Western Union Holdings, Inc. v. Dylan Touhey / One Net Marketing Inc.
Claim Number: FA2105001944552
Complainant is Western Union Holdings, Inc. (“Complainant”), represented by Elizabeth Cohen of Arent Fox LLP, District of Columbia, USA. Respondent is Dylan Touhey / One Net Marketing Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <westernunionbusiness.com>, <westernunionedge.com>, <westernunionfx.com>, <usewesternunion.com>, <thewesternunion.com>, <westernunioneducation.com>, and <westernunionglobalpay.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2021; the Forum received payment on May 10, 2021.
On May 11, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <westernunionbusiness.com>, <westernunionedge.com>, <westernunionfx.com>, <usewesternunion.com>, <thewesternunion.com>, <westernunioneducation.com>, and <westernunionglobalpay.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@westernunionbusiness.com, postmaster@westernunionedge.com, postmaster@westernunionfx.com, postmaster@usewesternunion.com, postmaster@thewesternunion.com, postmaster@westernunioneducation.com, postmaster@westernunionglobalpay.com. Also on May 17, 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 June 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant maintains services in electronic money transfer and bill payment services. Complainant has rights in the WESTERN UNION mark through its registrations with the United States Patent and Trademark Office (“USPTO”) and Canadian Intellectual Property Office (“CIPO”) (e.g. USPTO Reg. 1,818,161, registered Jan. 25, 1994; CIPO TMA301,306, registered Mar. 29, 1985). See Compl. Ex. A. Respondent’s <westernunionbusiness.com>, <westernunionedge.com>,<westernunionfx.com>, <usewesternunion.com>,<thewesternunion.com>, <westernunioneducation.com>, and <westernunionglobalpay.com> domain names (hereinafter “the disputed domain names”) are identical/confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and add various generic and descriptive words, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its WESTERN UNION mark in the domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain names while maintaining parked, competing pay-per-click links on the disputed domain names’ resolving websites.
Respondent registered and uses the disputed domain names in bad faith. Respondent exhibited a pattern of bad faith registration to prevent Complainant from using its mark. Respondent attracts internet users for commercial gain by inactively holding the disputed domain names and allowing parked, competing, pay-per-click links on the disputed domain names’ resolving websites. Additionally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the WESTERN UNION mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides services in electronic money transfer and bill payment services.
2. Complainant has established its trademark rights in the WESTERN UNION mark through its registrations with the United States Patent and Trademark Office (“USPTO”) and Canadian Intellectual Property Office (“CIPO”) (e.g. USPTO Reg. 1,818,161, registered Jan. 25, 1994; CIPO TMA301,306, registered Mar. 29, 1985).
3. Respondent registered the disputed domain names on the following dates: <westernunionbusiness.com> on July 19, 2019, <westernunionedge.com> on July 26, 2019, <westernunionfx.com>, <usewesternunion.com>, and <thewesternunion.com> on November 23, 2019, and <westernunioneducation.com> and <westernunionglobalpay.com> on March 18, 2020.
