The Complainant is Cash Converters Pty Ltd. of Perth, Western Australia, Australia, represented by Wrays, Australia.
The Respondent is Richard Abbott of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2012. On May 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2012. On May 23, 2012, the Center received an informal email communication from the Respondent in which he expressed a wish to cancel the disputed domain name since he had not been using it. On May 24, 2012, the Center informed the parties of the possibility of suspending the proceeding in order to explore a possible settlement. On May 29, 2012, the Center notified the suspension of the proceeding. On June 28, 2012, the Complainant requested the reinstitution of the proceeding. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment procedure on July 11, 2012.
The Center appointed Cherise M. Valles as the sole panelist in this matter on July 17, 2012. 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
The relevant trademark in this Complaint is CASH CONVERTERS which the Complainant uses in connection with pawn brokerage, appraisal and valuation services, financial and financing (including loan) services and the provision of information services relating to second hand dealer services. The Complaint is also based on the “Cash Converters” name and the name of the Complainant, Cash Converters Pty Ltd, which was incorporated on or about January 6, 1988. The Complainant owns 14 domain names that comprise the words “Cash Converters”.
The disputed domain name was registered on August 19, 2011. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on May 14, 2012, the Complainant asserts that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, CASH CONVERTERS, and the “Cash Converters” name, in the light of the fact that it wholly incorporates the Complainant’s Marks. The disputed domain name differs only from the registered trademark of the Complainant and the “Cash Converters” name in the addition of the descriptive words “48 hours”.
- The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
- The disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
In addition to the above-mentioned May 23, 2012 email communication, the Respondent sent three informal communications (generally to the same effect) to the Center on July 17, 19, and 20, 2012, respectively, but did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal reply in these proceedings and is therefore in default and the Panel may draw appropriate inferences therefrom. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant has registered rights in the CASH CONVERTERS trademark. The first CASH CONVERTERS trademark was registered in Australia on May 16, 1989 and has been in use in commerce in relation to pawn brokerage, appraisal and valuation services, financial and financing (including loan) services and the provision of information services relating to second hand dealer services. The Complainant has submitted evidence in Annex 3 to the Complaint demonstrating that it is the owner of multiple trademark registrations worldwide for the mark CASH CONVERTERS. In particular, the Complainant has registered trademarks in Australia and the United Kingdom, with two stores in Edinburgh, the city where the Respondent is located. The Complainant submitted evidence in Annex 4 to the Complaint that it owns numerous domain names that contain the words “Cash Converters”. The Complainant has submitted evidence in Annex 5 to the Complaint to assert its common law rights for the “Cash Converters” name. It has shown that the “Cash Converters” name has become a distinctive identifier associated with the Complainant and its services through substantial marketing and promotional activities. It has built a strong reputation since 1984 with over 630 stores in 16 countries around the world. Thus, the Complainant has both registered and unregistered rights in the CASH CONVERTERS trademark.
The Panel finds that the Complainant’s trademark is distinctive and well-known in the financial services industry. The Respondent’s domain name is confusingly similar to the Cash Converter trademark. The disputed domain name contains the dominant words in the Complainant’s trademark. The fact that the Respondent has a domain name that contains a mark owned by the Complainant supports the conclusion that the Respondent’s domain name is confusingly similar to trademarks in which the Complainant has rights.
The propriety of a domain name can be questioned under the Policy by comparing it to a trademark registered in any country. Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358. A comparison of the disputed domain name with the Complainant's Australian and UK trademark registrations indicates impropriety. Indeed, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446. See also Telstra Corporation v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423. The addition of “48hours” to the Complainant’s trademark is not sufficient to differentiate it and does not change the likelihood of confusion. Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709. The inclusion of the generic top-level domain (gTLD) “.com” must be disregarded for the purposes of comparing the two. Arthur Guinness Son & Co (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698.
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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.
The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Complainant submits that the Respondent has never been authorized by the Complainant to register a domain name incorporating the CASH CONVERTERS trademark and the Respondent has not made use of the disputed domain name in a way that establishes a legitimate interest arising from a bona fide offering of services and that the Respondent is not making a legitimate noncommercial or fair use of the name.
The Panel finds that the Respondent has no right or legitimate interest with respect to the use of the disputed domain name. There is no evidence that the Respondent had been commonly known by the disputed domain name and could therefore claim rights established by common usage.
The Respondent has made no use of, nor any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Similarly, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent is using the disputed domain name for the sole purpose of commercial gain by misleadingly diverting Internet users to the Respondent’s website and get-rich quick scheme entitled. “The '48 hour cash machine' – How to very easily gets loads of cash on demand in 48 hours or less”. The Respondent's use results in a connection to services that are competitive with those of the Complainant namely, pawn-broking and payday loan financial services. The Respondent is not authorized to use the CASH CONVERTERS trademark in connection with its website and has acquired the disputed domain name without any apparent intention of utilizing it in connection with legitimate goods or services.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate any such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Complainant submits that the Respondent registered and has used, and is continuing to use, the disputed domain name in bad faith.
The Panel finds that the Complainant’s trademarks are well-known in connection with financial and financing services, including loan services. The Respondent is using a domain name that is confusingly similar to trademarks in which the Complainant has rights. The Respondent’s use of the disputed domain name appears to be an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent is presumably familiar with the Complainant, its presence in the financial services industry, and its well-known trademarks. The Complainant has been using the CASH CONVERTERS trademark for over 24 years. Indeed, there is a Cash Converters store on the same street where the Respondent is located. The registration of a well-known trademark in a domain name, of which the Respondent must reasonably have been aware, constitutes opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Grp. Co.,WIPO Case No. D2000-0163 and Hardee’s Food Systems, Inc. v. Denise Jones,WIPO Case No. D2006-1571.
In addition, a domain name that incorporates a well-known trademark which is used to direct visitors to unconnected websites and/or competitor websites – as is the case here – has been held to constitute bad faith use of the domain name. See International Business Publishers, Inc. v. The Center for Business Intelligence, LLC,WIPO Case No. D2001-0181; Lifetime Products, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0719.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 name be transferred to the Complainant.
Cherise M. Valles
Sole Panelist
Dated: July 26, 2012
Full & Egal Universal Law Academy