remithome Corporation v.
Samar Pupalla a/k/a TimesofMoney Ltd. a/k/a Times Online Money ltd
Claim Number: FA0712001124302
PARTIES
Complainant is remithome Corporation (“Complainant”), represented by A.
Dennis Reis,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <remit2home.com> and <remit2home1.com>,
registered with Net 4 India Limited.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On January 11, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 31, 2008 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 postmaster@remit2home.com and
postmaster@remit2home1.com by e-mail.
A timely Response was received on
Complainant submitted a timely Additional Submission on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <remit2home.com> and <remit2home1.com> domain names are confusingly similar to Complainant’s REMITHOME mark.
2. Respondent does not have any rights or legitimate interests in the <remit2home.com> and <remit2home1.com> domain names.
3. Respondent registered and used the <remit2home.com> and <remit2home1.com> domain names in bad faith.
B. Respondent makes the
following assertions:
1. Respondent’s <remit2home.com> and <remit2home1.com> domain names are not confusingly similar to Complainant’s REMITHOME mark, because the terms therein are descriptive and because Respondent offers broader services than Complainant.
2. Respondent has rights and legitimate interests in the <remit2home.com> and <remit2home1.com> domain names primarily because they are the natural extension of Respondent’s brand “remit2india.”
3. Respondent has not registered and used the <remit2home.com> and <remit2home1.com> domain names in bad faith, “apparent from the very fact that the Respondent has been operating with the disputed domain names since December 18, 2006.”
C. In its Additional Submission,
Complainant submitted further proof of actual customer confusion. Complainant argues that “remit2home” is not a
natural extension of Respondent’s alleged branding pattern. Finally, Complainant states that Respondent’s
deliberate use of Complainant’s exact mark REMITHOME to drive traffic to its
websites and to promote itself in the website is additional evidence of bad
faith.
Procedural Issue: Deficient Response
The
Panel notes that the Response was not
submitted using the correct template and that it exceeds the 15-page limit imposed by the National Arbitration Forum Rule #5(a). Thus, the Response is deficient pursuant to
ICANN Rule 5(b)(i). Therefore,
the Panel exercises its discretion and accords less weight to the
Response. The Panel has considered the
Response, in part due to the fact that Complainant was able to respond fully in
its Additional Submission. See
Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum
Specifically, the Panel declines to
consider Respondent’s “Counter Claim Form,” appended to the Complaint, alleging
Reverse domain name hijacking.
FINDINGS
Complainant holds the trademark rights to
registered mark REMITHOME, by virtue of an Assignment. USPTO Registration No. 2,955,690 shows a
first use date for the mark of
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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
Complainant’s rights in the REMITHOME mark date back to
Respondent’s <remit2home.com> and <remit2home1.com> domain names
are confusingly similar to its REMITHOME mark, as both disputed domain names
add the number “2” in the center of the mark, and the <remit2home1.com> domain name also adds the number “1” after
the mark. The addition of numbers to
Complainant’s REMITHOME mark do not render the disputed domain names distinct
from the mark. It is well-established
under the UDRP that top-level domains are irrelevant to the Policy ¶ 4(a)(i)
analysis. Therefore, the Panel concludes
that the <remit2home.com> and <remit2home1.com> domain names
are confusingly similar to Complainant’s REMITHOME mark pursuant to Policy ¶
4(a)(i). See Am. Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding
that the respondent’s domain name <go2AOL.com> was confusingly similar to
the complainant’s AOL mark); see also Am. Online Inc. v. Chinese ICQ Network,
D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in
the domain name <4icq.com> does nothing to deflect the impact on the
viewer of the mark ICQ and is therefore confusingly similar).