4. Respondent holds the disputed domain names inactively while maintaining parked, competing pay-per-click links on the disputed domain names’ resolving websites.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the WESTERN UNION mark through its registrations with the USPTO and CIPO (e.g. USPTO Reg. 1,818,161, registered Jan. 25, 1994; CIPO TMA301,306, registered Mar. 29, 1985). See Compl. Ex. A. Registration with the USPTO is generally sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). See THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, FA 1724017 (Forum May 17, 2017) (finding registrations with the USPTO and CIPO are satisfactory demonstrations of Policy ¶ 4(a)(i) rights). Therefore, as the Panel agrees, it finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s WESTERN UNION mark. Complainant argues that Respondent’s <westernunionbusiness.com>, <westernunionedge.com>,<westernunionfx.com>, <usewesternunion.com>,<thewesternunion.com>, <westernunioneducation.com>, and <westernunionglobalpay.com> domain names are identical or confusingly similar to Complainant’s WESTERN UNION mark. Under Policy ¶ 4(a)(i), adding generic or descriptive words and the “.com” gTLD to a mark is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The disputed domain names incorporate Complainant’s WESTERN UNION mark in its entirety and add a variety of words, including “business,” “edge,” “fx,” “use,” “the,” “education,” and “global pay”. Additionally, the disputed domain names all add the “.com” gTLD to the end of the mark. Therefore, as the Panel agrees, it finds Respondent’s domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s WESTERN UNION trademark and to use it in its domain names, adding a variety of words, including “business,” “edge,” “fx,” “use,” “the,” “education,” and “global pay” which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the disputed domain names on the following dates: <westernunionbusiness.com> on July 19, 2019, <westernunionedge.com> on July 26, 2019, <westernunionfx.com>, <usewesternunion.com>, and <thewesternunion.com> on November 23, 2019, and <westernunioneducation.com> and <westernunionglobalpay.com> on March 18, 2020;
(c) Respondent holds the disputed domain names inactively while maintaining parked, competing pay-per-click links on the disputed domain names’ resolving websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its WESTERN UNION mark. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in a disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark); see also Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record identifies Respondent as “Dylan Touhey / One Net Marketing Inc.”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its WESTERN UNION mark in the disputed domain names. See Compl. Ex. C; see also Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host parked pay-per-click links that compete with Complainant’s business is generally not considered a bona fide offering of goods or services, nor legitimate noncommercial or fair uses. See Expedia, Inc. v. Compaid, FA 520654 (Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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)). Complainant provides screenshots of the disputed domain names’ resolving websites which feature links to competing websites. See Compl. Ex. E. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues Respondent lacks rights or legitimate interests in the disputed domain names because Respondent offers the domain names for sale. Per Policy ¶ 4(a)(ii), an offer to sell a disputed domain may indicate a respondent lacks rights or legitimate interests in that domain name. See Altria Group, Inc. v. Stacey Scott / Baldwin Inc, FA1410001584163 (Forum Nov. 12, 2014) (finding that the respondent’s only use of the resolving website was to advertise the sale of the associated domain name indicated that the respondent lacked rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)). Here, Complainant provides screenshots showing Respondent has offered the domain names for sale. See Compl. Ex. D. Thus, the Panel finds Respondent lacks any rights or legitimate interests in the disputed domain names per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent engages in a pattern of bad faith registration and use to prevent Complainant from reflecting its mark in the disputed domain names. Under Policy ¶ 4(b)(ii), registering multiple domain names with the intent of preventing Complainant from using its mark may demonstrate a pattern of bad faith registration. See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). The Panel recalls that Respondent registered multiple domain names, and Complainant argues that the reason appears to be to prevent Complainant from reflecting its mark in those domains and to induce Complainant into business with Respondent. Therefore, as the Panel agrees, it finds Respondent has exhibited a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent registered and uses the disputed domain names for bad faith attraction for commercial gain. Under Policy ¶ 4(b)(iv), hosting competing pay-per-click links on a disputed domain name’s resolving website, while inactively holding a domain name may demonstrate bad faith attraction for commercial gain. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The disputed domain names at issue resolve to inactive websites, some with parked advertisements to buy the domain names, others with competing pay-per-click links. See Compl. Exs. D and E. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain names for bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the WESTERN UNION mark. Under Policy ¶ 4(a)(iii), actual knowledge may be sufficient to demonstrate bad faith, and may be demonstrated by various circumstances, including incorporation of a registered mark, as well as a prior relationship between Complainant and Respondent. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Vita-Mix Management Corporation v. OOO "WG-STAHL", FA 1725713 (Forum May 30, 2017) (“Respondent must have had actual knowledge of the VITAMIX mark because Complainant previously authorized Respondent to distribute its product until Complainant terminated the non-exclusive distribution agreement on January 16, 2015.”). The Panel recalls that the disputed domain names all incorporate Complainant’s WESTERN UNION mark. Additionally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the WESTERN UNION mark as it had contracted with Complainant’s affiliate for marketing campaigns. Complainant further argues that Respondent, beyond the scope of its contract with Complainant, claimed to have registered the domain names for the benefit of Complainant, and in multiple email correspondence, refused to transfer the domain names or cooperate with Complainant. See Compl. Exs. F–H. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the WESTERN UNION mark under Policy ¶ 4(a)(iii) and therefore in bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the<westernunionbusiness.com>, <westernunionedge.com>, <westernunionfx.com>, <usewesternunion.com>, <thewesternunion.com>, <westernunioneducation.com>, and <westernunionglobalpay.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 16, 2021
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