Travelers
Express Co. Inc. v. Craig Satinoff D. C.
Claim Number:
FA0312000221172
PARTIES
Complainant is
Travelers Express Co. Inc. (“Complainant”) represented by Paul D.
McGrady, Jr. of Ladas & Parry, 224 South Michigan Avenue,
Chicago, IL 60604. Respondent is Craig
M. Satinoff D. C. (“Respondent”), 8994 Raft Street, Pembroke Pines, FL
33024.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain
name at issue is <money-gram.com>, registered with Tucows, Inc.
PANEL
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.
William H.
Andrews as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 22, 2003; the Forum received a hard copy of the
Complaint on December 22, 2003.
On December
23, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <money-gram.com>
is registered with Tucows, Inc. and that the Respondent is the current
registrant of the name. Tucows, Inc.
has verified that Respondent is bound by the Tucows, Inc. registration
agreement and has thereby 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
30, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 19,
2004 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@money-gram.com by e-mail.
A timely
Response was received and determined to be complete on January 19, 2004.
A timely
Additional Submission was received from Complainant and was determined to be
complete on January 23, 2004.
A timely Additional
Submission was received from Respondent and was determined to be complete on
January 26, 2004.
On January 29,
2004, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed William H. Andrews as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to
Complainant. Respondent seeks a finding
of reverse domain‑name hijacking against Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Complainant
contends it has rights to the mark, MONEYGRAM in several variations. Complainant is the owner of applications and
registrations for trademarks on the MONEYGRAM name in the United States and
around the world. The MONEYGRAM mark is
registered in the United States, with the first such registration coming in
January, 1998. Most of the MONEYGRAM
marks cover money transfer services, a business in which Complainant is
engaged. Complainant and its affiliates
have used the MONEYGRAM mark in commerce and first attempted to register the
mark in the United States in 1940.
Complainant contends that the domain name Respondent has registered is
confusingly similar to Complaint’s mark; that Respondent has no rights or
legitimate interest in connection with its use of the mark, and that Respondent
registered and used the domain name in bad faith. As evidence of bad faith, Complainant submitted the affidavit of
its legal counsel to suggest that Respondent refused an offer to allow Complainant
to purchase the domain name for Respondent’s out-of-pocket costs. Complainant also alleged that the domain
name is listed “for sale” on <domain systems.com>, and that Respondent
attempted to “mask” his true identity as the registrant of the domain
name. Complainant requests that the
domain name be transferred due to Respondent’s violation of ICANN rules and
policy.
B. Respondent
Respondent
contends that Complainant has failed to carry its burden of proof under the
Policy. Respondent argued that
Complainant has no rights in the mark, claiming that the terms are generic and
a part of general usage. Respondent
argues primarily that there is no evidence of bad faith. Respondent alleges that it was unaware of Complainant
until July, 2003, long after the domain name had been registered by Respondent. Respondent contends that he never offered
the domain name for sale, but rather that he was contacted by Complainant. Respondent denied the allegations set forth
in Complainant’s counsel’s affidavit.
Respondent further stated that he never intended to sell the domain name
for a profit, and that he initially intended to use the name in connection with
an online gift business, which is, in no way, competitive with
Complainant. Respondent alleged that
Complainant has engaged in reverse domain name hijacking by failing to include
e-mail correspondence from Respondent to Complainant following the parties’
telephone conversation in July, 2003 and suggests that the allegations
contained in counsel’s affidavit are false.
C. Additional
Submissions
Both parties
forwarded Additional Submissions for the Panel’s consideration. Both submissions were timely and were duly
considered by the Panel in reaching its decision. Complainant contends that certain of its marks enjoy
incontestable status, through years of use and again submits that it has rights
in the MONEYGRAM name through its numerous registrations and applications. Complainant notes that Respondent has never
been known by the MONEYGRAM name and that Respondent is making no legitimate
non-commercial uses of the name. Complainant also argues that Respondent’s
failure to put the domain name to use and his rejection of Complainant’s offer
to reimburse Respondent’s expenses constitute ample evidence of Respondent’s
“bad faith.”
In his
supplemental response, Respondent again alleges that Complainant has submitted
no evidence of bad faith. According to
Respondent, Complainant has attempted to “manufacture” evidence through
submission of an affidavit and Respondent contends there is no evidence as to
whether he accepted or rejected Complainant’s offer for reimbursement.