The Panel rejects Respondent’s contention that
the <remit2home.com> and <remit2home1.com> domain names
are comprised of common, descriptive terms and as such cannot be found to be
identical or confusingly similar to Complainant’s REMITHOME mark, but also
finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this
portion of the Policy considers only whether Complainant has rights in the mark
and whether the disputed domain names are identical or confusingly similar to
Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7,
2007) (finding that because the complainant had received a trademark
registration for its VANCE mark, the respondent’s argument that the term was
generic failed under Policy ¶ 4(a)(i));
see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat.
Arb. Forum
The Panel also rejects Respondent’s notion that its
allegedly broader services somehow make the domain names distinct and therefore
not confusingly similar to Complainant’s mark REMITHOME. Indeed, there was ample proof of actual
customer confusion in the record.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The Panel finds that Complainant
has set forth a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Therefore, the burden shifts to Respondent to
show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent
to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
While the WHOIS information for the disputed domain names does not indicate that the registrants are identical entities, Complainant asserts, and Respondent does not deny, that the entities are the same and that Respondent is responsible for both disputed domain names. There is no evidence in the WHOIS record to indicate that Respondent is commonly known by the <remit2home.com> or <remit2home1.com> domain names. Complainant has not given Respondent permission to use its REMITHOME mark for any purpose. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
It appears that Respondent has trademark registrations
in India for “REMIT2INDIA.COM” and variants thereof, with filing dates ranging
from 2000 to 2007, though it is not clear if or when each of them were first
used commercially. Respondent
argues that it uses “remit2india” as a brand and that the <remit2home.com> and <remit2home1.com>
domain names are the natural extension of its branding strategy. Complainant counters that the more likely natural
extension of Respondent’s alleged branding strategy is the use of “remit2” with
various country names. The Panel finds
that Respondent did not provide evidence that it used either branding strategy.
Rather, Respondent showed its use of “remit2india” and “window2india” and
provided abundant evidence of its primary identification as “Times of Money.”
Respondent boasted of its own marketing
agency, presumably savvy in the Internet marketing arena, with a multi-million
dollar budget for advertising for each of the years 2001 to 2007. Respondent also submitted evidence that it
had a “Usability Analysis For www.remit2home.com” conducted by an outside
agency in May of 2007, but only provided a one page “Executive Summary” from
that report, which simply offered “insights for delivering a great customer
experience on remit2home.com.” It is
implausible to this Panel that Respondent did not know, at that time, that its
proposed use of the disputed domain names would infringe on a major
competitor’s registered trademark, already in use for almost four years. In fact, the record does not show that
Respondent ever did use the disputed domain names for the “branding” that it
alleges, but rather simply used the domains to redirect traffic to a website
comprising their actual business name, Times of Money.
Respondent is Complainant’s competitor in
the online global remittance market, particularly in the
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent had actual or constructive knowledge of Complainant’s rights in the REMITHOME mark prior to registering the <remit2home.com> and <remit2home1.com> domain names, evidence that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
By using Complainant’s registered
mark in its entirety in the <remit2home.com> and <remit2home1.com>
domain names to offer competing remittance services, Respondent is creating
a likelihood that Internet users will be confused as to the source of the
disputed domain names and Complainant’s possible affiliation with the
corresponding website. Respondent
profits from this website, and is thus taking commercial advantage of this
likelihood of confusion, indicating Respondent’s bad faith registration and use
under Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum
Respondent’s <remit2home.com> and <remit2home1.com>
domain names resolve to a website offering online remittance services in
direct competition with Complainant, thereby disrupting Complainant’s business,
which is further evidence of bad faith registration and use under Policy ¶
4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between the complainant and the respondent, the respondent likely
registered the contested domain name with the intent to disrupt the
complainant's business and create user confusion); see also
Finally, Complainant submitted evidence that Respondent uses Complainant’s exact mark REMITHOME on its websites, in connection with marketing its remittance services, and specifically as a keyword in its Google online search terms, which further demonstrates to this Panel that Respondent is intentionally trading off the value of Complainant’s mark in bad faith.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <remit2home.com>
and <remit2home1.com> domain names be TRANSFERRED from
Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 21, 2008
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