WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TTT Moneycorp Limited v. Gerry Enterprises Inc.

Case No. D2016-2011

1. The Parties

The Complainant is TTT Moneycorp Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by SafeNames Ltd., United Kingdom.

The Respondent is Gerry Enterprises Inc. of Alicante, Spain, self-represented.

2. The Domain Name and Registrar

The disputed domain name <moneycorpireland.com> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2016. On October 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2016. The Respondent did not submit any Response by the due date for Response, and accordingly, the Center notified the Respondent's default on November 3, 2016. The Respondent sent an email to the Center on November 4, 2016, in which the Respondent stated it would be willing to transfer the disputed domain name if it received monetary compensation for costs incurred in building the disputed domain name's website. On November 4, 2016, the Center sent an email to the Parties inviting the Complainant to request suspension of the proceedings for the purpose of a possible settlement with the Respondent. On November 14, 2016, having received no suspension request from the Complainant, the Center informed the Parties that it would proceed to panel appointment. The Respondent sent further emails to the Center on November 15, 2016, reiterating its proposal to transfer the disputed domain name in exchange for monetary compensation for costs incurred in building the disputed domain name's website

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on November 18, 2016, indicating the due date of the decision was December 2, 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. On November 18, 2016 the Respondent sent to the Center an email communication indicating it would be willing to surrender the disputed domain name in exchange for website development costs. On November 21, 2016, the Complainant requested a 15-day suspension of the proceeding. The Center in turn issued an order to the Parties informing them that the proceeding had been suspended for 15 days through December 6, 2016, and providing a standard settlement form for the Parties' completion. After the Complainant requested continuation of the proceedings on November 29, 2016, the Panel ordered a reinstitution of the proceedings, with the new due date for a decision being December 10, 2016.

4. Factual Background

The Complainant was incorporated in 1962 and operates, since 1993, under the name of TTT Moneycorp Limited, in the field of financial services, offering foreign exchange services to business and individual customers.

The Complainant is essentially operating bureaux de change in and around London with 30 airport stores, including at Heathrow, Gatwick and Stansted in the United Kingdom. The Complainant's international payments business earned revenues of GBP 31.3 million, experiencing significant growth in online channel sales. In 2014 the Complainant has carried out 7.2 million transactions dealing with over 90 different currencies.

The Complainant owns trademark rights in the "MONEYCORP and TTT MONEYCORP marks as follows:

Besides that, the Complainant registered the domain <moneycorp.com> in 1998, which hosts the Complainant's official website and, in addition, owns the domain <moneycorpcard.com> which was registered in 2008. The Complainant promotes a multi-currency pre-paid "Moneycorp card" and has seen growth in its reserve and collect services, which allow consumers to order online at a preferential rate for collection at branches, including those at airports. The Complainant carries out promotions which is a form of advertising for its "Moneycorp card".

The disputed domain name was registered on January 1, 2016. It redirects to another website, "www.crestselect.com". The "www.crestselect.com" website advertises services of FC exchange, a UK company offering foreign exchange and money transfer services identical to the services offered by the Complainant.

The Complainant sent to the Respondent a cease-and-desist letter via email. The Respondent did not reply.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical to its registered trademarks. It submits that it is also confusingly similar to its Moneycorp Card services and therefore infringes rights held by the Complainant according to paragraph 4(a)(i) of the Policy.

According to the Complainant, the word "Moneycorp" is solely used by it and has become synonymous with the Complainant's services. Also, the Complainant contends that the disputed domain name is composed of a name identical to the MONEYCORP trademark and the geographic term "Ireland".

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii). The Complainant submits that circumstances as set out by paragraph 4(c)(i) to (iii) are not met. The Complainant's trademark rights predate the Respondent's registration of the disputed domain name by far. Moreover, the burden of proof in this respect is subject to the Respondent's responsibility. So far no preparations for business or trade efforts according to 4(c)(i) have been monitored.

The Complainant further argues that the Respondent is not making legitimate use of the disputed domain name as the Respondent advertises services of one of the Complainant's competitors. The Respondent is redirecting traffic indirectly by intentionally taking away the Complainant's customers to a competitor's website; further, "moneycorp Ireland" is a commonly searched term by Internet users who would like to use the Complainant's services with regard to Ireland and therefore redirecting consumers away with the Complainant's goodwill and customer base.

The Complainant confirms it has not licensed or otherwise authorized the Respondent to use the mark.

The Complainant contends that the disputed domain name has evidently been registered and is being used in bad faith according to paragraph 4(a)(iii) as circumstances indicating bad faith according to paragraph 4(b) of the Policy are present. The registration of the Complainant's domain name <moneycorp.com> and the MONEYCORP trademarks predate the registration of the disputed domain name by far. The Complainant further submits that the Respondent's action to redirect the disputed domain name to another website rests on the probability of an Internet users initial interest confusion, i.e. by the time such user reaches and realizes that the dispute domain name does not actually belong to the Complainant, the objective of attracting visitors for financial advantage to the Respondent's website has already been achieved. The Respondent is preying on users who will believe that the disputed domain name belongs to the Complainant and therefore visit the infringing website, while the Respondent has benefitted from this website. Some users who might not realize once they are on the infringing website might believe that there is an economical connection between the Complainant and the Respondent's disputed domain name as it only adds the word "Ireland" to the already famous trademark MONEYCORP. The Respondent thereby is creating a likelihood of confusion and association between the Complainant and the disputed domain name along with any website that he wishes to redirected to.

