WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Check Into Cash Inc. v. Texas International Property Associates - NA NA Case No. D2008-1699 1. The Parties
The Complainant is Check Into Cash Inc., of Cleveland, Tennessee, United States of America, represented by Chambliss, Bahner & Stophel P.C., United States.
The Respondent is Texas International Property Associates - NA NA, of Dallas, Texas, United States, represented by the Law Office of Gary Wayne Tucker, United States. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with Compana LLC d/b/a B. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2008. On November 7, 2008, the Center transmitted by email to Compana LLC d/b/a B a request for registrar verification in connection with the disputed domain names. On November 10, 2008, Compana LLC d/b/a B 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2008. The Response was filed with the Center on December 8, 2008.
The Center appointed R. Eric Gaum as the sole panelist in this matter on January 27, 2009. 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
Complainant has obtained the following trademark registrations (the “CHECK INTO CASH” marks):
(a) United States trademark Registration No. 2,256,904 for CHECK INTO CASH for “consumer loan financing and check cashing services featuring deferred presentment and delayed deposit;” and
(b) United States trademark Registration No. 2,266,693 for CHECK INTO CASH CASH ADVANCE and Design for “consumer loan financing and check cashing services featuring deferred presentment and delayed deposit.”
In 1997, Complainant registered the domain name for the purpose of advertising its CHECK INTO CASH financial services.
Respondent registered the disputed domain names, www. (on 1/30/05) “www.” (on 12/6/05), “www.” (on 7/6/05) and “www.” (on 2/19/05). 5. Parties' Contentions A. Complainant
Complainant owns the exclusive right to use the service mark CHECK INTO CASH. Since 1993, Complainant, or its predecessor in interest, has used the mark CHECK INTO CASH to advertise its financial services. Complainant and its licensed affiliates currently operate 1,250 financial services businesses, which offer “payday loans” and other financial services across the United States under the name CHECK INTO CASH. Complainant also offers its services online through its website at “www.”.
Respondent's use of the disputed domain names is likely to cause deception, mistake and confusion among consumers seeking information with regard to the services of Complainant. The disputed domain names are nearly identical to Complainant's CHECK INTO CASH marks. The disputed domain names are intentional misspellings of Complainant's CHECK INTO CASH mark, presumably to capitalize on a user's accidental stroke of the keys. Respondent has not sought or obtained a license from Complainant.
Further, Respondent cannot show it is using the disputed domain names in connection with “a bona fide offering of goods or services” under paragraph 4(c)(i) of the Policy. On each site, there are competitor advertisements and a search portal leading to more competitor ads. Upon information and belief, Respondent is earning pay per click advertising revenue when users click the advertising links on the sites. When a search portal is tied to a valuable trademark, previous panelists have found abusive cybersquatting and thus no bona fide offering of goods or services.
Respondent also cannot show, under paragraph 4(c)(iii) of the Policy, it is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain and intent to mislead consumers. Respondent is using, or has authorized the use of, the disputed domain names to participate in a revenue-generating program whereby it uses Complainant's mark to direct traffic to competitor sites.
There is also no evidence that the disputed domain names are the actual legal name of Respondent or a name that is commonly used to identify Respondent without violating Complainant's trademark rights.
By registering domain names that are misspellings of the CHECK INTO CASH marks, Respondent is clearly competing with Complainant for the attention of Internet users, which it hopes to divert to competitor's sites.
Respondent's actions also satisfy paragraph 4(b)(iv) of the Policy because by using the disputed domain names to attract, intentionally for commercial gain, Internet users to their website, it has created a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Finally, additional evidence of bad faith is Respondent's registration and use of multiple domain names similar to Complainant's CHECK INTO CASH marks. B. Respondent
Respondent herein agrees to the relief requested by Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the policy but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
Where Complainant has sought transfer of a disputed domain name, and Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course.
If the Panel decides that analysis is required, Respondent respectfully requests that Respondent be given the opportunity to prepare a more formal response. 6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy sets forth three elements that must be established by Complainant to merit a finding that Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent's domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent's domain names have been registered and are being used in bad faith.
In the administrative proceeding, Complainant must prove that each of these three elements are present.
6.2 Respondent did not provide a substantive response to the Complaint. Instead, Respondent provided an offer of “unilateral consent to transfer,” without making an admission to the three elements of paragraph 4(a) of the Policy. The Respondent also requested that if the Panel decides that analysis is required, that it be given the opportunity to prepare a more formal response.
6.3 The Panel has decided that analysis is required but denies the Respondent's request to be given the opportunity to prepare a more formal Response. The time to provide a formal response has already passed. Respondent should have provided a formal response to the Complaint during the time provided under the Policy.
6.4 As the Respondent has failed to submit a formal Response to the Complaint, the Panel may accept as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. A. Identical or Confusingly Similar
6.5 Based upon the registered trademarks for CHECK INTO CASH and the continuous use of the marks, the Complainant clearly has rights in the marks.
6.6 Complainant asserts that the domain names , , and are nearly identical and confusingly similar to the CHECK INTO CASH marks because they are intentional misspellings of Complaint's marks.
6.7 The Panel agrees with Complainant. It's clear that the disputed domain names are nothing more than intentional misspellings designed to capitalize on a user's accidental stroke of the keys.
6.8 The Panel finds that the , , and domain names are nearly identical and confusingly similar to the registered CHECK INTO CASH trademarks, and that Complainant has established it has rights in the CHECK INTO CASH marks, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.9 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
6.10 Based on the allegations above, Complainant has established a prima facia case that Respondent has no rights or legitimate interests in the disputed domain names, and thus the burden shifts to the Respondent to show otherwise. There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain names , , and .
6.11 The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names , , and pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.12 Under paragraph 4(b)(iii) of the Policy, a finding by the Panel that Respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor” is evidence of registration and use in bad faith. By registering domain names that are misspellings of the CHECK INTO CASH marks, Respondent is clearly competing with Complainant for the attention of Internet users, which it hopes to divert to competitor's sites.
6.13 Respondent's actions also satisfy paragraph 4(b)(iv) of the Policy because by using the domain names to attract, intentionally for commercial gain, Internet users to their website, it has created a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
6.14 The Panel finds the Complainant has established that the Respondent registered and used the domain names , , and ” in bad faith, pursuant to paragraph 4(b)(iv) of the Policy. 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 names, , , and be transferred to the Complainant.
R. Eric Gaum
Sole Panelist
Dated: February 11, 2009
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