Western Union Holdings, Inc. v. Omar Sanz
Claim Number: FA2102001930721
Complainant is Western Union Holdings, Inc. (“Complainant”), represented by Elizabeth Cohen of Arent Fox LLP, District of Columbia, USA. Respondent is Omar Sanz (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <westernunion2.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.
James Bridgeman SC, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2021; the Forum received payment on February 3, 2021.
On February 03, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <westernunion2.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 February 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2021 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@westernunion2.com. Also on February 4, 2021, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it has rights in the WESTERN UNION trademark established through its ownership of its portfolio of trademark registrations described below and the extensive use of the mark in its financial services busines since at least as early as 1856. Complainant has since grown to have a network of over 550,000 retail agent locations offering the company’s branded services in more than 200 countries and territories worldwide and its online services are available on its website at <www.westernunion.com> in over 75 countries.
Complainant submits that the disputed domain name is confusingly similar and almost identical to its WESTERN UNION mark. The disputed domain name merely adds the number “2” after Complainant’s famous name and mark and so Respondent has therefore registered and is using a domain name that falsely suggests that the services promoted at the website to which the disputed domain name resolves are provided by or affiliated with Complainant.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not named or commonly known as WESTERN UNION, nor is Respondent licensed or authorized to use the WESTERN UNION mark in this manner.
Complainant adds that based upon the fame of the WESTERN UNION marks, Complainant’s trademark registrations, Respondent’s registration of the disputed domain name long after the WESTERN UNION marks were registered and had become famous, Respondent’s use of the disputed domain name with a commercial web site that uses the WESTERN UNION marks and logo to falsely suggest that Complainant is providing the fraudulent commercial services, Respondent cannot in good faith claim that he had no knowledge of Complainant’s rights in its very famous marks, or that Respondent made a legitimate non-commercial or fair use of the disputed domain name.
Complainant further alleges that the disputed domain name was registered and is being used in bad faith, referring to the WhoIs record that shows that the disputed domain name was created on June 8, 2020, long after Complainant’s WESTERN UNION marks were first used and registered. Citing Western Union Holdings, Inc. v. Click Search, FA0701000890725 (Forum Feb. 20, 2007) (ordering transfer to Western Union of “westerunion.com” and finding that “Complainant, Western Union Holdings, Inc., has continuously and extensively used the WESTERN UNION mark since 1856 in connection with communication and financial services” and that “Complainant holds over 900 trademark registrations for the WESTERN UNION mark and numerous variations with trademark authorities around the world”).
Referring to a screenshot of the website to which the disputed domain name resolves, which was submitted as an exhibit in an annex to the Complaint, Complainant adds that Respondent is deemed to at least have had constructive knowledge of Complainant’s rights from its portfolio of trademark registrations.
Complainant contends that, given the fame of the WESTERN UNION marks, the disputed domain name can only be construed as an obvious combination of the WESTERN UNION mark with the number “2”, and because Respondent is referring to, and using Complainant’s name, marks and logo on the associated web site, it is undeniable that Respondent had actual knowledge of Complainant’s rights when the disputed domain name was registered.
Complainant further contends that the disputed domain name was registered for the sole purpose of profiting from the consumer confusion that would be created by this unauthorized use of the WESTERN UNION marks and submits that such actions constitute a bad faith registration of the domain name.
Again referring to the screenshot of the website to which the disputed domain name resolves, at <westernunion2.com>, Complainant argues that the website falsely claims to be operated by Complainant and attempts to deceive consumers into using bitcoin currency to wire money to third parties.
Complainant argues that Respondent’s site is commercial in nature and makes use of Complainant’s marks to deceive and defraud consumers who believe that the site and services are operated by Complainant. Complainant submits that such commercial use of the disputed domain name in this manner by Respondent, violates Policy ¶ 4(b)(iii) and (iv).
Complainant submits that arbitrators appointed under the Policy have consistently and repeatedly held that it is a violation of the Policy for a third party to combine a trademark with a number in a domain name, citing for example Capital One Financial Corp. v. Vitalyu, FA1611001702472 (Forum Dec. 14, 2016) (ordering transfer of “capitaloneplus2.loan”); Amazon Technologies, Inc. v. Kayla Staley et al., FA1611001701041 (Forum Dec. 19, 2016) (ordering transfer of “amazonshippingcenter01.com” and others).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark WESTERN UNION which it uses in providing a wide range of financial services and for which it owns a number of registrations including
· United States registered service mark, WESTERN UNION, registration number 1818161 registered on the Principal Register on January 25, 1994 for services in international class 36; and
· United States registered service mark WESTERN UNION (Design), registration number 1825436, registered on the Principal Register on March 8, 1994 for services in international class 36.
Additionally, Complainant is the owner of United States service mark [IMAGE OMITTED: WESTERN UNION LOGO], registration number 4436020, registered on the Principal Register on November 19, 2013 for services in international class 36.
Complainant has an established Internet presence and maintains its principal website at <westernunion.com>
The disputed domain name <westernunion2.com> was registered on June 8, 2020 and resolves to a website that purports to offer financial services, inter alia purporting to facilitate the use of bitcoin currency by Internet users for international money transfer to third parties. Respondent’s website prominently displays Complainant’s abovementioned United States service mark registration number 4436020 as a logo as a banner on its webpages.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
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."
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
(3) the domain name has been registered and is being used in bad faith.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided clear, convincing and uncontested evidence that it has rights in the WESTERN UNION trademark acquired through its ownership of its portfolio of trademark registrations described above and long and extensive use of the mark in its financial services busines since at least as early as 1856. Complainant’s goodwill and reputation is reflected in its network of over 550,000 retail agent locations in more than 200 countries and territories worldwide and the online services that it offers on its website at <www.westernunion.com> in over 75 countries.
The disputed domain name consists of Complainant’s WESTERN UNION service mark in its entirety with the mere addition of the number “2” in combination with the generic Top-Level Domain (“gTLD”) extension <.com>.
Complainant’s WESTERN UNION service mark is the dominant and only distinctive element in the disputed domain name. Neither the number “2” nor the gTLD <.com> extension add any distinguishing character to the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the WESTERN UNION mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an unanswered prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
It is well established that once a complainant makes out a prima facie case that a respondent has not rights or legitimate interests in a domain name, the burden of production shifts to the respondent to establish such rights. Respondent has failed to discharge the burden of production and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The WESTERN UNION mark is well known and distinctive and it is improbable that the registrant was unaware of Complainant, its name, mark and reputation when the disputed domain name was registered.
This finding is supported by the fact that Respondent uses the disputed domain name as the address of a website that presents itself as being owned, controlled or maintained by Complainant, prominently displaying Complainant’s registered trademark in the banner, generally impersonating Complainant while purporting to offer Complainant’s financial services to unsuspecting Internet users.
When used in combination of the element “westernunion” the number “2” in the disputed domain name would in probability go unnoticed.
This Panel finds therefore that the disputed domain name was registered in bad faith in order to take predatory advantage of Complainant’s name, mark and reputation in order to attract and divert Internet traffic to a fake website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services that Respondent purports to offer while impersonating Complainant.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to be granted the relief requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <westernunion2.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC,
Panelist
Dated: March 4, 2021
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