The Complainant is Cash Converters Pty Ltd of Perth, Australia, represented by Wrays, Australia.
The Respondent is Casshies Investments Pty Ltd of Wodonga, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with AussieHQ Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 13, 2013. On December 13, 2013, the Center transmitted by email to AussieHQ Pty Ltd. a request for registrar verification in connection with the disputed domain name(s). On February 7, 2014, after extended correspondence between the registrar and the Center, AussieHQ Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 13, 2014.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 February 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 11, 2014.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on March 19, 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. Procedural Order
It was unclear from the Complaint and from correspondence between the Center and the Registrar what was the date on which the Disputed Domain Name was created.
The Panel therefore caused to be issued a Procedural Order directing the Complainant to determine from .au Domain Administration Ltd (auDA) the date on which the Disputed Domain Name was registered to the Respondent.
In response to that Order the Complainant, on April 14, 2014, submitted evidence from auDA showing that the date of creation of the Disputed Domain Name was April 15, 2004. 5. Factual Background
The Complainant is an Australian corporation. It carries on business throughout Australia and elsewhere in the provision, inter alia, of loans through outlets which are either corporately owned or are franchised. The Complainant commenced operations in Australia in 1984 and operates through over 140 outlets throughout Australia including in the states of New South Wales and Victoria. It operates in 21 countries worldwide through approximately 500 franchised outlets. The Complainant is the owner of Australian Registered Trade Mark No. 1075309 for CASHIES registered in Classes 45, 36 and 42 since September 13, 2005. Its average Australian turnover over the past five years has been in excess of AUD 300 million per year. The gross revenue of the Complainant's parent company Cash Converters International Limited was over AUD 186 million.
The rights and reputation of the Complainant in the trade marks CASHIES and CASH CONVERTERS has been recognized, respectively, in two decisions of the Australian Trade Marks Office ("the Oppositions") and in prior decisions under the Policy and other Domain Name Dispute resolutions polices and services. See for example Cash Converters Pty Ltd v. Whios Agent / Profile Group,WIPO Case No. D2013-0689.
The website at the Disputed Domain Name currently shows a static image of the word "CASSHIES" with the letters "SS" rendered as dollar signs and includes the words "New Website Coming Soon!" and "Casshies Wodonga: (02) 60244223".
The Respondent was registered in New South Wales on September 26, 2002. Its registered office was in Wagga Wagga, New South Wales and its principal place of business was 133 High Street, Wodonga, Victoria. It was deregistered on February 20, 2012. Upon deregistration the remaining assets of the Respondent vested in the Australian Securities and Investment Commission pursuant to section 601AD of the Corporations Act 2001. In view of the unusual circumstances of this case the Panel has, pursuant to the powers conferred by paragraph 10 of the Rules, made limited searches of the "White Pages" directory to ascertain certain facts not apparent on the face of the Complaint and the annexures (see paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
Those investigations show that:
- there is a current listing for "Casshies", number (02) 60246223, at 133 Hight St, Wodonga, Victoria;
- there is a current listing for the Complainant at 32 Hight St, Wodonga; 6. Parties' Contentions A. Complainant
The Complainant contends that it has established common law and registered rights in the trade mark CASHIES and the Disputed Domain Name is substantially identical or confusingly similar to CASHIES, differing from it only by an additional "S".
The Complainant further contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name since it registered it long after the Complainant established its rights in the trademark CASHIES, it has not made bona fide use of it in offering goods or services or otherwise and is not commonly known by the Disputed Domain Name. Further, the Complainant contends, citing Pepper Australia Pty Ltd v. Massive Networks Pty Ltd, Scott Julian, WIPO Case No. DAU2012-0007, that as a deregistered company the Respondent cannot have any rights or legitimate interests in the Disputed Domain Name and is not able to hold it. The Complainant asserts that on deregistration of the Respondent the Disputed Domain Name vested in the Australian Securities and Investments Commission (ASIC) pursuant to section 601AD of the Corporations Act (C'wealth) and that in order to obtain a transfer of the Disputed Domain Name from ASIC it would have to obtain an order of a Court pursuant to section 601AH(3) of the Act. The Complainant submits that it is contrary to the intent of the Policy to require it to bring expensive and complex court proceedings.
