TTT Moneycorp Ltd. v. Diverse Communications

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TTT Moneycorp Limited. v. Diverse Communications

Case No. D2001-0725

1. The Parties

The Complainant is TTT Moneycorp Limited of 2 Sloane Street, London SW1X 9LA,

United Kingdom.

The Respondent is Diverse Communications of 14191 72A Avenue, Surrey, British

Columbia, V3W2R, Canada.

2. The Domain Name and Registrar

This dispute concerns the domain name <moneycorp.com>.

The Registrar is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon,

VA 20170, USA.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on May 31, 2001, and in hardcopy

on June 6, 2001. The Complaint was acknowledged on June 6, 2001. Next day registration

details were sought from the registrar. On June 12, 2001, the registrar confirmed

that the disputed domain name is registered in the name of the Respondent and

that its 5.0 Service Agreement (which incorporates the Policy) is in effect.

On June 14, 2001, the Center satisfied itself that the Complainant had

complied with all formal requirements, including payment of the prescribed fee.

On June 14, 2001, the Center formally notified the Respondent of the Complaint

and of the commencement of this administrative proceeding by post/courier to

the Respondent and to its Technical Contact, Network Commerce Inc., of Seattle

(both with enclosures); by fax to the Administrative/Billing Contact and to

the Technical Contact, and by email to the Respondent (including to the email

addresses discovered by the Complainant); to the Administrative/Billing Contact

and to the Technical Contact (all without attachments) and sent copies to the

Complainant, the Registrar and ICANN.

The courier to the Respondent was reported as "undeliverable at the address

mentioned on the airwaybill, the company name and street name doesn’t exist".

That address was the address of the Respondent recorded by the Registrar as

the Respondent’s address for the purpose of the registration of the disputed

domain name.

On July 4, 2001, the Complainant forwarded to the Center an email it had received

from a company called Diversified Communication Services Ltd of 8241-129 St.,

Surrey, British Columbia, Canada, saying it had received the Notification of

Complaint and Commencement of Administrative Proceeding from Fedex, that "there

is no listing in the book for Diverse Communications at 14191-72A Ave., Surrey"

which is in a residential area, and asking what to do with the packet.

The last day specified by the Center for a Response was July 3, 2001. No Response

was filed. On July 5, 2001, the Center gave formal notice of the Respondent’s

default.

On July 16, 2001, the Center notified the parties of the appointment of Alan L. Limbury

to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance

and Declaration of Impartiality and Independence. That day, the Center transmitted

the case file to the Panel and notified the parties of the projected decision

date of July 29, 2001.

The language of the proceeding was English.

The Panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules; payment was properly made;

the Panel agrees with the Center’s assessment concerning the Complaint’s compliance

with the formal requirements; the Center discharged its responsibility under

Rule 2(a) to employ reasonably available means calculated to achieve actual

notice to the Respondent of the Complaint and of the commencement of this Administrative

Proceeding; no Response was filed and the administrative Panel was properly

constituted.

4. Factual Background

The Complainant has been trading as a foreign exchange business since 1979

and has used the brand ‘Moneycorp’ since 1993. Its business is international

in nature and its electronic money transfer service means that through its ‘Moneycorp’

brand, the Complainant effectively has a global presence.

The Complainant has the following ‘Moneycorp’ trade marks registered:

Registration

Jurisdiction

Class

Number

Date of Registration

Description of Goods/Services

UK

16

2180286

23.10.1998

1

UK

36

2173709

01.08.1998

2

EU

16

967968

27.10.1998

3

EU

36,39,41

894980

04.08.1998

4

USA

16

75/911609

Notification of Acceptance

received

5

USA

36

2,399,042

31.10.2000

6

Australia

16, 36

776186

21.10.1998

7

The Complainant has also registered the trademarks ‘The Money Corporation’

and "The Money Corporation with device" in the UK, European Community

and the USA.

In 1994 the Complainant established itself formally in the USA, and registered

there the trade mark ‘The Money Corporation’. It had already established ‘The

Money Corporation’ brand in the UK using it interchangeably with the ‘Moneycorp’

trade mark, the latter being an abbreviation of the former. It is used similarly

in the USA and now effectively worldwide. The Complainant is known in the industry

as ‘Moneycorp’.

The Complainant has also registered numerous domain names which incorporate

the words "moneycorp", "moneycorporation" and "themoneycorporation".

The Respondent registered the disputed domain name in April 1998, long after

the Complainant established the Moneycorp brand and registered its first trade

marks. A site has never been activated under the domain name.

5. Parties’ Contentions

A. Complainant

Identity / confusing similarity

The Complainant’s business is widely referred to as ‘Moneycorp’. Its clients

searching on the worldwide web will find this inactive site registered to the

Respondent, which leads to confusion and detracts from the Complainant’s trademarks

and goodwill.

