Travelers Express Company. Inc. v. N.J.
Industrial Research Center, Inc.
Claim Number: FA0402000234378
PARTIES
Complainant
is Travelers Express Company, Inc. (“Complainant”)
represented by Paul D. McGrady Jr., of Ladas & Parry,
224 South Michigan Avenue, Chicago, IL 60604.
Respondent is N.J. Industrial
Research Center, Inc. (“Respondent”) represented by Mohammad Hamzeh, 1059 Main
Avenue, Clifton, NJ 07011.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <moneygramsoftware.com>
and <moneygramprogram.com>, registered with Bulkregister, Inc.
PANEL
The
undersigned, Daniel B. Banks, Jr., 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 30, 2004; the Forum received a hard copy of the
Complaint on February 2, 2004.
On
February 4, 2004, Bulkregister, Inc. confirmed by e-mail to the Forum that the
domain names <moneygramsoftware.com> and <moneygramprogram.com> are registered with Bulkregister, Inc.
and that the Respondent is the current registrant of the names. Bulkregister, Inc. has verified that Respondent
is bound by the Bulkregister, 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
February 4, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 24, 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@moneygramsoftware.com
and postmaster@moneygramprogram.com by e-mail.
A
timely Response was received and determined to be complete on February 24, 2004.
A
timely Additional Submission was received from Complainant and was determined
to be complete on February 25, 2004.
On March 8, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Daniel B. Banks,
Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the owner of applications and registrations for trademarks which incorporate
the MONEYGRAM name in the United States and around the world. The first registration for the MONEYGRAM
mark was issued by the United States Patent and Trademark Office on January 13,
1998. Complainant claims to have filed
applications for registrations for the marks containing the element MONEYGRAM
as early as 1940 in the United States.
The MONEYGRAM marks represent to the worldwide consuming public the
goods and services offered by Complainant, namely electronic money funds
transfers. Due to extensive use and
registrations of the MONEYGRAM marks, these marks have become famous and have
obtained the status of notorious marks and enjoy liberal protection under the
Paris Convention.
The
dominant element MONEYGRAM appears in the offending domains with the addition
of the descriptive or generic words “software” and “program” which describe the
competing goods being offered by Respondent, namely software programs for the
electronic transfer of funds. The
offending domains promote Respondent’s “Money Transmit_V2” software which
competes directly with the goods and services offered by Complainant under its
MONEYGRAM mark. Complainant claims that
the disputed domain names are confusingly similar to Complainant’s mark; that
Respondent has no rights or legitimate interests in the mark; and that
Respondent registered and used the domain names in bad faith. With respect to the allegations that
Respondent has no rights or legitimate interests in the domain names, Complainant
asserts that Respondent has no trademark or other intellectual property rights
in the offending domains; that the domain names are not the legal name of
Respondent; that Respondent has made no lawful use of the offending domains
and, that Respondent is not commonly known under the domain names. With respect to the allegations of bad
faith, Complainant contends that Respondent knew of the registrations and
expansive use of the trademark prior to registering the domain names due to
pre-existing applications and registrations for the MONEYGRAM mark. Also, using Complainant’s MONEYGRAM mark to
promote competing software programs for the electronic transfer of funds could
only be considered an intentional imitation of Complainant’s mark. Respondent intended to obtain the offending
domains for the sole purpose of using them in conjunction with goods which
compete directly with the goods and services offered by Complainant through
confusing and diverting potential customers.
Finally, it is clear that Respondent registered the offending domains
primarily for the purpose of intentionally attempting to attract, for
commercial gain, Internet users to its websites, by creating a likelihood of
confusion with Complainant’s mark as to source, sponsorship, affiliation of
endorsement of its website and its products offered by its website.
B.
Respondent
Respondent
admits that Complainant has registered MONEYGRAM as a service mark but contends
that the mere registration of a descriptive term in widespread use as a service
mark cannot confer any exclusive ownership privileges. MONEYGRAM is a descriptive name for money
transmit service and the additions of the words “software” and “program”
completely changes the meaning of the name.
It constructs a new descriptive name that represents a software
product. The disputed domain names
sound different, look different and have different meanings from the name
MONEYGRAM. Complainant alleges that it
filed applications for the registrations for the marks as early as 1940; however,
the documents that they have provided show that their first application was
filed in 1994. Also, Complainant claims
that it has approximately 80,000 retail locations while its website and
database indicates the number is less than 5,000. Respondent is a research and development firm that specializes in
applications of computers and automation systems in different industries. Development of financial software and
programming for specific applications has been a major focus of Respondent
since 1990. Moneygram software has been
a product of Respondent since 1998. Respondent’s program records the money
order and then transmits the information to the destination office for payment
in office or home delivery. The
disputed domain names are used for promotion and sales of a software product
and not “electronic funds transfer service.”
Respondent is not a competing business as it does not provide the same
service as Complainant.
C.
Additional Submissions
In
its additional submission, which was considered by the Panelist, Complainant
points out two typographical errors in the Complaint. First, the date of first attempted registration should read
“1994” and not “1940.” Second, the
Complaint should read that Complainant “has approximately 60,000 authorized
agents in the United States and around the world.” Regarding the pertinent issues, the bulk of Respondent’s Response
is an attempt to claim that the MONEYGRAM mark is a mere amalgamation of two
generic words and that Complainant’s trademark rights do not exist in the
United States. Respondent made
identical arguments in a prior panel decision involving the MONEYGRAM mark and
in that case, the panel was not persuaded.