The Complainant further contends that the Respondent is not commonly known by the Disputed Domain Name and that the Respondent is not making a bona fide use of the Disputed Domain Name in the offering of goods or services nor is it making a legitimate non-commercial or fair use. According to the Complainant the Disputed Domain Name is not now being used but is being passively held by a controller who is hiding behind a deregistered company in an effort to subvert the auDRP process.
The Complainant contends that both the registration and subsequent use of the Disputed Domain Name has been in bad faith. The Complainant asserts that prior to the registration of the Disputed Domain Name it had rights in the name "Cashies" and that the Respondent knew or ought to have known of those rights which it could have ascertained by searches such as trade mark searches. B. Respondent
The Respondent did not respond to the Complaint. 7. Discussion and Findings
Although no Response was filed the Panel nevertheless has a duty to determine whether or not on the balance of probability, all the elements of paragraph 4(a) of the Policy are made out. A. Identical or Confusingly Similar
The Complainant is the registered owner of the trade mark CASHIES and therefore has rights in that mark. The Complainant also claims rights in the name and trade mark CASH CONVERTERS.
The Disputed Domain Name differs from the Complainant's trade mark only by the inclusion of an additional "s" and the country code Top-Level Domain ".". The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant's CASHIES trade mark. In the Panel's view it is not confusingly similar to the Complainant's CASH CONVERTERS name and mark. Rights or Legitimate Interests and Registration or Use in Bad Faith Preliminary Issue
As part of its argument the Complainant contends that as a deregistered entity the Respondent no longer has any rights and that on deregistration the Disputed Domain Name (as property of the Respondent), vested in ASIC. Whether that is correct as a matter of law may depend in part on whether a domain name is in fact "property" for the purpose of the Corporations Act. That is a complex question for which, in the Panel's view, there is no clear authority in Australia.1
In short, the Panel considers that, while the legal position in Australia is unclear as to the status of domain names as property or otherwise, there was a reasonable argument, based on the decision in Hoath (see footnote 1) and decisions in other common law jurisdictions that, notwithstanding paragraph 2.1 of the Eligibility Rules, the domain name licence vested in ASIC on deregulation of the Respondent Company. The Panel therefore issued Procedural Order No. 2, informing ASIC of the proceeding and inviting its comment.
In response to Procedural Order No. 2, ASIC stated that:
- the Respondent was deregistered on February 20, 2012;
- on deregistration all non-trust property owned at deregistration belongs to ASIC;
- ASIC would strongly object to being substituted as the Respondent in the proceeding;
- it would attempt to contact the former directors;
- it would consider executing a transfer of the Disputed Domain Name under the broad discretionary powers conferred by s. 601AF of the Corporations Act.
In the light of the above, notwithstanding the absence of clear Australian authority, to the extent necessary and for the purposes of the instant decision only, the Panel considers it reasonable to proceed on the basis that on deregistration of the Respondent the Disputed Domain Name vested in ASIC.
It may therefore follow that ASIC is the "holder" of the Disputed Domain Name for the purpose of the definition of "Respondent" in paragraph 1 of the Rules. This might strictly require ASIC to be named as a Respondent but in the light of the decision ultimately reached below it matters little whether ASIC is named as a Respondent or not.
The Panel therefore proceeds, by analogy with cases involving privacy or proxy services, to deal with the matter on the basis that, in relation to events after the deregistration of the company on February 20, 2012, reference to the Respondent may include reference to ASIC merely as a matter of formality, but that for the purposes of rendering a decision, it is the behavior of the Respondent "Casshies Investments Pty Ltd" that is relevant for analysis under the Policy . B. Rights or Legitimate Interests
The Respondent was incorporated on September 26, 2002 under the name Casshies Investments Pty Ltd and continued under that name until its deregistration in 2012. The Disputed Domain Name was created on April 15, 2004 and incorporates the dominant particular of the Respondent's name. The Complainant did not register its CASHIES trademark until September 13, 2005 and, according to the Complainant's evidence in the Oppositions, did not actively promote that mark until 2010. In other words, according to the evidence submitted by the Complainant, from 1984 until 2005 (or later) the Complainant was doing business as "Cash Converters" and not as "Cashies"; that is, the Complainant has not alleged any basis for common law or unregistered rights in the CASHIES mark on which it could be claimed that the Respondent's interests were not legitimate, or could be otherwise considered as being in bad faith. Accordingly, there is no basis upon which it may be concluded that, as alleged by the Complainant, the Respondent registered the Disputed Domain Name in full knowledge of the Complainant's rights or that they could have been discovered by trademark searches. Contrary to the Complainant's assertion the creation of the Disputed Domain Name predates any demonstrated rights of the Complainant. Again, contrary to the Complainant's assertion the Disputed Domain Name has not been the subject of passive holding. A shows that at least since July 17, 2008 the Disputed Domain Name has directed to a site displaying the Respondent's name, trade mark and telephone number in the manner described in paragraph 5 above. Even though the display is static it still advertises the Respondent and its services. The use is therefore not passive and does not come within the rationale in Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel therefore finds that up to the time of its deregistration the Respondent had rights and legitimate interests in the Disputed Domain Name.
