Complainant is Speedy Cash Intermediate Holdings Corp. of Wichita, Kansas, United States of America, represented by Hovey Williams LLP, United States of America.
Respondent is William Kerk, HA Will Inc. of Los Angeles, California, United States of America (the “United States”). 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 31, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2016, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 8, 2016.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 20, 2016. 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 is a short-term loan and financial services company, with a presence in the United States, Canada, and the United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”). Complainant used the service mark SPEEDY CASH in commerce at least as early as 1998. Complainant obtained two service mark registrations for this mark from the United States Patent and Trademark Office in 2005 and 2009.
Complainant also operates a website at the domain name , which was originally registered on April 30, 2002.
The disputed domain name, , was registered with GoD on September 9, 2014. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to its SPEEDY CASH service marks because it consists of Complainant’s mark in its entirety, with a merely descriptive additional term, “go.”
Complainant also alleges that Respondent has no legitimate rights or interests in the disputed domain name because Complainant has given no license or authorization to Respondent for the use of the SPEEDY CASH marks. Complainant alleges that the Respondent’s use of the disputed domain name – for a payday loans matching service advertising the Complainant’s competitors – does not amount to a bona fide offering of goods or services.
Finally, Complainant alleges that Respondent had at least constructive notice of the SPEEDY CASH marks because of Complainant’s significant presence in the United States, Canada, and the United Kingdom, as well as Complainant’s service mark registrations at the United States Patent and Trademark Office. Complainant asserts that once Respondent has lured customers to the disputed domain name, the customer’s personal information is fraudulently obtained as part of a “phishing” scam, thereby demonstrating that Respondent registered the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that: “The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 14(b) of the Rules further provides that: “If a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”
The failure of Respondent to respond does not automatically result in a favorable decision to Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. The three elements are assessed below. A. Identical or Confusingly Similar
Complainant has demonstrated rights to the SPEEDY CASH marks. Complainant first used the marks in commerce in 1998, and has made continuous use of them since then. Complainant has two service mark registrations with the United States Patent and Trademark Office, and established a significant presence in the short-term lending market with 230 physical locations. The SPEEDY CASH marks are in use at all 230 locations, as well as on Complainant’s website at the domain name .
The disputed domain name incorporates Complainant’s SPEEDY CASH mark, with the mere addition of the word “go.” The consensus view, with which the Panel concurs, is that “[n]either the addition of an ordinary descriptive word (either as prefix or suffix) nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark.” Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (). In this case, the addition of an ordinary descriptive verb such as “go,” to suggest speed or action, is not sufficient to detract from the overall impression that the disputed domain name is confusingly similar to the SPEEDY CASH mark. See Palm Green Capital Limited, HMV Retail Limited v. Mike Blake, Geecom,WIPO Case No. D2015-0761 () (finding the mere addition of “go-online” after complainant’s trademark insufficient to avoid a finding of confusing similarity); Louis Vuitton Malletier v. Luo Cheng,WIPO Case No. D2009-1521 () (finding the addition of the word “go” before complainant’s mark “Vuitton” did not avoid a finding that the disputed domain name was confusingly similar to complainant’s marks).
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The consensus view, with which the Panel agrees, is that while the overall burden of proof is borne by Complainant, when a complainant is (as here) faced with the impossible task of proving a negative, it need only make out a prima facie case before the burden of production shifts to Respondent.
Here, Complainant registered a SPEEDY CASH mark nine years prior to Respondent’s registration of the disputed domain name on September 9, 2014. Complainant’s own website at the domain name was operational for twelve years prior to Respondent’s registration of the disputed domain name. Further, the Panel notes that Respondent does not appear to be commonly known as .
There is also no evidence demonstrating any legitimate noncommercial or fair use of the disputed domain name by Respondent. To the contrary, the disputed domain name appears to mimic the short-term loans and financial services offered by Complainant, and uses Complainant’s text mark SPEEDY CASH in an apparent effort to confuse consumers. Moreover, once consumers arrive at the site to which the disputed domain name resolves, they input personal information and are matched with a short-term lender – often Complainant’s competitors. These consumers were likely seeking out Complainant’s website and services, and through the disputed domain name become the victim of a classic bait-and-switch. See Donald J. Trump v. Mediaking d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404.
Further, while the disputed domain name does contain a disclaimer that it is not itself a financial services company, the disclaimer cannot be accessed from the disputed domain landing page. Rather, it can only be accessed via a link inconspicuously located at the bottom of the disputed domain name’s landing page. In this case, the hidden disclaimer does not provide evidence of legitimate interest in the disputed domain name, nor does it cure the initial and illegitimate diversion. See Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869.
Complainant confirms that it has not licensed or authorized Respondent to use any of its marks.
Respondent’s failure to respond, coupled with Complainant’s prima facie case, are indicative that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
First, Complainant’s reputation, physical presence at 230 store locations, and presence on the Internet at suggest a sufficiently widespread footprint such that Respondent can be presumed (at least absent contrary evidence, of which there is none) to have known of the marks prior to registering the disputed domain name. Respondent’s registration and use of the disputed domain name incorporating Complainant’s mark, as well as its use of Complainant’s mark on the site while linking to competitors’ websites, indicates an attempt to lure users into believing that those sites are in some way associated with, authorized by or connected to Complainant. Respondent’s use of the disputed domain name is thus apparently designed to misdirect Complainant’s actual or potential customers. See Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517.
Second, the disputed domain name requires a user to reveal personal data, such as zip code, desired loan amount, and email prior to being matched with a short-term loan provider. It is likely that Respondent benefits commercially from this phishing scheme. The solicitation of such personal information is indicative that Respondent registered the disputed domain name in bad faith. See Expedia, Inc. v. Abdenbayeva Aigerim,WIPO Case No. D2014-2152.
Third, the record shows that Respondent has engaged in a pattern of registering domain names that bear striking resemblance to other short-term lenders. Specifically, Complainant completed a reverse WhoIs search, and Respondent appears to have registered twenty domain names that closely mimic short-term lenders, including the following: , , and . Moreover, a previous panel found a domain name mimicking another short-term lender, registered by Respondent, to have been registered in bad faith. This pattern of conduct demonstrates bad faith on the part of Respondent. See Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798; Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968.
The Panel finds that Complainant has satisfied 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 Complainant.
Michael A. Albert
Sole Panelist
Date: July 26, 2016
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