B. Respondent

The Respondent did not timely reply to the Complainant's contentions. In its belated email communication of November 4, 2016, the Respondent stated that the website at the disputed domain name was intended as an Irish website not offering products similar to those offered by the Complainant, but rather for the purpose of offering Irish clients financial advice, and that there was no intent to compromise the Complainant in any way. The Respondent also offered to surrender the disputed domain name against reimbursement of its costs for building the website. In email communications to the Center sent on November 15, 2016, and November 18, 2016, the Respondent repeated its offer to surrender the disputed domain name in exchange for reimbursement for website development costs.

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that

(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;

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

By the Rules, paragraph 5(b)(i), it is expected of a respondent to "[r]espond specifically to the statements to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]".

In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.

In the event of default, under the Rules, paragraph 14(b) "[…] the Panel shall draw such inferences therefore as it considers appropriate." As stated by numerous UDRP panels (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: "[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence."

In the present administrative proceeding, the Respondent has chosen not to submit a response within the given time frame. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable.

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between the Complainant's trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark "MONEYCORP" which predate the registration of the disputed domain name. The disputed domain name consists of the term "moneycorpireland".

The disputed domain name contains the Complainant's trademark in its entirety and differs from the trademarks only by the addition of the geographical indication "Ireland" and the generic Top-Level Domain ("gTLD") ".com". The addition of the gTLD suffix does not dispel confusion. The gTLD of the disputed domain name is to be ignored for the purposes of assessing confusing similarity as it is a functional requirement of the domain name system, which is the common view of UDRP panelists and held in earlier cases such as DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694; Telstra Corporation Limited v. Ozuris, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.

The additional word "Ireland" is the name of a country. It is common practice for companies operating in various countries to indicate the particular country by combining their company name or trademark with the country name, thereby enabling the Internet user to immediately identify the website of the company offering the goods or services particularly for the country of residence of the Internet user. For this reason, the Panel concludes that the word "Ireland" is solely descriptive. The use of the added descriptive word does not change the overall impression of the domain name as being dominated by the MONEYCORP mark and does not serve to distinguish the disputed domain name from the Complainant's mark (See Microsoft Corporation v. Hassan Pennock, WIPO Case No. D2005-1020; Dell Inc. v. DI_4747995, WIPO Case No. D2007-0803; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).

Hence, the disputed domain name is confusingly similar to the Complainant's trademark MONEYCORP. Moreover, the disputed domain name suggests that it resolves to a website operated or otherwise authorized by the Complainant in relation to its Moneycorp Card services. Therefore, Internet users would suppose that the disputed domain name refers to a website of or authorized by the Complainant.

In view of the above, the Panel finds that neither the added gTLD ".com" nor the added descriptive element "Ireland" are apt to avoid confusion with the Complainant's trademarks. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interest in the disputed domain name in order to place the burden of production on the Respondent (See Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the disputed domain name and that, according to the Complainant, the Respondent has not acquired trademark or service mark rights. The Respondent's use and registration of the disputed domain name was not authorized by the Complainant.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.

Hence, the burden of production is on the Respondent. In such case, the Respondent must by substantial evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.

Consequently, the Panel finds that the Respondent's default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the disputed domain name in bad faith.

Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating the five factors set forth in the Policy:

(i) circumstances indicating that the registrant has registered or the registrant has 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 registrant's documented out-of-pocket costs directly related to the domain name;

(ii) the registrant 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 registrant has engaged in a pattern of such conduct;

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

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.

The Complainant has brought evidence that its trademarks are known to a substantial part of consumers due to intense use and trade activities made under the trademark, which has not been contested by the Respondent.

Further, the Complainant has brought forward evidence that the Respondent is using the disputed domain name in order to attract Internet users looking in particular for the Complainant's website at "www.moneycorpireland.com" to the Respondent's own website by creating a likelihood of confusion with the Complainant's trademark mark. The Respondent has added only the geographical indication "Ireland", thereby seeking to attract Internet users desirous of using the services of the Complainant with regard to Ireland. The Respondent is attempting to confuse Internet users as to the source, sponsorship, affiliation or endorsement of its website for the purposes of monetary gain, namely with the objective of attracting visitors for financial advantage to the Respondent's website. Indeed, the Panel concurs with the view of the Complainant that the Respondent, by registering and using the disputed domain name, is creating a likelihood of confusion and association between the Complainant and the disputed domain name. Some user who might not realize once they are on the infringing website might believe that there is an economical connection between the Complainant and the Respondent's domain as it only adds the word "Ireland" to the trademark "Moneycorp".

For all of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <moneycorpireland.com> be transferred to the Complainant.

Andrea Jaeger-Lenz
Sole Panelist
Date: December 10, 2016