The Complainant is Check Into Cash, Inc., United States of America (“U.S.” or “United States”), represented by Chambliss, Bahner & Stophel, U.S..
The Respondent is Hu Xiao, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2019. On June 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 10, 2019.
On June 7, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on June 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2019.
The Center appointed Francine Tan as the sole panelist in this matter on July 12, 2019. 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 Complainant states that it is a pioneer and industry leader in the short-term direct lending industry. It is headquartered in Cleveland, Tennessee, U.S. and has been operating for over 25 years.
The Complainant owns the trade mark CHECK INTO CASH which has been registered with the United States Patent and Trademark Office. The U.S. registrations include Registration No. 2256904, with a date of first use claim of June 1993 and registration date of June 29, 1999; Registration No. 4292267 with a date of first use claim of May 2009 and registration date of February 19, 2013; and Registration No. 3525178 with a date of first use claim of April 14, 2008 and registration date of October 28, 2008.
The Complainant asserts that extensive expense in advertising its services provided under the CHECK INTO CASH trade mark has been expended through various means such as direct-mail advertisement, national television and radio advertising, and outdoor billboards. The Complainant and its licensed affiliates prominently display the use of the CHECK INTO CASH trade mark at over 700 locations throughout the U.S.
The Complainant owns the domain name , which resolves to its website. The Complainant has conducted a significant level of online business from its website over the past 20 years. The Complainant’s domain name was registered on April 1, 1997.
The disputed domain names and were registered by the Respondent, without the Complainant’s consent, on September 27, 2018 and July 10, 2018 respectively. They resolve to a third-party website connecting customers with loan services which compete with those provided by the Complainant.
On May 2, 2019 the Complainant’s attorney sent a letter to the host of the Respondent’s websites, demanding the shutdown of the websites or transfer of the disputed domain names. No response was received.
Additionally, on May 3, 2019, it sent a letter to the third-party website’s contact email demanding that the third-party desist from accepting redirected online traffic from any website associated with the disputed domain names. Numerous attempts to send the email failed and “bounce-back” reports were received by the Complainant’s attorney. 5. Parties’ Contentions A. Complainant
The disputed domain names are almost identical to the Complainant’s CHECK INTO CASH trade mark. They incorporate the core of the said trade mark. The removal of a single letter from the disputed domain names (i.e. the letter “h” and the letter “e”, respectively) does not dispel the confusion with the Complainant’s CHECK INTO CASH trade mark. The Respondent is attempting to capitalize on typing errors by those seeking the Complainant’s website.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not sought or obtained a licence from the Complainant which has trade mark rights in CHECK INTO CASH. The Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services but is seeking to “typosquat”. There is no evidence that the Respondent is commonly known by the disputed domain names or that “Check Into Cash” is its legal name.
The disputed domain names were registered and are being used in bad faith. The Respondent registered the disputed domain names primarily for the purpose of disrupting the Complainant’s business and to attract, for commercial gain, Internet users to third-party websites that compete with the Complainant. It is not a coincidence that the Respondent who conducts business with the Complainant’s competitors registered the disputed domain names which incorporate the Complainant’s famous CHECK INTO CASH trade mark.
Further evidence of bad faith is also demonstrated by the fact that the Respondent stopped using the disputed domain names after the Complainant sent the cease and desist correspondence to the Registrar, web host and owner of the redirected website and did not respond in this proceeding. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Consolidation of the Proceeding
The Complainant requested consolidation of the proceeding in relation to the disputed domain names, pursuant to paragraph 10(e) of the Rules. The reasons put forward were that the disputed domain names:
i. are near identical variants of the term “checkintocash”;
ii. share the same Registrar;
iii. use the same web host;
iv. have nearly identical websites affiliated with them;
v. have the same purpose and function of redirecting Internet traffic to a website that works in concert with the Complainant’s competitors; and
vi. redirect Internet users to the exact same third-party website,
all of which demonstrate a common control of the disputed domain names by the Respondent.
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The Panel notes that the domain name holder is identical for the disputed domain names. It accordingly finds it appropriate for a consolidated decision to be issued in relation to the disputed domain names. 6.2 Preliminary Issue: Language of Proceeding
The Registration Agreements in this case are in Chinese but the Complaint was filed in English. The Complainant requested that English be adopted as the language of the proceeding on these grounds:
a) the Complainant is a U.S. company which has no business interests in China or Chinese-speaking countries;
b) the Complainant and its counsel are not conversant in Chinese;
c) the disputed domain names are in English and relate to loan services offered in the U.S.;
d) substantial costs would have to be incurred and a delay ensue should the Complainant have to furnish Chinese translations of the complaint and evidence filed; and
e) evidence supplied by the Registrar shows that the Respondent has registered other domain names in English/using language elements expressed in Latin characters and not Chinese.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. Paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Panel is persuaded by the arguments put forward by the Complainant and that the Respondent is, more likely than not, familiar with the English language. Notably, the disputed domain names comprise English words, albeit mis-spelt and are used in relation to loan services offered in the U.S.
The Respondent had the opportunity to rebut the Complainant’s statements and respond to the Complaint but failed to. For the Complainant to have Chinese translations prepared would result in a delay in the proceeding and significant costs, whereas the Panel finds no good reason to impose that requirement, taking into account paragraph10 (c) of the Rules and the Respondent’s failure to respond.
Accordingly, the Panel finds it proper to accept English as the language of the proceeding. 6.3 Substantive Issues A. Identical or Confusingly Similar
The Panel finds that the disputed domain names and are confusingly similar to the CHECK INTO CASH trade mark in which the Complainant has rights. The only differences between the disputed domain names and the Complainant’s trade mark lie in:
(i) the inclusion of the generic Top-Level Domain “.com” (which is a technical requirement of domain names and has no relevance to the issue of identity or confusing similarity); and
(ii) the absence of the letter “e” in the disputed domain name and the absence of the letter “h” in the disputed domain name .
The Panel finds that the mis-spellings of the words “check” and “cash” in the disputed domain names do not serve to avoid a finding of confusing similarity with the Complainant’s CHECK INTO CASH trade mark. This finding is consistent with what is reflected in section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.”
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent has been commonly known by the disputed domain names. Neither is there evidence showing that the Respondent is making a bona fide offering of goods and services or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers.
The Respondent failed to rebut the Complainant’s prima facie case. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The overall circumstances of this case further lead the Panel to also find that the disputed domain names were registered and used in bad faith. It is evident that the Respondent registered the disputed domain names with knowledge of the Complainant’s CHECK INTO CASH trade mark, seeing how the words which form the disputed domain names were mis-spelt and how they were used to redirect customers to a third-party website offering loan services which compete with those of the Complainant.
The circumstances of this case fall within paragraph 4(b)(iv) of the Policy. The disputed domain names contain sufficiently recognizable aspects of the Complainant’s CHECK INTO CASH trade mark, which gives rise to a strong presumption that the Respondent had registered the disputed domain names with the deliberate aim of attracting, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain names resolved.
The Panel therefore concludes that the third element of paragraph 4(a) of the Policy has been satisfied. 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 names and be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: July 15, 2019
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