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August 23, 2010 / Nate Harris

Travellers Exchange Corp. Ltd. v. FairFX Plc.

Summary of Travellers Exchange Corp. Ltd. v. FairFX Plc.
(WIPO Case No. D2010-1056)
Filed June 25, 2010; Decided July 29, 2010 (Panelist: Jonathan Turner)

Domain Names: <travelexexpensive.com> and <travelexpensive.com>

travelexpensive.com

travelexpensive.com

The Parties

Complainant Travelellers Exchange Corporation Ltd. of London (“Travelex”) has operated a large retail currency exchange business under the mark TRAVELEX since the 1970s, and has used and registered the mark around the world.

Respondent FairFX Plc. is a competitor of Travelex, and has been in the currency exchange business since 2006.

Both of Respondent’s disputed domain names returned the page shown in the screen shot above– the telescoped word “travelexpensive”, with the formative “travelex” in blue and “pensive” in red (obviously playing on the shared “ex” to achieve the effect of “Travelex expensive”). The sites pointed out that Travelex charges 5.75% to “cash in” unused foreign currency, and suggested using FairFX as an alternative to Travelex.

Travelex alleged that the domains were registered in bad faith and were being used to disrupt its business and create confusion among consumers. Respondent asserted to the contrary that it was merely engaging in legitimate comparative advertising.

Identical or Confusingly Similar

There was no dispute that Travelex had rights in the mark TRAVELEX. Thus, the only question was whether either of the disputed domain names was identical or confusingly similar. The Panel cites Section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions [an insightful read] to remind the parties that the content of the pages returned by the disputed domain names was irrelevant to this prong of the test. “[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 [sic] that the domain name is confusingly similar.”

In the Panel’s view, <travelexpensive.com> would clearly be read as the words “travel” and “expensive”; though the word “Travelex” does appear in the domain name, followed by the word “pensive”, most Internet users would not read the domain to contain those words. Thus, the Panel finds that <travelexpensive.com> is not identical or confusingly similar to Travelex’s mark. This ends the inquiry for that disputed domain name.

The Panel finds that that <travelexexpensive.com>, on the other hand, would be read by most Internet users as Travelex’s mark followed by the 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.

[I wonder if people would think “pensive” is also a negative term? I’m going to have to give that some thought.]

Thus, the Panel finds that <travelexexpensive.com> is confusingly similar to Travelex’s mark, and continues its analysis for that domain name.

Rights or Legitimate Interest

The Panel indicates that FairFX has a right to “carry[] out comparative advertising objectively comparing specific characteristics of the parties services on the Internet, for example on the Respondent’s principal website[.]” Here, however, FairFX has used the domain name <travelexexpensive.com> to misleadingly divert or tarnish Travelex’s mark and promote its own services. According to the Panel, FairFX has not used the domain name in connection with a bona fide offering of goods or services.

Therefore, the Panel finds that FairFX has not demonstrated its rights or legitimate interest in the mark.

Bad Faith

The Panel finds that FairFX used <travelexexpensive.com> to intentionally create confusion with Travelex’s mark. “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.”

Thus, the domain was registered and used in bad faith in accordance with Paragraph 4(b)(iv) of the UDRP.

Decision

The Panel orders that <travelexexpensive.com> be transferred, but the complaint regarding <travelexpensive.com> is denied.


Commentary

It’s interesting that <travelexexpensive.com> gets lumped in with the “sucks” domain cases discussed under Section 1.3 of the WIPO Overview. That doesn’t make a difference under the majority view, where the negativity of the word is irrelevant; the point is that any word, negative or not, cannot mitigate the confusion arising from the presence of a complainant’s mark. However, the negativeness of “expensive” could make a difference under the minority view, which states that a negative term should tip Internet users off that they’re not visiting the mark owner’s site. “Expensive” is clearly negative, at least in the context of…everything, but I don’t think it jumps out at you the way “sucks” does. I think Internet users would have to visit the site to understand the name; I don’t think “expensive” is so negative that it immediately tips the consumer off that the site is not associated with the mark owner.

Epilogue

8/19/2010: <travelexpensive.com> is unchanged since the complaint was filed; <travelexexpensive.com> returns a “Page not found” error.

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