FINDINGS
Complainant,
its affiliates and agents are involved in money transfer and other financial
services. Complainant and its
affiliates are the owners of numerous applications and registrations for
trademarks of the term MONEYGRAM.
MONEYGRAM was first registered with the U.S. Patent and Trademark Office
(“USPTO”) on January 13, 1998, and the term was used in commerce as early as
January, 1988. Other variations of the
MONEYGRAM name and logo have subsequently been registered after 2000.
Respondent
registered the domain name <money-gram.com> on March 5, 2000. The WHOIS directory initially listed
Domainsystems.com as the registrant of the name. Respondent has not used the MONEYGRAM name and has not shown
evidence of any demonstrable preparations to use the name in commerce or for
any purpose.
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.
Complainant
alleges that the domain name, <money-gram.com> is confusingly similar to the MONEYGRAM
mark in which Complainant claims to have rights. Complainant has introduced evidence linking its affiliates to
numerous registrations of the MONEYGRAM mark across several countries including
the United States. The ICANN Policy
does not require Complainant to demonstrate exclusive rights to the mark, but
Complainant must show a bona fide interest.
On the basis of the submissions, the Panel concludes that Complainant
does have an interest in the mark.
Respondent does not challenge Complainant’s link to the marks, but
instead alleges that the terms “money” and “gram” are generic and that
Complainant therefore has no rights to the mark, in part because the terms have
been used by others. Whether or not the
term has been used by others is not at issue here. In any event, many of the documents set forth to establish other
uses of the term “moneygram” appear to be related to or linked with Complainant
and its affiliates. Complainant does
have an interest in the mark by virtue of the numerous registrations and prior
use in commerce through money transfer services. The domain name <money-gram.com> is nearly identical to Complainant’s
mark. The mere addition of a hyphen
does not distinguish the domain name from the registered mark. (See Teleplace, Inc. v. De
Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000), where the Panel found
that the domain name tele-place.com was confusingly similar to Complainant’s
TELEPLACE trademark).
Finding
that Complainant has demonstrated rights to the MONEYGRAM mark, the next issue
is whether Respondent has any rights or legitimate interests in the mark
himself. Respondent has set forth no
evidence establishing any rights or legitimate interest to use of the name
“moneygram.” There is no evidence that
Respondent has ever been known by that name, or that Respondent ever made a
legitimate non-commercial use of the name or that Respondent has made any
demonstrable preparations to use the domain name in connection with a bona fide
offering of goods and services, all factors that, pursuant to the Policy, could
establish Respondent’s legitimate interest.
Respondent contends he planned to use the site for a gift-type website
business. Respondent’s designation in
Annex 4, submitted to indicate the type of business Respondent conceptualized,
does not establish any demonstrable attempt to use the website for that
purpose. To the contrary, Complainant’s
submissions show that the website is and has been listed “For Sale.” Respondent claims he registered the domain
name on April 15, 1999, and Complainant alleges that the registration was in
March, 2000. In any event, Respondent
registered the domain name at least three years ago and has made no use of
it. Respondent’s passive holding does
not establish rights or legitimate interest in the name, MONEYGRAM. See Am. Home Prod. Corp. v. Malgioglo,
D2000-1602 (WIPO Feb. 19, 2001)(finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent merely passively
held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat.
Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be
found when Respondent fails to use the disputed domain names in any way).
The
central argument concerns the issue of whether or not “bad faith” was
evident.
Four
non-exclusive factors are indicative of “bad faith” pursuant to the
Policy. Complainant has focused its
argument on Policy ¶ 4(b)(i) which states that the following shall be evidence
of bad faith: “circumstances indicating
that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain
name.”
