Complainant is Cash Converters Pty Ltd of Perth, Australia, represented by Wrays, Australia.
Respondent is Frank Unger of Green Point, Western Cape, South Africa. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Blue Razor Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2014. On May 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 2, 2014.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 7, 2014. 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 states that it is “a well-known international pawn broking business” that is “a wholly owned subsidiary of Cash Converters International (CCI), a company listed on the Australian Stock Exchange.” Complainant further states that “[t]he Cash Converters business was originally established in 1984 with a single store in Perth, Western Australia” and that the business “has grown to 146 stores throughout Australia and over 700 stores in 21 countries around the world.”
Complainant has provided appropriate evidence to support its ownership of trademarks that consist of or include the mark CASH CONVERTERS (collectively, the “CASH CONVERTERS Trademark”), including Australian Trademark Nos. 510,693; 610,704; 610,705; 610,706; 806,655; 818,553; the earliest of which was registered on May 16, 1989. Complainant also states that it is the owner of a number of CASH CONVERTERS Trademarks in South Africa, including Reg. Nos. 2002/08050; 93/6075; 89/7103; 2000/04458; and 2000/04457; the earliest of which was registered on April 18, 1997.
The Disputed Domain Name was created on May 7, 2014. Complainant states, and provides evidence to support, that “Respondent has parked the Domain Name with Go Daddy, and it is currently resolved to a link farm that contains a variety of sponsored links,” including “links to financial service providers including Fox Symes, Money Start and , all of which provide short term loans.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights because, inter alia, the Disputed Domain Name contains the CASH CONVERTERS Trademark in its entirety and “the addition of the ‘.club’ does not serve to differentiate the Domain Name from the Cash Converters Trade Mark and therefore should not be considered in the question of identity or confusing similarity.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “the Respondent has never been authorised by the Complainant to register a domain name incorporating the Cash Converters Trade Mark”; “the Respondent has never been authorised by the Complainant to use the Cash Converters Trade Mark in any way whatsoever”; “the Respondent has not made any use of the Domain Name in a way that establishes a legitimate interest arising from a bona fide offering of goods or services”; and “the Respondent is not making a legitimate non-commercial or fair use of the Domain Name.”
- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, the Disputed Domain Name “is so obviously connected with the trade mark and company name of the Complainant and the Respondent has no connection to the Complainant [and] [t]herefore, its very use by someone with no connection with the Complainant suggests opportunistic bad faith” (internal punctuation and citations omitted); and “[t]he Respondent has demonstrated this bad faith registration and use, by registering the Cash Converters Trade Mark in a Domain Name to mislead the public and create a false association with the Complainant.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the CASH CONVERTERS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CASH CONVERTERS Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “cashconverters”), as it is well-established that the Top-Level-Domain (“TLD”) (i.e., “.club”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
The recent, and ongoing, launch of many new TLDs creates an interesting issue as to whether the TLD is relevant with respect to the Policy. See, e.g., DD IP Holder LLC v Manpreet Badhwar, NAF Claim No. 1562029 (in finding the domain name confusingly similar to the mark DUNKIN’, the panel noted that “[i]t is well established that a panelist should normally ignore the gTLD element when making a comparison between a complainant’s mark and a domain name” but then went on to state that “because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.” In any event, the Panel here agrees with Complainant that “in this case, the ‘.club’ TLD suffix is insufficient to differentiate the Domain Name from the Cash Converters Trade Mark.”
Because the Disputed Domain Name contains the CASH CONVERTERS Trademark in its entirety, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, “the Respondent has never been authorised by the Complainant to register a domain name incorporating the Cash Converters Trade Mark”; “the Respondent has never been authorised by the Complainant to use the Cash Converters Trade Mark in any way whatsoever”; “the Respondent has not made any use of the Domain Name in a way that establishes a legitimate interest arising from a bona fide offering of goods or services”; and “the Respondent is not making a legitimate non-commercial or fair use of the Domain Name.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, among other things, Complainant has argued that Respondent’s use of the Disputed Domain Name in connection with a parking page with “links to financial service providers including Fox Symes, Money Start and , all of which provide short term loans” in competition with Complainant constitutes bad faith. Numerous panels repeatedly have agreed with this argument. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Accordingly, the Panel finds that Complainant has proven 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 Name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: July 22, 2014
Full & Egal Universal Law Academy