WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Western Union Holdings, Inc. v. 35.com Technology Co., Ltd.
Case No. D2008-0590
1. The Parties
The Complainant is Western Union Holdings, Inc., United States of America, represented by The GigaLaw Firm, LLC, United States of America.
The Respondent is 35.com Technology Co., Ltd., Australia.
2. The Domain Name and Registrar
The disputed domain name <paydayloanswesternunion.com> is registered with OnlineNIC, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2008 by email and a hardcopy was received on April 18, 2008. On April 17, 2008, the Center transmitted by email to OnlineNIC, Inc. a request for registrar verification in connection with the domain name at issue. On April 18, 2008, OnlineNIC transmitted its verification response to the Center by email, confirming that the Respondent is listed as the Registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May 13, 2008.
The Center appointed the undersigned as the sole panelist in this matter on May 22, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence on May 20, 2008, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is Western Union Holdings, Inc., an intellectual property holding company for the benefit of The Western Union Company. In the Complaint, the term “Complainant” is used to refer interchangeably to Western Union Holdings, Inc. and the Western Union Company, or their predecessors in interest. Hereafter, the Panel will follow this terminology.
The Complainant is a company that offers money order, money transfer, payment and prepaid services. It has used the name “Western Union” since 1856. The Complainant states that, together with its affiliates Orlandi Valuta and Vigo, it has become an industry leader in global money transfer.
The Complainant is the owner of approximately 950 trademark registrations worldwide that consist of or include the mark WESTERN UNION (see Annexes 3 and 4 to the Complaint). These registrations include the following trademark registrations:
- WESTERN UNION, registered with the United States Patent and Trademark Office on January 25, 1994, Registration Number 1818161 (Annex 3 Complaint);
- WESTERN UNION, registered with the USPTO on October 18, 1994, RegistrationNnumber 1858889 (Annex 3 Complaint);
- WESTERN UNION, registered with the USPTO on June 20, 1995, Registration Number 1901176 (Annex 3 Complaint);
WESTERN UNION, registered with the USPTO on May 20, 1997, Registration Number 2063145 (Annex 3 Complaint).
The Complainant is also the registrant of approximately 363 domain names that consist of or contain the WESTERN UNION trademarks or abbreviations or variations thereof (see Annex 5 to the Complaint).
The Respondent registered the disputed domain name on July 21, 2005.
5. Parties’ Contentions
A. Complainant
Identical or confusingly similar
The Complainant contends that, according to a 2006 tracking study, “Western Union” is a well-recognized global brand with 97% brand awareness in the United States of America. The Complainant notes that previous panels under the Policy have also recognized that the Complainant’s mark is well-known and entitled to protection. The Complainant refers to: Western Union Holdings, Inc. v. Anna Valdieri, WIPO Case No. D2006-0884; Western Union Holdings, Inc. v. Click Search, NAF Claim No. 890725; Western Union Holdings, Inc. v. Manuel Rodriguez, WIPO Case No. D2006-0850; and Western Union Holdings, Inc. v. Domain Drop S.A., NAF Claim No. 971146).
The Complainant asserts that the disputed domain name is confusingly similar to the WESTERN UNION trademarks. Referring to the USPTO Trademark Manual of Examination Procedure (3d ed.) paragraph 1215.02 and the decision in Hoffman-La Roche, Inc. v. UrProxy Domains, WIPO Case No. D2007-0456, it states that neither the beginning of the URL (http://www), nor the “.com” suffix is significant in determining whether the domain name is identical or confusingly similar to the mark.
The only difference between the WESTERN UNION trademarks and the disputed domain name is the addition of the words “paydayloans” in the disputed domain name. The Complainant cites UDRP case law, from which it follows that the incorporation of a complainant’s trademark in a domain name is sufficient to establish confusing similarity for the purposes of the Policy.
Furthermore, the Complainant states that a domain name is confusingly similar to a trademark where, as here, the domain name contains a complainant’s trademark in its entirety plus additional words that describe the goods or services associated with the trademark. According to the Complainant, the words “paydayloans” in the disputed domain name describe services that consumers may associate with the Complainant, given the various financial services offered by the Complainant under the WESTERN UNION trademarks and the fact that a “payday loan” refers to “a cash advance secured by a personal check or paid by electronic transfer”.