The Complainant’s business development is being hindered because it is unable

to utilise the <moneycorp.com> domain name and customers of the Complainant’s

business are misled by the Respondent’s registration of the domain name.

Legitimacy

The Respondent has not established any right or legitimate interest with respect

to the domain name <moneycorp.com>.

Bad faith

The Respondent clearly has not registered the domain name with the legitimate

intention of trading. The domain name has not been used since it was registered.

It was registered subsequently to the registration of the Complainant’s first

‘The Moneycorporation’ trade marks in the EU and the US.

The Complainant made efforts to contact the Respondent but the Respondent’s

details on the NSI database are inaccurate. Eventually the Complainant found

an alternative e-mail address for the Respondent but the Respondent refused

to acknowledge the Complainant’s legal claim. No further communication with

the Respondent was possible. Correspondence sent by registered mail was returned,

the Respondent not being known at the address cited on the NSI database. The

Respondent’s telephone number (as cited on the NSI database) is out of service

and the fax number is a private residential telephone number of an unknown third

party. No responses have been received to further e-mails.

The assumption is that if the name is not being used for trading then it must

have been registered with the intention of selling it at a later date. The name

‘Moneycorp’ is clearly only appropriate to a financial services sector business

such as the Complainant’s. The Respondent is not involved in this sector and

has not traded using the name. It has no trade marks for ‘The Money Corporation’,

‘Moneycorp’ or any derivation thereof registered anywhere in the world. It has

shown no legitimate business interest in any product or service that uses the

name ‘Moneycorp’.

At the time the Respondent registered the domain name in April 1998, the Respondent

knew or should have known that the use of the domain name in this way would

violate Complainant’s trademark rights in Moneycorp (see Samsonite Corp v

Colony Holding, FA94313, National Arbitration Forum, April 17, 2000). Evidence

of bad faith includes actual or constructive knowledge of commonly known marks

at the time of registration. By registering the domain name, the Respondent

represented that to its knowledge "the registration of the domain name

will not infringe upon or otherwise violate the rights of any third party"

(ICANN Policy 2 (b)).

The disputed domain name came up for renewal on April 14, 2001, and was re-registered

by the Respondent in the knowledge that it was infringing the Complainant’s

superior rights and that the registration was likely to cause confusion.

B. Respondent

No response was filed.

6. Discussion and Findings

Failure to file a Response

Failure to file a Response permits the panel to infer that the Respondent does

not deny the facts which the Complainant asserts nor the conclusions which the

Complainant asserts can be drawn from those facts (Footnote

1). The panel is prepared to draw those inferences in this case because

the panel is satisfied that the Respondent has received actual notice of the

Complaint by reason of the transmission by the Center of notification of the

Complaint to the email address from which the Complainant received an email

on June 8, 2000, from "Cole" expressing unwillingness to sell

the disputed domain name. The name Cole appears as the Administrative and Billing

Contact for the Respondent, according to the information supplied by the Respondent

to the Registrar.

Substantive issues

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) the disputed domain name has been registered and is being used in bad

faith.

Identity or confusing similarity

Essential or virtual identity is sufficient for the purposes of the Policy

(Footnote 2). The panel finds the disputed

domain name is identical to the Complainant’s trademark MONEYCORP.

The Complainant has established this element.

Illegitimacy

The Respondent has failed to avail itself of the opportunity to show it has

a right to or interest in the disputed domain name. There is no evidence of

any of the circumstances enumerated in paragraph 4 (c) of the Policy. Further,

the Respondent has not used or developed the domain name for a legitimate non-commercial

or fair purpose and is not using the domain name in connection with a bona fide

offering of goods or services. Under these circumstances the panel is satisfied

that the Respondent has no right to or interest in the disputed domain name

(Footnote 3).

The panel finds the Complainant has established this element.

Bad faith registration and use

The circumstances enumerated in paragraph 4(b) of the Policy which shall be

evidence of both bad faith registration and bad faith use are not exhaustive.

There is no evidence of any such circumstances.

A finding of bad faith may be made where the Respondent "knew or should

have known" of the registration and use of the trademark prior to registering

the domain name (Footnote 4). The Complainant

relies on Samsonite Corp v Colony Holding (Footnote

5) but the trademark SAMSONITE is better known and is less descriptive than

the trademark MONEYCORP and the Complainant’s trademarks are not registered

in Canada. The Panel is unable to conclude that the Respondent knew or should

have known of the Complainant’s trademark before registering the disputed domain

name in 1998.

