national arbitration forum

 

DECISION

 

Western Union Holdings, Inc. v. Domain Drop S.A.

Claim Number: FA0704000971146

 

PARTIES

Complainant is Western Union Holdings, Inc. (“Complainant”), represented by Bradley E. Prendergast, of Sutherland Asbill & Brennan LLP, 1275 Pennsylvania Avenue NW, Washington, DC 20004.  Respondent is Domain Drop S.A. (“Respondent”), P.O. Box 556, Main Street, Charlestown, West Indies KN.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <quickfindwesternunion.com>, registered with Domaindoorman, LLC.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2007.

 

On April 26, 2007, Domaindoorman, LLC, confirmed by e-mail to the National Arbitration Forum that the <quickfindwesternunion.com> domain name is registered with Domaindoorman, LLC, and that Respondent is the current registrant of the name.  Domaindoorman, LLC, has verified that Respondent is bound by the Domaindoorman, LLC, 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 April 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 17, 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 postmaster@quickfindwesternunion.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a globally recognized funds transfer service, whose product offerings include money transfers, electronic funds transfers, and bill payment services. 

 

Complainant employs the WESTERN UNION mark in promoting its communication and financial services worldwide. 

 

In connection with its offerings of such goods and services, Complainant has registered numerous trademarks and service marks with the United States Patent and Trademark Office (“USPTO”), including the service mark WESTERN UNION (Reg. No. 1,818,161, issued January 25, 1994). 

 

Complainant has actively and continuously promoted its WESTERN UNION mark through extensive marketing activities, including print, radio, Internet, and television advertising campaigns.

 

The term “quickfind” describes an online tool associated with Complainant’s WESTERN UNION QUICK COLLECT bill payment service.

 

Complainant has used the “quickfind” term in connection with its WESTERN UNION mark since at least 2002. 

 

Complainant operates a website at the domain name <quickfind.westernunion.com>.

Respondent is not authorized to use Complainant’s WESTERN UNION mark.

 

Respondent registered the contested domain name, <quickfindwesternunion.com>, on February 12, 2006. 

 

Respondent’s domain name resolves to a website displaying a series of links to third-party sites, many of which are direct financial services competitors of Complainant.

 

Respondent’s <quickfindwesternunion.com> domain name is confusingly similar to Complainant’s WESTERN UNION mark.

 

Respondent does not have any rights or legitimate interests in the domain name <quickfindwesternunion.com>.

 

Respondent registered and uses the <quickfindwesternunion.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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."

 

In view of 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 draw such inferences it 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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Through its registration with the USPTO, Complainant has established rights in the WESTERN UNION mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” 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.”

 

Respondent’s <quickfindwesternunion.com> domain name employs Complainant’s WESTERN UNION mark in its entirety, with the mere addition of the descriptive term “quickfind.”  On the record before us, it is undisputed that “quickfind” is associated with an online tool operated in connection with Complainant’s WESTERN UNION QUICK COLLECT bill payment service, and that Complainant has used the term “quickfind” in connection with its WESTERN UNION mark since at least 2002.  Moreover, it is also undisputed that Complainant operates a website at <quickfind.westernunion.com>.  These facts and circumstances create a likelihood of confusion between Complainant’s mark and the <quickfindwesternunion.com> domain name.  Accordingly, the coupling of Complainant’s WESTERN UNION mark with a descriptive term closely related to Complainant’s business makes the domain name confusingly similar to the mark under Policy ¶ 4(a)(i).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to a complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which that complainant engaged, does not take the disputed domain name out of the realm of confusing similarity); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002): “Complainant has the right to protect its trademark whether standing alone, or included in a string of industry-related marks. Respondent’s inclusion of other drug-related marks [in the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name] only increases the likelihood that confusion will result from use of the domain name.” Finally, the addition of the “.com” generic top-level domain to Respondent’s domain name is insufficient to distinguish Respondent’s <quickfindwesternunion.com> domain name from Complainant’s WESTERN UNION mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).

 

The Panel therefore finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights or legitimate interests in the <quickfindwesternunion.com> domain name.  It is incumbent upon Complainant to make out a prima facie showing demonstrating Respondent’s lack of rights or legitimate interests in the disputed domain name.  Once Complainant has made this initial showing, the burden shifts to Respondent to provide evidence that it has rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002): “Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”  See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

 

Because of Respondent’s failure to respond to Complainant’s allegations, the Panel may infer that Respondent holds no rights or legitimate interests in the domain name <quickfindwesternunion.com>.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002): “Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”  See also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate its rights or legitimate interests in a domain name).  However, the Panel will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

In this connection, we first note that Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use Complainant’s WESTERN UNION mark.   Moreover, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <quickfindwesternunion.com> domain name.  Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003): “Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.” See also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (identifying the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as a factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Further, it is undisputed that Respondent’s <quickfindwesternunion.com> domain name resolves to an array of third-party links, many of which are in direct competition with the business of Complainant.  We may infer from this that, given the likelihood of confusion between Complainant’s WESTERN UNION mark and the disputed domain name, Respondent is attempting to benefit commercially by collecting click-through fees as Internet users pass through Respondent’s site.  Such use by Respondent does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links, some of which resolved to that complainant’s competitors, was not a bona fide offering of goods or services); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites unrelated to a complainant, and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in that domain name); further see Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

 

The Panel thus finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

On the facts before us, we may infer that Respondent’s use of the disputed domain name to resolve to a website linking Internet users to third-party products and services is intended to capitalize on the likelihood of confusion with Complainant’s WESTERN UNION mark in an attempt to generate click-through fees, conferring commercial gain on Respondent.  Such use by Respondent constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” See also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that a disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through a respondent’s registration and use of the domain name intentionally to attempt to attract Internet users to its fraudulent website by using a complainant’s famous marks and likeness).

 

In addition, it appears that Respondent registered the <quickfindwesternunion.com> domain name with at least constructive knowledge of Complainant’s rights in the WESTERN UNION service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office.  Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).

 

For these reasons, the Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <quickfindwesternunion.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  May 29, 2007

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum