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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Orlandi Valuta, Inc. v. WWK, Yvonne Klemm

Case No. D2006-1485

 

1. The Parties

The Complainant is Orlandi Valuta, Inc., Englewood, Colorado, United States of America, represented by Sutherland Asbill & Brennan, LLP, United States of America.

The Respondent is WWK, Yvonne Klemm, Lawrence, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <orlandivaluta.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2006. On November 21, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On November 22, 2006, Register.com transmitted by email to the Center its verification response. 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 November 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2007.

The Center appointed Terrell C. Birch as the sole panelist in this matter on January 18, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

None of the facts alleged by Complainant have been contested by Respondent. These facts are as follows:

Orlandi Valuta, Inc. (“Complainant”) is a leading provider of same day and next day electronic money transfer services in the United States and various countries in Latin America, including El Salvador, Honduras, Guatemala and all 32 states in Mexico. In operation since 1986, Complainant has established an agency network with more than 4,500 locations. Complainant owns all rights in and to the ORLANDI VALUTA word mark and trade name and the ORLANDI VALUTA (and Design) mark (collectively, the “ORLANDI VALUTA Marks”). The ORLANDI VALUTA (and Design) mark is the subject of incontestable U.S. Registration No. 2,291,883, which Complainant has used in commerce for “financial wire transfer services” since at least as early as September 1991. Complainant’s incontestable registration of ORLANDI VALUTA is conclusive evidence of Complainant’s exclusive right to use the mark in association with “financial wire transfer services” throughout the United States (where Respondent appears to be located). See 15 U.S.C. §§ 1065, 1115(b).

In addition to its U.S. registration, Complainant owns registrations and pending applications for the ORLANDI VALUTA Marks in nineteen other countries, consisting of Argentina, Bolivia, Brazil, Canada, Chile, Colombia, Costa Rica, Cuba, the Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, Panama, Paraguay, Peru and Venezuela.

Respondent appears to have configured the <orlandivaluta.com> domain name to launch a “pop-up” window containing an additional advertisement, and upon a user’s attempt to leave the “www.orlandivaluta.com” website, Respondent has configured the website to launch an additional browser window of directory links to the sites of third parties, many of which are directed to providers of money transfer services.

 

5. Parties’ Contentions

A. Complainant

1. The Domain Name is Identical to Complainant’s Mark

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

Complainant’s incontestable registration of ORLANDI VALUTA is conclusive evidence of Complainant’s exclusive right to use the mark in association with “financial wire transfer services” throughout the United States (where Respondent appears to be located). See 15 U.S.C. §§ 1065, 1115(b).

Complainant submits that its ORLANDI VALUTA mark is a coined mark as the wording has no meaning in English or Spanish in the relevant trade or industry apart from Complainant’s use of the wording as a trademark. The mark, being a coined mark, is a highly distinctive mark and entitled to widespread protection. See ROHO, Inc. v. Mark Duane, WIPO Case No. D2001-1168) (December 14, 2001) (ordering the transfer of a domain name identical to the complainant’s ROHO mark and finding that “[s]uch a mark, consisting of an arbitrary collection of letters, is considered a very strong trademark”). Complainant’s ORLANDI VALUTA Marks have been extensively and continuously used and promoted by Complainant in such a manner that the purchasing public associates the ORLANDI VALUTA Marks with Complainant. Complainant actively promotes its ORLANDI VALUTA Marks in print, radio, television and Internet advertising campaigns, at industry events and in community activities, and holds a domain name registration for <orlandivaluta.net> and <orlandivaluta.biz>.

In addition to relying on its registrations for the ORLANDI VALUTA Marks, Complaint asserts and relies upon its common law trademark rights in the ORLANDI VALUTA name and mark. Through Complainant’s continuous and extensive use in international commerce, the ORLANDI VALUTA Marks have achieved substantial goodwill.

It is well established that under the Policy a domain name may be ordered transferred based upon common law rights. The Complainant is not required to have registered the mark(s) at issue. See, e.g., Fujitsu Limited v. d, y, an, 64 USPQ2d 1853, NAF Case No. 123924 (October 25, 2002); Mission KwaSizabantu v. Rost, WIPO Case No. D2000-0279 (June 7, 2000); CSA Intl v. Shannon, WIPO Case No. D2000-0071 (March 24, 2000); MatchNet PLC v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000). All that the Policy requires is “the fact that a certain combination of letters and/or numbers is recognizable as a trademark or service mark by a significant number of Internet users or consumers in general”. ISL Marketing AG v. The European Unique Resources Assoc. 2000 B. V., WIPO Case No. D2000-0230 (July 5, 2000); Askonas Holt Ltd. v. Webocracy, WIPO Case No. D2000-0392 (July 3, 2000) (the Policy does not require that the trademark be registered in order to establish prior rights).

The <orlandivaluta.com> domain name registered and used by Respondent is identical to Complainant’s ORLANDI VALUTA mark. As previous UDRP decisions have repeatedly stated, the addition of the generic top-level .com domain to the end of the domain name does not diminish the identical nature of <orlandivaluta.com>. Complainant submits that it is well established that the top-level domain is part of the Internet address and does not add source-identifying significance. See Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728 (September 7, 2005) (noting that the .corn suffix “does not distinguish the domain names at issue from complainant’s mark”); see also Visit America, Inc. v. Visit America, NAF Case No. 95093 (August 14, 2000); Deutsche Welle v. Diamond Ware Ltd., WIPO Case No. D2000-1202 (January 2, 2001) (stating “[for the purposes of paragraph 4(a)(i) of the Policy, the ‘ .corn’ element may be ignored”); see also, e.g., Nissan Motor Co. v. Nissan Computer Corp., 204 F.R.D. 460, 466-67 (C.D. Cal. 2001) (“[A]ny permutations one may derive from adding a top-level domain ... to the second-level domain ‘nissan’ are indistinguishable as a matter of law”). Thus, <orlandivaluta.com> is identical to Complainant’s ORLANDI VALUTA mark.

2. Respondent has No Rights or Legitimate Interests in the Domain Name

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

Complainant submits that under the Policy, a respondent is generally considered to have no right or legitimate interest in a domain name if (a) the respondent does not use, or undertake demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, (b) the respondent is not commonly known by the domain name, and (c) the respondent is not making a legitimate noncommercial or fair use of the domain name. Policy paragraph 4(c).

Complainant contends that in the present case, there is no evidence to suggest that Respondent has used, or undertaken any demonstrable preparations to use, <orlandivaluta.com> in connection with a bona fide offering of goods or services. Respondent has incorporated Complainant’s ORLANDI VALUTA mark into a domain name in order to divert Internet users to Respondent’s website at “www.orlandivaluta.com”, which appears to be a “directory site” with links to the sites of third parties. Many of the links on the Respondent’s website are directed to providers of money transfer services, including competitors of Complainant. As set forth above, Complainant is well known for providing money transfer services. The only conceivable purpose of Respondent’s use of the ORLANDI VALUTA mark in the disputed domain name is to trade upon the goodwill associated with Complainant’s ORLANDI VALUTA mark and thereby to divert Internet users to Respondent’s directory site for which Respondent likely receives “pay-per-click” revenue, See CBS Broadcasting, Inc, v. Toeppen, WIPO Case No. D2000-0400 (July 6, 2000) (finding no legitimate reason for the respondent to use a domain name corresponding to the well known mark of another and concluding that the respondent did not have legitimate rights in or make legitimate use of the domain name). See Netcentives, Inc. v. B. W. Brody Co., WIPO Case No. D2000-0672 (September 29, 2000) (finding that the complainant made the requisite showing under paragraph 4(a)(ii) where complainant argued that the domain name at issue had no value to the respondent apart from the goodwill and reputation associated with complainant’s mark).

Complainant argues that Respondent is not commonly known by <orlandivaluta.com> and could not possibly be known as <orlandivaluta.com> due to the coined nature of Complainant’s ORLANDI VALUTA mark. Respondent’s name does not appear in the <orlandivaluta.com> domain name, nor does Respondent’s name appear anywhere on the “www.orlandivaluta.com” website. Indeed, there is absolutely no connection between the <orlandivaluta.com> domain name and Respondent or any legitimate services offered by Respondent.

Lastly, Complainant submits that Respondent is not making a “legitimate non-commercial or fair use of the <orlandivaluta.com> domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. Policy 4(c)(iii). Respondent is incorporating Complainant’s ORLANDI VALUTA mark into the <orlandivaluta.com> domain name for the sole purpose of diverting Internet users from Complainant’s website to Respondent’s “pay-per-click” directory site. Such activities clearly constitute neither fair use nor non-commercial use. Due to the distinctive and coined nature of Complainant’s ORLANDI VALUTA mark, and the Respondent’s use of <orlandivaluta.com> to display pay-per-click advertisements for services that compete with Complainant, it is clear that Respondent has no legitimate rights or interests in the domain name. In contrast, Respondent is trading upon the goodwill associated with Complainant and its ORLANDI VALUTA mark.

3. The Domain Name Was Registered and Is Being Used in Bad Faith

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

Complainant contends that Respondent has registered and used the <orlandivaluta.com> domain name in bad faith under paragraph 4(b) of the Policy. Under paragraph 4(b), a respondent has registered and used a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy 4(b)(iv).

Complainant argues that in the present case, Respondent seeks to take advantage of Complainant’s ORLANDI VALUTA mark to attract traffic to its own site. Respondent registered and uses the <orlandivaluta.com> domain name to drive visitors to a directory site through which Respondent appears to be obtaining revenue for all clicks from Internet visitors.

Respondent is clearly attempting to benefit commercially by taking advantage of the identical nature of the <orlandivaluta.com> domain name and Complainant’s ORLANDI VALUTA mark.

Respondent’s efforts to “free-ride” on the goodwill of Complainant’s ORLANDI VALUTA mark clearly fall within the activities listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use of a domain name. See Yahoo! Inc. v. Casino Yahoo, Inc., and Jon Miranda, WIPO Case No. D2000-0660 (August 24, 2000) (finding that “[r]espondent has been trading on the value established by [c]omplainant in its marks to attract users to [r]espondent’s website. Clearly, [r]espondent has derived economic benefit from this practice, either by attracting users to [r]espondent’s website, where goods and services are offered, or by the receipt of compensation from the owner of the website for delivering users to that site, if the site is owned or operated by someone other than [r]espondent. This constitutes bad faith registration and use as defined by paragraph 4(b)(iv) of the Policy.”); Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 13, 2000) (finding the respondent had used <ruters.com> to attract Internet users to its website for commercial gain); Bang et Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728 (September 7, 2005) (finding that the respondent’s domain names triggered pop-up ads and forwarded Internet users to a web portal directory, and ruling that respondent had registered and used the domain names in bad faith).

Moreover, Complainant submits that Respondent’s registration of a domain name that is identical to Complainant’s ORLANDI VALUTA mark, which has been widely used in international commerce for more than fifteen years, is further evidence of bad faith. Because of the distinctive and coined nature of Complainant’s ORLANDI VALUTA mark, Respondent would not have registered the <orlandivaluta.com> domain name unless it intended to trade on the valuable goodwill and the prior and exclusive rights held by Complainant in the ORLANDI VALUTA mark. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (July 29, 2005) (finding bad faith when, inter alia, the respondent was aware, at the time of registration of the disputed domain names, of the prior and exclusive rights held by the complainant in the VOLVO trademark); SembCorp Indus. Ltd. v. Xin, WIPO Case No. D2001-1092 (November 26, 2001) (finding that the “surrounding circumstances would lead one to infer that the respondent `knew’ or `ought to have known’ of the existence/trademark rights of the complainant”). All the evidence suggests that Respondent’s registration of the <orlandivaluta.com> domain name was unquestionably calculated rather than accidental.

