WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Travellers Exchange Corporation Limited v. FairFX Plc.

Case No. D2010-1056

1. The Parties

The Complainant is Travellers Exchange Corporation Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Dechert LLP, UK.

The Respondent is FairFX Plc. of London, UK, represented by Mishcon de Reya Solicitors, UK.

2. The Domain Names and Registrar

The disputed domain names <travelexexpensive.com> and <travelexpensive.com> (the “Domain Names”) are registered with GoDaddy.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2010.

The Center transmitted its request for registrar verification to the Registrar on June 28, 2010. The Registrar replied on June 29, 2010, confirming that it had received a copy of the Complaint, that the Domain Names were registered with it, that the Respondent was the registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Names, that they would expire on April 30, 2011 and would remain locked during this proceeding subject to expiry, and that the registration agreement was in English. The Registrar provided the full contact details held on its WhoIs database in respect of the Domain Names and noted that they had been registered with a privacy service.

The Center verified that the Complaint satisfied the formal requirements of the UDRP, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 19, 2010. The Response was filed with the Center on July 19, 2010.

The Center appointed Jonathan Turner as the sole panelist in this matter on July 23, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant’s group has operated a large retail currency exchange business under the mark TRAVELEX since the 1970s and the Complainant has registered TRAVELEX as a mark in many countries around the world. The Complainant’s group uses this mark in particular in the form of a logo in which “Travelex” appears in white on a blue rectangular background on the left and “worldwide money” appears in white on a red square background on the right. The Complainant has registered this logo as a Community mark in the European Union.

The Complainant’s group operates a website at “www.travelex.com” and “www.travelex.co.uk”.

The Respondent has also operated a currency exchange business in competition with the Complainant’s group since 2006.

The Domain Names resolve to a single web page with a white background, headed with “travelexpensive” in large lower case letters, “travelex” being in blue and “pensive” being in red. Smaller type below asks “Did you know that Travelex charges you 5.75% to withdraw leftover cash when you get back home?*” and continues “Save money. Choose FairFX.com as your travel money provider this summer.” “FairFX.com” is hyper-linked to the Respondent’s principal website. Very small type below states “*UK ATM withdrawals incur a 5.75% foreign currency transaction charge for non-sterling denominated Travelex Cash Passports.”

5. Parties’ Contentions

A. Complainant

The Complainant states that it has rights in the mark TRAVELEX and submits that the Domain Names are confusingly similar to this mark. It points out that <travelexpensive.com> consists of the mark together with the word “pensive” in an attempt to create a play on words to indicate, at least to English-speaking Internet users, that the Complainant’s services are expensive; and that <travelexexpensive.com> consists of the mark and the word “expensive” in a direct attempt to convey the same message. The Complainant draws attention to other decisions under the UDRP where it was held that domain names incorporating distinctive marks were confusingly similar to those marks.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. It states that it has not licensed, permitted or authorized the Respondent to use its marks or to register domain names incorporating them. It argues that the Respondent cannot rely on the circumstances set out in paragraph 4(c) of the UDRP, since the Respondent is using the Domain Names to divert Internet users to its competing website and services, which it maintains does not constitute a bona fide offering of services nor legitimate non-commercial or fair use. The Complainant adds that the Respondent’s use of the Domain Names does not constitute legitimate comparative advertising since it is misleading, and that the Respondent is not commonly known by the Domain Names or the Complainant’s mark.

The Complainant alleges that the Domain Names were registered and are being used in bad faith. In particular the Complainant alleges that the Respondent registered them primarily for the purpose of disrupting its business; that the Respondent has intentionally attempted to attract Internet users to its own website for commercial gain by creating a likelihood of confusion with the Complainant’s mark; that the Respondent has used the Domain Names in a way which is likely to dilute the reputation of the Complainant’s mark; that the Respondent’s website is deceptive; and that the Respondent has appropriated the Complainant’s well-known mark.

