Travellers Exchange Corporation Limited v YATING

WIPO Case No. D2024-3500

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Travellers Exchange Corporation Limited v. YATING

Case No. D2024-3500

1. The Parties

The Complainant is Travellers Exchange Corporation Limited, United Kingdom (“UK”), represented by

Deloitte LLP, UK.

The Respondent is YATING, Taiwan Province of China.

2. The Domain Names and Registrar

The disputed domain names <travelex-ltd.com> and <travelex-compy.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2024. On August 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 29, 2024, the Registrar transmitted by email to the Center its verification response 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” or “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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2024.

The Center appointed Francine Tan as the sole panelist in this matter on October 1, 2024. 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.

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4. Factual Background

The Complainant states that it and its group of companies operate a market-leading foreign exchange business which spans across 60 countries, covering the entire value chain of the retail foreign exchange industry. The Complainant and its group are known by the name, trade mark or sign “Travelex”, which has become a trusted and widely-recognized brand in foreign exchange, as a result of 45 years of operations.

Travelex operates stores in the world’s top international airports by international passenger numbers, in major transport hubs, premium shopping malls, high street locations, supermarkets and city centers. It also has a large network of over 900 ATMs. The Complainant’s global revenue for the year ending December 31, 2019, was over 659 million pounds sterling.

The Complainant has widely advertised its goods and services under the TRAVELEX mark across the world, including through print media (newspapers and magazines), billboards, television and on the Internet. It has also in the past engaged in significant sponsorship activity under the TRAVELEX trade mark, in the field of sports and culture. Travelex has received numerous awards and nominations.

The Complainant owns numerous trade mark registrations for TRAVELEX including:

- Taiwan (Province of China) Trade Mark Registration No. 90042669, registered on January 1, 2003;

- UK Trade Mark Registration No. 01343462, registered on September 20, 1991;

- United States of America Trade Mark Registration No. 1694803, registered on June 16, 1992; and The Complainant owns a portfolio of domain name registrations incorporating its TRAVELEX trade mark, including <travelex.com>, which was registered on March 9, 1996. It operates websites at <travelex.com>, <travelex.co.uk>, and <travelex-corporate.com>, amongst others.

- European Union Trade Mark Registration No. 009145285, registered on November 12, 2010.

The disputed domain names were registered on February 27, 2024, and as at the time of the filing of the

Complaint, resolved to error message pages.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that:

- The disputed domain names contain the distinctive TRAVELEX trade mark in the first part. The only other elements comprise of a hyphen, followed by the term “ltd” (in the first disputed domain name) and a hyphen followed by the term “compy” (in the second disputed domain name). “Ltd” is generally accepted to refer to a limited company, indicating that the first disputed domain name is being used in relation to a

business. “Compy” appears to be an abbreviation or slang term for a computer. Both are highly generic and do not serve to distinguish the disputed domain names from the Complainant’s TRAVELEX trade mark, “travelex” being the dominant element in the disputed domain names. Panels in earlier UDRP panel
decisions have found TRAVELEX to be an internationally well-known trade mark;

- The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent appears to be a Taiwan-based individual. The Respondent is not employed by or work with the Complainant. He/she is not a licensee of the Complainant, and has not been authorized to use the

Complainant’s trade marks;

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- The disputed domain names do not resolve to active websites showcasing any legitimate business or operations under the TRAVELEX trade mark. There is no evidence that the Respondent might be commonly known by the disputed domain names or that the Respondent is preparing to make legitimate noncommercial or fair use of the disputed domain names in connection with a bona fide offering of goods or services; and

- The disputed domain names were registered and are being used in bad faith. It is implausible that the registered the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain names. The addition of the hyphen and letters “ltd” and “compy” in the respective disputed domain names does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s TRAVELEX trade mark for the

purposes of the Policy, WIPO Overview 3.0, sections 1.7 and 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel finds this case to be a typical case of cybersquatting. The disputed domain names were registered long after the Complainant’s business under the TRAVELEX trade mark was established. The disputed domain names incorporate the entirety of the Complainant’s distinctive and well-known trade mark. The Panel is persuaded that the Respondent knew of and targeted the Complainant and its TRAVELEX trade mark at the time he or she registered the disputed domain names. Moreover, the Respondent’s lack of rights or legitimate interests in the disputed domain names and failure to explain his or her choice of the disputed domain names, further support a finding of bad faith in this case.

The disputed domain names do not appear to have been used. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trade mark as well as the composition of the disputed domain names, and finds that in the circumstances of this case, the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. Accordingly, the Panel concludes that the disputed domain names have been registered and used in bad faith.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <travelex-compy.com> and travelex-ltd.com> be transferred to the Complainant.

/Francine Tan/ Francine Tan Sole Panelist Date: October 15, 2024