Complainant contends that Respondent
attempted to sell the domain to Complainant for a price in excess of
out-of-pocket costs. As noted, an
attempt to sell a domain name in excess of out-of-pocket costs can be
considered evidence of bad faith pursuant to the Policy. Complainant submitted an affidavit from
counsel stating, in effect, that Respondent rejected an offer of out-of-pocket
expenses, demanding payment of sums in excess of his out-of-pocket
expenses. (Aff’d, par. 4). Respondent contends, among other things,
that this evidence should not be considered indicative of bad faith because
Complainant contacted him. But See
Marrow v. iceT.com, D2000-1234 (WIPO November 22, 2000)(stating that the
Panel should not “put much weight on the fact that it was the Complainant who
contacted Respondent to see if it was interested in selling the domain
name). In his additional submission,
Respondent cites Minnesota Mining and Mfg. Company v. Mark Overby,
D2001-0727 (WIPO Oct. 2001) in support of his position. In Minnesota Mining, however, the
panel found that an offer of actual out-of-pocket costs was never made. Complainant had offered the original costs
but did not take renewal costs into consideration when it made an offer for a
specific dollar amount. The panel also
concluded that Respondent did not make any offer to sell, but simply stated a
basis for rejecting the original proposal.
The present case is distinguishable.
Complainant’s affidavit indicates that an offer of out-of-pocket
expenses was made, and that Respondent made a specific counter-offer of $2,000
by telephone. The allegations made in
the affidavit relating to a phone call in July, 2003, are not controverted in a
corresponding affidavit from Respondent and Respondent’s submission of his
e-mail response to counsel’s August 15 letter does not indicate that the
alleged conversation never took place or that the $2,000 offer was not made.
In any event, the Panelist notes that the
four factors set forth in the Policy are not exclusive, and other circumstances
can indicate “bad faith” in a particular situation.
Although Respondent alleges he had no
notice of Complainant’s rights in the mark, Complainant submitted evidence of
registration of the mark as early as 1998, and there are indications that the
mark has been used in commerce since 1988.
Complainant stated that it first attempted to register the mark in 1940
and that the mark is famous and widely known across the globe. Respondent registered the domain name after
Complainant’s usage of the mark in commerce and after Complainant’s application
for registration of the mark.
Respondent should have been aware, at least constructively, of
Complainant’s rights to the mark. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)(“there is
a legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively). Complainant also contends that Respondent
attempted to “mask” his identity, by providing false WHOIS information. A WHOIS inquiry by Complainant revealed that
DomainSystems.com was the Registrant of <money-gram.com>.
Respondent argues that it had nothing to do with such a listing and that
there was no intentional attempt to mask his identity. In any event, Domain Systems is in the
business of selling domain names among other things. An excerpt of a website search shows that <money-gram.com> is listed “for sale” on a Domain Systems
site. Although Respondent says he never
offered the <money-gram.com> domain
name for sale, he, as owner, should be ultimately responsible for content
listing the name for sale.
Respondent has not developed a website
for the <money-gram.com>
domain name for over three years. There
is no evidence to suggest demonstrable preparations to use the site by
Respondent. The Panel finds that this
lack of activity constitutes a passive holding and the same permits an inference
of bad faith under the Policy. See
Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)(finding
that Respondent made no use of the domain name or website that connects with
the domain name, and that passive holding of a domain name permits an inference
of registration and use in bad faith).
The inference of bad faith from this passive holding has not been
rebutted.
In sum, the Panelist concludes that past
registration and usage of the MONEYGRAM mark should have put Respondent on
notice of Complainant’s interest in the mark, and the fact that the domain name
has been put to no use by Respondent for more than three years and was offered
“for sale” by Domains.com, the original entity listed as the Registrant of the
name, permits a finding of “bad faith” in this instance.
Reverse Domain Name Hijacking
Respondent contends that Complainant
committed reverse domain name hijacking by submitting false information or
neglecting to include information that was contrary to the facts Complainant
asserted. Respondent, however, has not
shown that it has an unassailable interest in the domain name and Respondent
has failed to prove its allegations that Complainant’s evidence was fabricated. Respondent contends that Complainant’s
submission of portions of e-mail correspondence was deceptive. However, the e-mail correspondence submitted
by Respondent does not deny the contents of the telephone conversation between
the parties. Because of the foregoing
and because the Panel has concluded that the domain name should be transferred,
Respondent’s claim of Reverse Hijacking is hereby DENIED.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the relief sought by
Complainant shall be GRANTED.
The Panel finds that Respondent’s claim
of Reverse Domain Name Hijacking is DENIED.
Accordingly, it is Ordered that the <money-gram.com>
domain name be TRANSFERRED from Respondent to Complainant.
William H. Andrews, PanelistDated: February 10, 2004
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