The Complainant seeks a decision that the Domain Names be transferred to it.

B. Respondent

The Respondent does not dispute the Complainant’s rights in the mark TRAVELEX but submits that the Domain Names are not confusingly similar to it. The Respondent contends that <travelexpensive.com> is not likely to be read as incorporating the Complainant’s name, but rather as comprising the words “travel” and “expensive”. However, even if sophisticated consumers recognize the Domain Names as referring to the Complainant, the Respondent would not suppose them to believe the Domain Names are used by the Complainant, but rather are used to criticize the Complainant. The Respondent points out that its website at the Domain Names is not included in the top ten results of a Google or Yahoo search and there is no evidence of actual confusion.

The Respondent contends that it is making legitimate fair use of the Domain Names for comparative advertising and therefore has a right or legitimate interest in them pursuant to paragraph 4(c)(iii) of the UDRP. The Respondent emphasizes that the overriding purpose of the UDRP is to prevent cyber-squatting, not criticism and comparative advertising on the Internet. The Respondent observes that the parties have engaged in tit-for-tat criticism of their advertising claims. The Respondent insists that it had no intent to misleadingly divert customers or to tarnish the Complainant’s mark.

The Respondent states that its primary purpose in registering the Domain Names was not to disrupt the Complainant’s business (as alleged by the Complainant), but rather to engage in legitimate comparative advertising. The Respondent adds that there is no likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and repeats its submissions that the content of its website is not deceptive and does not tarnish the Complainant’s mark.

The Respondent requests the Panel to deny the Complaint.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding in relation to each of the Domain Names, a complainant must prove (i) that the domain name is identical or confusingly similar to a mark in which it has rights; (ii) that the respondent has no rights or legitimate interests in respect of that domain name; and (iii) that the domain name has been registered and is being used in bad faith.

It is clear from the terms of the UDRP and numerous decisions under it that these are cumulative requirements which must all be satisfied for a complaint to succeed in relation to a domain name. They will therefore be considered in turn.

A. Identical or Confusingly Similar

It is not disputed that the Complainant has rights in the mark TRAVELEX and it is necessary next to consider whether each of the Domain Names is identical or confusingly similar to this mark. It is clear that neither of the Domain Names is identical to the mark, so the question is whether each of them is confusingly similar.

It is apparent from the terms and purpose of the UDRP, and has been confirmed in many decisions under it, that the comparison which must be made is between the mark and the domain name in issue. On the one hand, a respondent which diverts Internet users to its website by a confusingly similar domain name cannot rely on the content of that website to avoid a finding of that the domain name is confusingly similar: see, for example, the cases cited in section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

On the other hand, a complainant cannot rely on the deceptive content of a respondent’s website to obtain a finding that a domain name is confusingly similar to the complainant’s mark when it is not in itself confusingly similar: see, for example, General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334. The UDRP is directed at abusive domain name registrations and does not provide a remedy for deceptive trading on the Internet generally.

The Panel considers that the Domain Name <travelexpensive.com> would generally be read by Internet users as combining the words “travel” and “expensive”. These are whole words in common use in English and Internet users would naturally break down the second level domain of this Domain Name into these elements. The Panel appreciates that “pensive” is also an English word, but it is one which is much less widely used. In the Panel’s view Internet users are most unlikely to recognize the Domain Name by itself as comprising the words “Travelex” and “pensive”.

In these circumstances, the Panel is not satisfied that Internet users would be likely to associate the Domain Name with the Complainant unless they viewed the content of the Respondent’s web page. However, as explained above, the comparison must be made without considering the Respondent’s web page. The Panel accordingly finds that the Domain Name <travelexpensive.com> is not confusingly similar to the Complainant’s mark.