Rights or legitimate interest of the Respondent
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, since the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use any of the WESTERN UNION trademarks.
The Complainant submits upon information and belief that Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant points out that the Respondent uses the disputed domain name in connection with a portal site that provides general links to various third-party services. The Complainant refers to several Panel decisions in which this use of a domain name for a “landing page” was held not to constitute a bona fide offering of goods and services or a legitimate right to or interest in the disputed domain name.
According to the Complainant, the Respondent is not commonly known by the disputed domain name. According to the Whois record, the Respondent’s name is “35.com Technology Co., Ltd.” The Respondent has never acquired any trademark or service mark rights in the disputed domain name. The Complainant states that, given its established use of the WESTERN UNION trademarks for more than 150 years, it is also unlikely that the Respondent is commonly known by this trademark.
The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s WESTERN UNION trademarks. The Complainant argues that the use of the disputed domain name in connection with a portal site that provides links to services of third parties, is clearly use for commercial gain. It mentions several panel decisions under the Policy in which such use by respondents is not considered to establish legitimate interests.
Registration and use in bad faith by the Respondent
According to the Complainant, the use of the disputed domain name in connection with the portal site linking to third-party services constitutes bad faith. The Complainant states that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the WESTERN UNION trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. The Complainant asserts that the disputed domain name is obviously connected with the Complainant. Given the Complainant’s established rights in the WESTERN UNION (Complainant has been using the WESTERN UNION trademarks for more than 150 years), the Respondent’s actions suggest “opportunistic bad faith”.
Based on the foregoing, the Complainant requests that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not file a Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
Based on the Complainant’s evidence and references to UDRP decisions, which have not been contested by the Respondent, the Panel is of the opinion that the Complainant’s trademark WESTERN UNION is a widely known trademark.
The Panel agrees with the Complainant that for the relevant comparison to be made as to the similarity of the domain name and trademarks of the Complainant, only the second-level portion of the domain name is relevant.
Since the entire WESTERN UNION trademark is incorporated in the disputed domain name, the Panel finds the domain name to be confusingly similar to the trademark. The addition of the generic phrase “paydayloans” to the trademark WESTERN UNION in the domain name adds to the confusing similarity of the domain name and the trademark, since “paydayloans” refers to financial services, which is the business of the Complainant (see Western Union Holdings, Inc. v. Domain Drop S.A., NAF Claim No.971146; and Western Union Holdings, Inc. v. Manuel Rodriguez, WIPO Case No. D2006-0850).
B. Rights or Legitimate Interests
The Panel is of the opinion that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant has not licensed its WESTERN UNION trademarks to the Respondent, nor has it consented to the Respondent’s use of its trademarks as part of the domain name. The Panel notes that the disputed domain name is used for a website that, based upon the evidence provided by the Complainant (a screenshot of the webpage), looks like a so-called “landing page”, which provides links to various commercial websites of third parties. In these circumstances, the use of the disputed domain name for a landing page cannot be considered to be use for a bona fide offering of goods and services, nor can it constitute a legitimate non-commercial or fair use of the disputed domain name (see MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, and cases cited therein). In addition, there is no evidence that the Respondent was commonly known by the disputed domain name before it registered the domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that the Respondent was likely aware of the Complainant and its trademarks, since WESTERN UNION trademarks are widely known throughout the world and have been in use in commerce for many years prior to the registration of the disputed domain name. Moreover, the disputed domain name is comprised of the Complainant’s trademark in combination with the paraphrase “paydayloans”, which, as stated above, appears to be a reference to Complainant’s financial services.
The website active under the disputed domain name seems to be a landing page, which contains a search device for various financial services. The panel is of the opinion that the domain name has been registered and is being used to trade off the goodwill of the trademarks (see MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
Given the confusing similarity between the domain name and the WESTERN UNION trademarks and the close relation between the services apparently offered via links on the Respondent’s website and the services the Complainant offers, there is a clear likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
The Panel finds that by so using the disputed domain name, the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website or another on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <paydayloanswesternunion.com> be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: June 5 2008