel considers that the Respondent, by registering the disputed domain name incorporating as a dominant part thereof the Complainant’s TRANSFERWISE registered trademark, and its use in connection with a website at which the Respondent misleadingly holds itself out as the Complainant, as detailed above by the Complainant is trading unfairly on the Complainant’s valuable goodwill established in such trademark. This constitutes bad faith under the provisions of paragraph 4(b)(iv) of the Policy. See Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used by the Respondent in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming in the Case File, the Panel takes the view that the Respondent did not register and use the disputed domain name by chance, but, in view of the factual background as stated above, must have been aware of the notoriety of the Complainant’s TRANSFERWISE registered trademark and its prior commercial use.

Also, the Panel finds that the Respondent’s use of the disputed domain name, which has the effect of redirecting Internet users interested in the Complainant’s products to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

Furthermore, the nature of the Respondent’s business and its activities, as mentioned above by the Complainant, including “personation” of the Complainant by the Respondent, constitutes, in the view of the Panel, further evidence of bad faith on the part of the Respondent.

Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, including those advanced and set out above by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 name <transferwiseincome.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: October 26, 2016