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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TransferWise Limited v. Ivan Ivanov

Case No. D2017-0444

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 Ivan Ivanov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <transferswise.net> is registered with Registrar of Domain Names REG.RU LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2017. On March 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2017, 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 March 7, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On March 7, 2017, the Center notified the parties in both English and Russian that the language of the Registration Agreement for the disputed domain name was Russian. The Complainant filed an amended Complaint with the request for English to be the language of the proceeding on March 8, 2017. The Respondent did not respond regarding the language of the proceeding.

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 March 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 5, 2017.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 18, 2017. 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 a limited liability company incorporated and registered in United Kingdom. It owns and operates a global 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 Complainant is also the proprietor of several trade mark registrations and applications for the TRANSFERWISE name and logo, both in the United Kingdom, the European Union and elsewhere. In particular, the Complainant is the registered proprietor of:

- the European Union trade mark registration No. 011312535 for TRANSFERWISE and design (figurative) registered on February 26, 2013 in class 36 in respect of the following services: foreign currency trading, currency exchange and currency transfer services; money transfer services; issuing prepaid debit cards and prepaid debit card services;

- the European Union trade mark registration No. 013791314 for TRANSFERWISE and fast flag design (figurative) registered on June 18, 2015 in class 36 in respect of the following services: financial affairs; monetary affairs; financial services including foreign currency trading, exchange and transfers; electronic money transfers; financial transactions relating to all of the aforesaid; the provision of information, advice and consultancy relating to all of the aforesaid;

- the United States registration No. 011312535 for TRANSFERWISE and design (figurative) registered on February 26, 2012 in class 36 in respect of the following services: foreign currency trading, currency exchange and currency transfer services; money transfer services; issuing prepaid debit cards and prepaid debit card services;

- International registration No. 1264350 for TRANSFERWISE and Fast Flag design (figurative) registered on June 30, 2015 in class 36 in respect of the following services (other than in respect of the US and Japan): financial affairs; monetary affairs; financial services including foreign currency trading, exchange and transfers electronic money transfers; financial transactions relating to all of the aforesaid; the provision of information, advice and consultancy relating to all of the aforesaid. The services applicable to the US and Japanese marks are as follows: financial services, namely, foreign currency exchange, currency transfer services; electronic money transfers; financial transactions relating to all of the aforesaid, provision of information and services relating to the aforesaid.

The Complainant is also the registered proprietor of numerous domain names that incorporate the TRANSFERWISE mark. In particular, the Complainant is the owner of (amongst others): <transferwise.com>; <transferwise.co.uk>; <transferwise.org>; <transferwise.uk>; <transferwise.uk.com>; <transferwise.gb.com>; and <transferwise.us.com>.

The disputed domain name was registered on February 10, 2017. The disputed domain name was previously used to host a website purporting to offer financial services and allegedly asserting false affiliations with other banking institutions and perpetuating financial scam using the Complainant's mark and reputation.

5. Parties' Contentions

A. Complainant

Firstly, the Complainant asserts that the disputed domain name is confusingly similar to the TRANSFERWISE mark and the "Transferwise" name. The Complainant avers that the presence of an extra "s" has been deliberately chosen to deceive members of the public as they would be likely to believe the disputed domain name is associated with or connected to the Complainant.

Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In the Complainant's opinion, the Respondent is illegally making money through various advertisements posted on their website that are being viewed by customers believing this is the Complainant's own website. According to the Complainant, the disputed domain name resolves to a webpage which refers to monetary affairs and money transfer services in exactly the same way as the Complainant's mark does. These are areas in which the Complainant is well-known and to which the specification of its trade marks extend. The Complainant also contends that the disputed domain name owner unlawfully links to the Complainant's own website page entitled: "TransferWise State Licenses", which fraudulently indicates to customers that the two are affiliated or one and the same.

Therefore, there is no evidence to suggest: (a) the 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 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.

Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. According to the Complainant the disputed domain name was registered a number of years after the Complainant had built considerable goodwill and reputation in the "Transferwise". Furthermore, the Complainant contends that the disputed domain name is being used to perpetrate a financial scam, using the Complainant's name and reputation to target victims. The Complainant submits that the disputed domain name resolves to a webpage that uses the Complainant's name, trademarks and copyright materials, links to the Complainant's own webpage: "TransferWise State Licenses" and purports to be regulated by the Financial Conduct

B. Respondent

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

6. Discussion and Findings

(i) Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that the Registration Agreement can be also found online in English. In addition, the Complainant contended that both the disputed domain name and the

Respondent's website are in English.

The Panel finds that the above-mentioned circumstances indicate that the Respondent can understand English. Taking all the circumstances into account, including the Respondent's failure to comment on this issue, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.

(ii) Merits of the Case

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:

(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 the disputed domain name; and

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

The requested remedy may only be granted if the above criteria are met.

A. Identical or Confusingly Similar

The disputed domain name <transferswise.net> contains the TRANSFERWISE mark in its entirety, with an extra "s" in the middle. The letter "s" is generally understood as a sign of a plural form of an object does not serve to render the domain name dissimilar to the Complainant's mark as it is too insignificant to have any real effect in the perception of the mark. The mere adjunction of a generic Top-Level Domain ("gTLD") is also irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (see, Heineken Italia S.p.A. v. xiongmiao, WIPO Case No. D2016-2193; Les Laboratoires Servier v. miller / JunZe zhang, WIPO Case No. D2016-2029).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the TRANSFERWISE mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 and cases cited therein).

The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (c) the Respondent is not 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. In particular, a use of a domain name, for the purpose of creating a website that uses this trademark and copyrighted materials of the trademark's owner cannot be qualified as a bona fide offering of goods or services.

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant's unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.

Firstly, the TRANSFERWISE mark was registered a few years before the disputed domain name. Moreover, the "Transferwise" name has been present on the market for over ten years. In the Panel's opinion, the notoriety of the TRANSFERWISE mark in the financial sector indicates that the Respondent knew or should have known about the Complainant's rights when registering the disputed domain name. As concluded by other UDRP panels: the registration of a well-known trademark by a party, with no connection to its owner and no authorization and no legitimate purpose to use the trademark, is a strong indication of bad faith (see Socie'te pour I'Oeuvre et la Memoire d'Antoine de Saint Exupery - Succession Saint Exupery - D'Agay v. Perlegos Properties, WIPO Case No. D2015-2336)

Secondly, the Respondent has also used the disputed domain name in bad faith which is evidenced by the fact that the website that it resolved to offered similar services to those offered by the Complainant. Moreover, the screenshots of the website prove that the Respondent used the Complainant's name, trademarks, copyrighted materials and links to the Complainant's own webpage: "TransferWise State Licenses". Therefore, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, or endorsement of or affiliation with the website.

In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.

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, <transferswise.net> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: May 2, 2017

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