The Panel considers that, by contrast, the Domain Name <travelexexpensive.com> would be read by many Internet users as combining the Complainant’s widely used mark TRAVELEX with the descriptive English word “expensive”. The Panel accepts that some Internet users will reason that the Complainant would not use a domain name which might imply that its services are expensive. Nevertheless, the Panel considers that not all Internet users reason in this way or would assume that the word “expensive” is being used in a negative sense in this Domain Name, at any rate before seeing the Respondent’s web page. Overall, the Panel considers that there is a real likelihood of confusion between this Domain Name and the Complainant’s mark. This view accords with that of the majority of Panelists in decisions under the UDRP concerning domain names consisting of a trademark and a negative term: see section 1.3 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

The Panel appreciates that it could be said that there is only a little difference between <travelexpensive.com> and <travelexexpensive.com>. However, small differences can have a major effect on the way domain names are read, resulting in different findings on confusing similarity, as observed in General Electric Company, supra, and The Football Association Limited v. Websitebrokers Limited, WIPO Case No. D2001-0156.

The Panel therefore finds that the first requirement of the UDRP is satisfied in relation to the Domain Name <travelexexpensive.com>, but is not satisfied in relation to <travelexpensive.com>.

B. Rights or Legitimate Interests

In view of the finding that the Domain Name <travelexpensive.com> is not confusingly similar to the Complainant’s mark, it is not necessary to consider this Domain Name further.

The Panel does not consider that the Respondent has used the Domain Name <travelexexpensive.com> in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the confusing similarity of this Domain Name to the Complainant’s mark to divert Internet users to the Respondent’s own web page and thereby to promote its own principal website and its own competing services. As the Complainant observes, the use of a domain name in this way is not regarded in decisions under the UDRP as being in connection with a bona fide offering of goods and services for the purposes of its paragraph 4(c)(i).

It is clear that the Respondent is not commonly known by this Domain Name or any corresponding name.

The Panel also finds that the Respondent is not making legitimate non-commercial or fair use of this Domain Name without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s mark. On the contrary, the Respondent is making unfair commercial use of this Domain Name with intent to divert consumers by confusion with the Complainant’s mark and to tarnish the latter.

The Panel does not regard the Respondent’s use of this Domain Name as a legitimate form of comparative advertising. On the contrary, the Respondent is using the confusing similarity of the Domain Name to the Complainant’s mark to divert Internet users to its own web page at “www.travelexpensive.com” and thereby to promote its competing services.

The Panel emphasizes that this finding does not prevent the Respondent from carrying out comparative advertising objectively comparing specific characteristics of the parties’ respective services on the Internet, for example on the Respondent’s principal website or on a website at another domain name which does not divert Internet users by its confusing similarity with the Complainant’s mark.

Having reviewed the file and the Respondent’s website, the Panel is satisfied that the Respondent cannot claim a right or legitimate interest in the Domain Name <travelexexpensive.com> on any of the bases identified in paragraph 4(c) of the UDRP or otherwise. The Panel finds that the second requirement of the UDRP is satisfied in relation to this Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that by using the Domain Name <travelexexpensive.com>, the Respondent has intentionally attempted to attract Internet users to the web page located at “www.travelexpensive.com” by creating a likelihood of confusion with the Complainant’s mark as to the source of that web page. The fact that Internet users would realize on seeing the Respondent’s web page that it is an advertisement by a competitor does not alter the fact that they were attracted to it by confusion in the first place. Furthermore, the Respondent is using the Domain Name in this way for commercial gain in the hope that it will divert some Internet users to its principal website and induce them to try its rival service.

In accordance with paragraph 4(b)(iv) of the UDRP these circumstances constitute evidence of the registration and use of this Domain Name in bad faith. This presumption is not displaced by evidence to the contrary. The Panel accordingly concludes that the Domain Name <travelexexpensive.com> was registered and is being used in bad faith. The third requirement of the UDRP is satisfied in relation to this Domain Name.

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <travelexexpensive.com> be transferred to the Complainant.

The Complaint regarding the domain name <travelexpensive.com> is denied.

Jonathan Turner
Sole Panelist
Date: July 29, 2010