The Complainant is Cash Converters Pty Ltd. of Perth, Australia, represented by Wrays, Australia.
The Respondent is UGS (Uno Global Solutions) of Clarkston, Michigan, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC. 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 Wild West Domains, LLC a request for registrar verification in connection with the disputed domain name. On May 14, 2012, Wild West Domains, LLC 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 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2012. The Respondent did not submit any response within the due date. Accordingly, the Center notified the Respondent’s default on June 8, 2012.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on June 13, 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.
Regarding the language of the proceeding, the Center ascertained from the concerned Registrar, Wild West Domains, LLC, that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e., the language of the Registration Agreement. 4. Factual Background
The Complainant was founded in 1984 when the first “Cash Converters” store opened in Perth, Western Australia. Its line of business is the sale of second-hand goods and micro-finance. In 1988 the Complainant incorporated and began in 1990 to expand into other Australian states. It currently has 146 stores throughout Australia and over 600 stores in 16 countries around the world, including 6 in Singapore. The Complainant owns several Australian, United States and Singapore trademark registrations for the trademark CASH CONVERTERS, the earliest of which was registered in Australia with effect as of May 16, 1989.
In addition, the Complainant has registered and is using the mark CASH CONVERTERS as a domain name and is thus the proprietor of various domain names having the mark CASH CONVERTERS with gTLDs and ccTLDs such as “.”, “.”, “.”, “.fr”, “.es”, “.nl”, “.ca”, “.pt”, “be”, “.”, “.com” and “.net”.
The Complainant has made substantial investment in advertising and promoting the services bearing its mark CASH CONVERTERS, including in Singapore.
The disputed domain name was created on January 28, 2012. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name reproduces the mark CASH CONVERTERS in which the Complainant has rights, and is confusingly similar to that mark insofar as the disputed domain name contains that mark in its entirety.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent has not used, or made any demonstrable preparations to use, the disputed domain name, in connection with a bona fide offering of goods or services. Furthermore, the Complainant contends that the Respondent is not and cannot be said to be making any legitimate noncommercial or fair use of the disputed domain name, and has no connection to the owner of the mark CASH CONVERTERS and has received no authorization from the Complainant.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. It alleges that by registering the disputed domain name the Respondent has sowed confusion to Internet users because of the Complainant’s reputation and operation in Singapore since 1999 and that a consumer is likely to assume that the Complainant is the sponsor of or associated with the website identified by the disputed domain name since the Complainant offers in Singapore the services in respect of which the mark CASH CONVERTERS is registered. Moreover, passive holding amounts to bad faith use and by allowing the disputed domain name to resolve to a parking page hosted by a free parking service provider, which uses it to upload third party links, the Respondent has made illegal benefits from the disputed domain name. By intentionally attempting to attract for financial gain, Internet users to the Respondent’s website, by creating a deliberate confusion and/or deception with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, the Respondent is disrupting the legitimate use of the mark CASH CONVERTERS and is misleadingly diverting consumers.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not submit a formal response to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Aspects
On June 9, 2012, the Respondent sent an email communication to the Center. The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules. Accordingly, the Panel decides not to consider the email communication of June 9, 2012, and, in any case, the Panel considers the Respondent has not submitted anything that would alter the Panel’s findings.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. B. Requirements of Paragraph 4(a) of the Policy (i) Identical or Confusingly Similar
In comparing the mark CASH CONVERTERS to the disputed domain name, it is evident that the latter wholly incorporates the mark, followed by the geographical term “singapore”. The addition of geographical terms does not ordinarily serve to distinguish a domain name from registered marks. See Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany,WIPO Case No. D2004-1068; Advance Magazine Publishers, Inc. v. Aiyi Technologies Co., Ltd,WIPO Case No. D2003-0526; Advance Magazine Publishers, Inc. v. Models USA Inc.,WIPO Case No. D2002-0907; Advance Magazine Publishers Inc. v. Marcellod Russo,WIPO Case No. D2001-1049; Wal-Mart v. Walmarket Canada,WIPO Case No. D2000-0150.
In the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, it had been held that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”.
The Panel finds that the disputed domain name is confusingly similar to the mark CASH CONVERTERS, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. (ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as the Panel believes it has made in this case). See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a formal Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business. The website associated with the disputed domain name resolves to a free parking page with uploaded third party links, and no information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no legitimate interests in the disputed domain name; (ii) has no connection to or authorization from the Complainant; and (iii) has never made a fair use of the disputed domain name, in relation with a bona fide offering of goods and services and has not made demonstrable preparations of such use.
In the circumstances, the Panel is satisfied that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy. (iii) Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name similar to the Complainant’s mark.
It is well known that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA,WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Research in Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492.
Furthermore, the uncontradicted assertion that the services of the Complainant (bearing its mark CASH CONVERTERS) are available in the United States as well as in Singapore is also evidence of bad faith on the part of the Respondent in registering the disputed domain name confusingly similar to a mark used around the world. See VeriSign Inc. v. Bin g Glu / G Design,WIPO Case No. D2007-0421.
At the time the disputed domain name was registered, the Complainant had widespread, extensive use and advertisement of its mark CASH CONVERTERS for 22 years. The notoriety of the mark, coupled with its registration in the United States, where the Respondent is located, makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
The Panel also accepts that the Respondent’s website will directly or indirectly have generated revenue for the Respondent or whoever is responsible for the uploading of third party links on the page to which the Respondent’s website resolves. The fact that it might not be the Respondent who has derived the gain is irrelevant. See Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912.
It is also well established since Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003, that the mere passive holding of a domain name may in appropriate circumstances constitute bad faith use, and such opportunistic bad faith is precisely being suggested in this case.
Moreover, the Panel notes that many panels have held that bad faith use of a domain name by the respondent may also result from the fact its good faith use is in no way plausible (See Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Finally, some panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration, use and present holding of the disputed domain name indicate bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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.
Louis-Bernard Buchman
Sole Panelist
Dated: June 24, 2012
Full & Egal Universal Law Academy