See Travelers Express Co.
v. Craig Satinoff D.C., FA 221172
(Nat. Arb. Forum Feb. 10, 2004) (holding that while the respondent “…
alleges that the terms “money” and “gram” are generic and that Complainant
therefore has no rights in the mark …” the complainant “does have an interest
in the mark by virtue of the numerous registrations and prior use in commerce
through money transfer services.”).
Respondent raises no arguments tending to show rights to the domain
names. Instead, Respondent admits that
the domain names are used to promote its “Money Transmit V2” software, which
allows a user to send their own electronic funds transfers rather than using
Complainant’s services. This is an
admission of infringing behavior designed to misdirect consumers. Regarding bad faith use and registration,
Respondent’s argument that it had no idea that MONEYGRAM was a registered mark
is unusual given that Complainant’s rights are a matter of public record. Also, Complainant offers a list of
approximately 650 authorized MONEYGRAM agents in Respondent’s home state of New
Jersey. There can be little doubt that
Respondent knew of Complainant’s rights.
Respondent claims that it is not a competing business; however,
Respondent’s customers are direct competitors of Complainant. Registration and use of a domain name to
offer goods and services to those who compete directly with a registered
trademark owner cannot be construed as evidence of good faith.
FINDINGS
(1)
The disputed domain names are confusingly similar to a trademark or service
mark in which the Complainant has rights.
(2) Respondent has no rights or
legitimate interests in respect of the disputed domain names.
(3) The disputed domain names were
registered and are being used in bad faith.
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
has established rights in the MONEYGRAM mark through registration of the mark
with several trademark authorities across the world, including the U.S. Patent
and Trademark Office (“USPTO”).
Complainant holds several registrations for the MONEYGRAM mark with the
USPTO, including Reg. Nos. 2,127,954 and 2,484,700 (registered on January 13,
1998 and September 4, 2001, respectively).
The undersigned Panelist finds that Complainant has rights in the
MONEYGRAM mark. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that 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. Respondent has the burden
of refuting this assumption).
Furthermore,
Complainant contends that its mark is famous and has obtained the status of a
notorious mark and therefore enjoys liberal protection under the Paris
Convention.
The
domain names are confusingly similar to Complainant’s MONEYGRAM mark because
each domain name fully incorporates the mark and merely adds the generic word
“program” or “software.” The addition
of the generic words “program” and “software” is insufficient to distinguish
the domain names from Complainant’s mark.
See Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Am. Online, Inc. v. Anytime Online
Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that
Respondent’s domain names, which incorporated
Complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement,” did not add any
distinctive features capable of overcoming a claim of confusing similarity).
Moreover,
the addition of the generic top-level domain “.com” in the domain names is
irrelevant in determining whether the domain names are confusingly similar to
Complainant’s mark. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant).
Respondent
is not authorized or licensed to register or use domain names that incorporate
Complainant’s mark. Moreover,
Respondent is not commonly known by the domain names. The undersigned Panelist finds that Respondent lacks rights and
legitimate interests in the domain names pursuant to 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) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
Respondent
is using the domain names to offer goods and services that compete with those
offered by Complainant. Respondent’s
competitive use of domain names that are confusingly similar to the MONEYGRAM
mark is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark
to market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008
(Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of
Complainant, had no rights or legitimate interests in a domain name that
utilized Complainant’s mark for its competing website); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding
that Respondent had no rights or legitimate interests in the disputed domain
name where it used Complainant’s mark, without authorization, to attract
Internet users to its business, which competed with Complainant).
The
domain names are confusingly similar to Complainant’s mark, and Respondent is
using the domain names for commercial benefit.
Use of a domain name confusingly similar to another’s mark for
commercial benefit does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because Respondent's sole purpose in selecting the domain names was to
cause confusion with Complainant's website and marks, its use of the names was
not in connection with the offering of goods or services or any other fair
use); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003)
(holding that Respondent’s use of Complainant’s mark and the goodwill
surrounding that mark as a means of attracting Internet users to an unrelated
business was not a bona fide offering of goods or services).
In its
Additional Submission, Complainant refutes Respondent’s claim that the
MONEYGRAM mark is generic and therefore Respondent cannot claim rights and
legitimate interests in the domain names based on the theory that the mark is
generic. This issue has been previously
decided by a panel in the case of Travelers Express Co. v. Craig Satinoff
D.C., FA 221172 (Nat. Arb. Forum Feb. 10, 2004), in which the panel found
that the MONEYGRAM mark was not generic.
Respondent registered and used the domain names in
bad faith pursuant to Policy
¶ 4(b)(iii) because Respondent is using domain names that are confusingly
similar to Complainant’s mark for commercial gain and to compete with
Complainant’s business. See Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also Gen. Media Communications, Inc. v. Vine Ent.,
FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor
of Complainant registered and used a domain name confusingly similar to
Complainant’s PENTHOUSE mark to host a pornographic web site); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites).
Moreover,
Respondent registered and used the domain names in bad faith pursuant to Policy
¶ 4(b)(iv) because the domain names are confusingly similar to Complainant’s
mark and are used for commercial gain. See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using Complainant’s famous marks and
likeness); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
This
Panel finds that Respondent had actual or constructive knowledge of
Complainant’s mark because the mark is registered throughout the world, is
registered on the USPTO’s principal registry, is used within Respondent’s state
of residence (New Jersey) and Respondent uses the domain names to offer goods
and services that compete with Complainant’s business. Registration of a domain name confusingly
similar to a mark, despite knowledge of another’s rights, is evidence of bad
faith registration pursuant to Policy ¶ 4(a)(iii). 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”); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”); see also Victoria’s Cyber Secret
Ltd. P’ship v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072).
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 <moneygramsoftware.com>
and <moneygramprogram.com> domain names be TRANSFERRED from
Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: March 22, 2004
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