The Respondent is not known at the address given to the Registrar; its name

is not in "the book"; the address is a residential area; its name

is similar to that of another enterprise that has never heard of the Respondent

and the Respondent does not respond to communications directed to its stated

contacts. The Panel concludes that the Respondent deliberately sought to conceal

its identity and contact addresses when registering the disputed domain name

in 1998 and that this amounts to registration of the disputed domain name in

bad faith.

Further, the Respondent renewed the disputed domain name in April 2001, after

being put on notice of the Complainant’s MONEYCORP mark and of the Complainant’s

claims to the disputed domain name, without changing those false details. The

Panel finds the Respondent re-registered the disputed domain name in bad faith.

The ‘use’ requirement has been found not to require positive action, inaction

being within the concept (Footnote 6). In

the leading case on passive use (Footnote 7),

passive holding was held to amount to acting in bad faith where:

(i) the Complainant’s trademark had a strong reputation and was widely known;

(ii) the Respondent provided no evidence of any actual or contemplated good

faith use by it of the domain name;

(iii) the Respondent had taken active steps to conceal its true identity, by

operating under a name that is not a registered business name;

(iv) the Respondent had actively provided, and failed to correct, false contact

details, in breach of its registration agreement, and

(v) taking into account all of the above, it was not possible to conceive of

any plausible actual or contemplated active use of the domain name by the Respondent

that would not be illegitimate, such as by being a passing off, an infringement

of consumer protection legislation, or an infringement of the Complainant’s

rights under trademark law.

Here,

(i) the Complainant’s trademark MONEYCORP does not have as strong a reputation

as the marks TELSTRA or SAMSONITE and is not registered in Canada, where the

address given by the Respondent is located;

(ii) the Complainant’s mark has become sufficiently distinctive of the Complainant’s

services to permit the mark to be registered and is used by the Complainant

in global e-commerce;

(iii) the Respondent provided no evidence of any right to or legitimate interest

in the disputed domain name nor of any actual or contemplated good faith use;

(iv) the Respondent has taken active steps to conceal its true identity and

address, by providing to the Registrar and failing to correct, even upon re-registration,

false contact details, in breach of its registration agreement;

(v) taking into account all of the above, despite the relatively lesser strength

of the Complainant’s mark, the descriptive character of that mark and its use

by the Complainant in its global business are such that, as in Telstra,

it is not possible to conceive of any plausible actual or contemplated active

use of the domain name by the Respondent that would not be illegitimate, such

as by being a passing off, an infringement of consumer protection legislation,

or an infringement of the Complainant’s rights under trademark law.

Accordingly the Complainant has established that the disputed domain name was

registered and is being used in bad faith.

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs

that the domain name <moneycorp.com> be transferred to the Complainant.

Alan L. Limbury

Sole Panelist

Dated: July 23, 2001

Footnotes:

1. Reuters Limited v. Global Net 2000, Inc. (WIPO

Case No. D2000-0441). See also Hewlett-Packard Company v. Full System

S.a.S. (NAF Case No. FA0094637); David G. Cook v. This Domain is For

Sale (NAF Case No. FA0094957) and Gorstew Jamaica and Unique Vacations,

Inc. v. Travel Concierge (NAF Case No. FA0094925). (back to

text)

2. See The Stanley Works and Stanley Logistics, Inc v. Camp

Creek. Co., Inc. (WIPO Case No. D2000-0113),

Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S

Enterprises Ltd. (WIPO Case No. D2000-0802)

and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO

Case No. D2000-0102). For a typical US case see Sporty’s Farm L.L.C.

v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences

between the trademark "sporty’s" and the domain name <sportys.com>

– specifically, an apostrophe in the trademark and the addition of .com in the

domain name – are "inconsequential," such that the domain name is

"indistinguishable" from and "certainly ‘confusingly similar’

to the protected mark"). (back to text)

3. See State Farm Mutual Automobile Insurance Company v.

Rocky E. Faw (NAF case FA94971) and Leland Stanford Junior University

v. Zedlar Transcription & Translation (NAF case FA94970). (back

to text)

4. SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport

(NAF Case No. FA0094956). Likewise Marriott International, Inc. v. John Marriot

(NAF Case No. FA0094737); 163972 Canada Inc. v. Sandro Ursino

(DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com

(NAF Case No. FA0095037). (back to text)

5. FA94313, National Arbitration Forum, 17th April

2000. (back to text)

6. Telstra Corporation Limited v. Nuclear Marshmallows,

(WIPO case D2000-0003); Barney’s, Inc.

v. BNY Bulletin Board (WIPO case

D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO

case D2000-0400); Video Networks Limited v. Larry Joe King (WIPO

case D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company

(WIPO case D2000-0194) and Revlon Consumer

Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO

case D2000-0468). (back to text)

7. Telstra Corporation Limited v. Nuclear Marshmallows

(WIPO case D2000-0003). (back

to text)