Complainant’s research has revealed that Respondent has registered a large number of additional domain names (at least 62 in number) and is using such domain names to display additional pay-per-click websites. Such registration of a large number of additional domain names, which are clearly unrelated to a legitimate business of Respondent, is according to Complainant further evidence of Respondent’s intent to use the <orlandivaluta.com> domain name for commercial gain based upon confusion with Complainant’s ORLANDI VALUTA mark. See Policy, para. 4(b)(ii) and (iv). For example, Complainant has identified the following websites: “www.411sports.com”, “www.vidblaster.com”, and “wtivw.centurioncap.com”, all of which are owned by Respondent, display pay-per-click websites, and appear to be trading upon the goodwill associated with legitimate products that are not owned by Respondent. Respondent’s pattern of domain name speculation and cybersquatting is yet additional evidence of Respondent’s bad faith registration and use of the <orlandivaluta.com> domain name. See e.g., University of Alberta v. Katz, WIPO Case No. D2000-0378 (June 22, 2000) (“The Respondent is clearly in the business of domain name speculation. ... This is sufficient without considering the use of the sites to conclude that the Respondent registered the Domain Names primarily for the purpose of selling the names for a profit and in bad faith.”); Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (March 20, 2001) (ordering the transfer of the domains at issue and finding that registration of fifteen domains that infringed various marks constituted a pattern of bad faith).

Finally, Complainant notes that Respondent has failed to maintain accurate Whois contact information for the <orlandivaluta.com> domain. Counsel for Complainant sent a demand letter to Respondent using the name and address provided in the registrar’s Whois database at the time the letter was sent in May 2006, which is the same contact information presently listed in the registrar’s Whois database. The letter, sent via certified mail, was returned to the sender after the U.S. Postal Service was unable to deliver it or forward it to a new address. Respondent’s failure to maintain accurate Whois contact information is further evidence of Respondent’s bad faith registration and use of the <orlandivaluta.com> domain name. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (finding bad faith where the respondent “has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made”); Morrison & Foerster, LLP v. Wick, NAF Case No. 94301 (April 17, 2000) (finding bad faith where the “[r]espondents intentionally ... failed to maintain accurate contact information, or have provided material and misleading false contact information”); Grupo Televisa, S.A. v. Autosya, S.A., WIPO Case No. DTV2001-0007 (June 11, 2001) (transferring domain name where supplying incorrect contact information was considered evidence of bad faith); CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242 (May 24, 2000); Lion Country Supply, Inc. v. J. Katz, WIPO Case No. D2003-0106 (April 8, 2003) (finding failure to maintain accurate contact information was “another indication of the [r]espondent’s bad faith”).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Based upon the foregoing evidence and the alleged facts presented by Complainant, all uncontested by Respondent, and the foregoing contentions and legal reasoning of Complainant, unopposed by Respondent, the Panel finds that the domain name <orlandivaluta.com> is identical and confusingly similar to Complainant’s widely known mark ORLANDI VALUTA which has become incontestable in the United States (Policy, para. 4(a)(i); Rules, paras. 3(b)(viii), (b)(ix)(1)).

B. Rights or Legitimate Interests

Based upon the foregoing evidence and the alleged facts presented by Complainant, all uncontested by Respondent, and the foregoing contentions and legal reasoning of Complainant, unopposed by Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name <orlandivaluta.com> (Policy, par. 4(a)(ii); Rules, Para. 3(b)(ix)(2)).

C. Registered and Used in Bad Faith

Based upon the foregoing evidence and the alleged facts presented by Complainant, all uncontested by Respondent, and the foregoing contentions and legal reasoning of Complainant, unopposed by Respondent, the Panel finds that Respondent registered and is using the domain name <orlandivaluta.com> in bad faith. (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3)).

 

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, <orlandivaluta.com>, be transferred to the Complainant.

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Terrell C. Birch
Sole Panelist

Dated: February 1, 2007