SIA Digimoney v. International Names Ltd.
Claim Number: FA0711001108773
Complainant is SIA Digimoney (“Complainant”), represented by Anatoly
Ostrovsky, Viestura prospekts 14-41, LV 1034, Riga, Latvia. Respondent is International Names Ltd. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webmoney.org>, registered with Capitoldomains LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 13, 2007; the National Arbitration Forum received a hard copy of the Complaint November 19, 2007.
On November 27, 2007, Capitoldomains LLC confirmed by e-mail to the National Arbitration Forum that the <webmoney.org> domain name is registered with Capitoldomains LLC and that Respondent is the current registrant of the name. Capitoldomains LLC verified that Respondent is bound by the Capitoldomains LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 31, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <webmoney.org>, is identical to Complainant’s WEBMONEY mark.
2. Respondent has no rights to or legitimate interests in the <webmoney.org> domain name.
3. Respondent registered and used the <webmoney.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SIA Digimoney, owns and operates the WebMoney Transfer system, an electronic currency and online payment system. Complainant currently maintains a world-wide presence and processed over $1.46 billion in online currency turnover in 2006. Complainant has offered its services under the WEBMONEY mark since 1998 and currently holds a trademark registration for the mark under the Madrid Agreement and Protocol, as recognized by the World Intellectual Property Organization (“WIPO”) (Reg. No. 837,213 issued June 20, 2004). Complainant offers its services online at the domain names <webmoney.ru> (Russian site) and <wmtransfer.com> (English site).
Respondent registered the <webmoney.org> domain name July 7, 2006. Respondent’s disputed domain name resolves to a website displaying links to various third-party websites, some of which compete with Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that, pursuant to Policy ¶ 4(a)(i), Complainant established rights in the WEBMONEY mark through its registration of the mark, as recognized by other Panels. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent’s <webmoney.org> domain name is identical to Complainant’s WEBMONEY mark, and the Panel agrees. The disputed domain name includes the exact WEBMONEY mark and merely adds the generic top-level domain “.org” to the mark. Since a top-level domain is a required element of all domain names and thus irrelevant under the UDRP, the Panel finds that the <webmoney.org> domain name is identical to Complainant’s WEBMONEY mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of showing that Respondent lacks rights and legitimate interests in the <webmoney.org> domain name. Once Complainant makes a prima facie case to this effect; however, the burden shifts to Respondent to show that it does have rights or legitimate interests. In the present case, the Panel finds that Complainant made a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent did not respond to the Complaint in this proceeding. Respondent’s default allows the Panel to assume that Respondent lacks rights and legitimate interests in the <webmoney.org> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Nevertheless, this Panel examines all of the evidence in the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
No evidence in the record, including Respondent’s WHOIS information, suggests that Respondent, International Names Ltd., is commonly known by the <webmoney.org> domain name. Moreover, Complainant asserts that it has not given Respondent permission to use its WEBMONEY mark for any purpose. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <webmoney.org> domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The disputed domain name, <webmoney.org>, resolves to a website featuring links to third-party websites, some of which compete with Complainant’s business, and in such circumstances the Panel presumes that Respondent earns click-through fees when Internet users click on these links. The Panel finds that this does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Further, such circumstances support findings that Respondent lacks rights to and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website featuring links to third-party websites that compete with Complainant. As such, the Panel finds that Respondent is disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), this indicates that Respondent registered and is using the <webmoney.org> domain name in bad faith. See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Finally, the Panel presumes that Respondent benefits commercially from the links displayed on the website that resolves from the <webmoney.org> domain name, which is identical to Complainant’s WEBMONEY mark. Respondent is thus taking commercial advantage of the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to Complainant’s affiliation with the disputed domain name and corresponding website. Accordingly, the Panel finds this to be further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webmoney.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 18, 2008.
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