National Arbitration Forum - NAF
Travelers Express Co. Inc. v. Florin Dragnea
Claim Number: FA0407000293539
Complainant is Travelers Express Co. Inc. (“Complainant”), represented by Paul D. McGrady of Ladas & Parry, 224 South Michigan Avenue, Chicago, IL 60604. Respondent is Florin Dragnea (“Respondent”), Str. Libertatii, bloc L5, sc.A, ap.9, Alexandria, Romania 0700.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moneygram.ro>, registered with National Institute for R&D in Informatics.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically July 6, 2004; the Forum received a hard copy of the Complaint July 7, 2004.
On July 15, 2004, National Institute for R&D in Informatics confirmed by e-mail to the Forum that the domain name <moneygram.ro> is registered with National Institute for R&D in Informatics and that Respondent is the current registrant of the name. National Institute for R&D in Informatics verified that Respondent is bound by the National Institute for R&D in Informatics registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 15, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 4, 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent, <moneygram.ro>, is identical to Complainant’s MONEYGRAM mark.
2. Respondent has no rights to or legitimate interests in the <moneygram.ro> domain name.
3. Respondent registered and used the <moneygram.ro> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Travelers Express Co. Inc., established by extrinsic proof offered in this proceeding that it is in the business of providing various financial services such as money transfers, money orders, and a variety of other services.
Complainant holds numerous trademark registrations for marks including the MONEYGRAM mark in countries around the world, including Romania (Reg. No. M2002-04899) and the United States (Reg. No. 2,484,700 issued September 4, 2001 and Reg. No. 2,450,906 issued May 15, 2001).
Complainant owns retail business lines that are available in approximately 80,000 retail locations in the United States. Complainant’s agents are located throughout the world, including numerous locations in Romania and two locations in Respondent’s hometown of Alexandria, Romania. Complainant has used the MONEYGRAM mark in commerce in the United States since at least as early as 1988, when it started filing for applications for registrations for the marks in the United States.
Respondent registered the <moneygram.ro> domain name May 7, 2003. The disputed domain name resolves to a page that displays the message “Forbidden. You don’t have permission to access / on this server.” No evidence was provided to show that the domain name had been put to any use.
On August 10, 2003, Respondent sent an e-mail to Complainant in response to an August 3, 2003, conversation between Complainant and Respondent. In the e-mail, Respondent offered to sell the <moneygram.ro> domain name registration for $5,500. or to sell the domain name registration and create a website for Complainant at the domain name for $6,500.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires Complainant to 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.
Identical to and/or Confusingly Similar
Complainant established that it has rights in the MONEYGRAM mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last sixteen years. 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.).
The <moneygram.ro> domain name registered by Respondent is identical to Complainant’s MONEYGRAM mark because the domain name incorporates Complainant’s mark in its entirety, deviating only with the addition of the country code top-level domain “ro.” The addition of a country code top-level domain is irrelevant, because top level domains are required and do not negate the identical nature of the domain name. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark); 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights to or Legitimate Interests
Complainant established that it has rights to and legitimate interests in the MONEYGRAM mark and contends that Respondent can show no such rights to or legitimate interests in the <moneygram.ro> domain name, which contains Complainant’s entire MONEYGRAM mark. Respondent failed to respond to the Complaint and in such cases the Panel assumes that Respondent lacks rights and legitimate interests in the disputed domain name. In fact, once Complainant makes a prima facie case in support of its allegations, which this Complainant has done, the burden shifts to Respondent to show that it has such rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).
Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
The <moneygram.ro> domain name resolves to a page with a “forbidden” message displayed. Other than posting this message, Respondent has made no use of the disputed domain name. Respondent’s passive holding of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).
In August 2003, Respondent offered to sell the <moneygram.ro> domain name registration to Complainant for $5,500. or $6,500., depending on whether Complainant wanted to purchase it outright or to have Respondent create a website at the domain name for Complainant’s benefit. The Panel finds that Respondent’s willingness to sell the domain name registration also suggests that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
Finally, Respondent offered no evidence and nothing in the record suggests that Respondent is commonly known by the <moneygram.ro> domain name. Furthermore, Complainant has not licensed Respondent to use the MONEYGRAM mark. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant alleges that Respondent registered and used the domain name in bad faith. The Panel finds that Respondent’s offer to sell the <moneygram.ro> domain name registration to Complainant, the owner of the MONEYGRAM mark, for an amount in excess of Respondent’s out-of-pocket expenses is evidence of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(i). See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where Respondent made no use of the domain names except to offer them for sale to Complainant); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).
While each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, the Panel should look to additional factors as well to determine if the totality of the circumstances support findings of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[t]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent made no use of the <moneygram.ro> domain name except to place a “forbidden” message at the website and to offer the domain name to Complainant for sale. The Panel finds that Respondent’s passive holding of the domain name constitutes evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also 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 Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moneygram.ro> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 25, 2004