TimesofMoney Ltd. v. Placid Express
Claim Number: FA1208001457792
Complainant is TimesofMoney Ltd. (“Complainant”), represented by Hemant Singh of INTTL ADVOCARE, India. Respondent is Placid Express (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sendmoneytobangladesh.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2012; the National Arbitration Forum received payment on August 13, 2012.
On August 13, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <sendmoneytobangladesh.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sendmoneytobangladesh.com. Also on August 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. The Panel has issued 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
Complainant asserts trademark rights in the term SENDMONEY2BANGLADESH.COM and alleges that the disputed domain name is confusingly similar, if not identical, to that term.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that Complainant provides money transfer services to people throughout the world and that at the time of the Complaint the disputed domain name was parked.
Paragraph 4(a) of the Policy requires that Complainant must 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
(1) the domain name has been registered and is being used in bad faith.
Respondent's failure to submit a response entitles the Panel to proceed on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and to draw such (negative or otherwise) inferences it considers appropriate pursuant to paragraph 14(b) of the Rules, but it nonetheless remains Complainant’s burden to make its case under paragraph 4(a).
In particular, Complaint must in order to satisfy paragraph 4(a)(i) of the Policy establish that it has rights in a trademark and demonstrate that the disputed domain name is either identical or confusingly similar to that trademark.
For the purposes of paragraph 4(a)(i) a complainant can establish rights in a trademark by providing evidence of either the complainant’s registration of the trademark with a national trademark authority, or by providing evidence of the accrual of so-called common law trademark rights through continuous and ongoing use. In other words, the Policy does not distinguish between registered and unregistered trademark rights (see, generally, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006); Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003); Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) and Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)).
There is no proof of registered trademark rights in SENDMONEY2BANGLADESH.COM or any similar term. Complainant must therefore show a substantial level of use and reputation of that term to prove common law rights.
Although Complainant was incorporated in 2000 and seems on the evidence to enjoy a thriving business, there is no clear evidence that it is recognized by the name SENDMONEY2BANGLADESH.COM. Complainant asserts that it owns the domain name <sendmoney2bangladesh.com> which it registered on June 26, 2012 however Complainant owns numerous domain names which it uses in connection with its business, each varying principally by country name. In particular, the evidence is that its business model includes the use of multiple domain names prefixed by either “REMIT2” or “SEND MONEY2”, followed by a country name.
Panel makes these observations. The evidence of repute is non-specific. It may relate wholly to Complainant’s corporate name. There is no clear evidence that the domain names function as trademarks. To the extent that Complainant may own and use multiple registrations all prefixed by the term “SENDMONEY2”, there is no clear evidence that these purely descriptive words have raised themselves to a level deserving protection as a common law trademark. Moreover, the very recent timing of the SENDMONEY2BANGLADESH.COM domain name registration would point against the existence of substantial use of that term or of a trademark corresponding with that name.
Panel refers to Question 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition found at http://www.wipo.int/amc/en/domains/search/overview2.0/index.html which asks: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” in answer to which it is said that:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
Complainant has not provided any clear evidence to show common law rights in the SENDMONEY2BANGLADESH.COM pursuant to paragraph 4(a)(i). Accordingly, Panel finds that Complainant has failed to establish the first element of the Policy.
No findings required (see, for example, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of paragraph 4(a)(i)).
No findings required for the same reasons.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sendmoneytobangladesh.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: September 18, 2012
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