Upon deregistration the rights and interests of the Respondent devolved to ASIC which took the Disputed Domain name subject to the same rights and interests of the company (see Vitamins Australia Ltd v. Beta-Carotene, supra).
The Panel therefore finds that the Complainant has failed to show that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered or Subsequently Used in Bad Faith
As discussed in paragraph B above the Disputed Domain Name was created before the Complainant had any demonstrated rights in its CASHIES trade mark. There is no basis therefore upon which the Panel might find that the Disputed Domain Name was registered in bad faith.
Nevertheless, unlike the UDRP, the auDRP would allow the Complainant to satisfy the third element of the Policy by showing either bad faith in the registration of the Disputed Domain Name or by showing subsequent bad faith use of the Disputed Domain Name. As such, the Panel will now inquire into whether the Disputed Domain Name has been used in bad faith. The Complainant repeats in relation to this ground the assertions made in relation to paragraph 4(a)(ii) of the Policy. Again there appears to be no evidentiary basis for these allegations and no basis on which use, prior to the deregistration, to direct to a static website advertisement could be characterized as use in bad faith. Following the deregistration the Disputed Domain Name continued to direct to the same advertisement. This cannot be characterized as bad faith use by ASIC since ASIC is merely performing its statutory function of holding the Disputed Domain Name vested in it by s. 601 AD of the Corporations Act. Nevertheless paragraph 4(c)(iii) of the Policy does not, on its face, appear to be restricted to use by the holder of the domain name; it could be used by some other person, though it seems inappropriate that this would lead to forfeiture of a domain name unless the holder were in some way complicit in the bad faith use. It appears likely, however, that some person other than ASIC has taken steps to maintain the registration of the Disputed Domain Name and the website but there is no information as to whom that is or the basis on which any such action has been taken. There are several possibilities including that some person is taking action to preserve the Disputed Domain Name in the belief that somehow he has an interest in it. That would not necessarily be in bad faith. As noted in paragraph 5 above the telephone number for the Respondent has been retained at the Respondent's address at 133 High Street, Wodonga, so the business of the Respondent may legitimately be continuing at that address, for example by assignment or devolution. Action to maintain the Disputed Domain Name and to continue its website use may not necessarily indicate use in bad faith. The evidence is not sufficient to enable the Panel to conclude, on the balance of probability, that the Disputed Domain Name is being used in bad faith.
The Panel further notes with some surprise that the Complainant has not sought to provide evidence of the current situation with respect to the Respondent's business, particularly having regard to the fact that it carries on business in the same street in a small provincial city.
The Panel therefore declines to find, on the evidence before it, that the Disputed Domain Name is being used in bad faith. However, having regard to the uncertainty with respect to some material facts and the legal complexity in relation to the vesting of the Disputed Domain Name in ASIC, the Panel considers that its decision should be without prejudice to the Complainant's right to refile the Complaint in the event that it is able to provide more relevant evidence as to whether or not the Disputed Domain Name is being used in bad faith. 8. Decision
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan AM
Sole Panelist
Date: May 6, 2014
1 Prima facie a domain name is not property, since paragraph 2.1 of the auDA Domain Name Eligibility and Allocation Rules for the Open 2LDs (the Eligibility Rules) states:
"There are no proprietary rights in the domain name system (DNS). A registrant does not 'own' a domain name. Instead, the registrant holds a licence to use a domain name for a specified period of time and under certain terms and conditions."
That, however, may not be the end of the matter. The question remains whether the licence granted in respect of a domain name confers rights in the nature of property. This was considered by the Court of Appeal for the state of Ontario on Tucows.Com Co v. Lojas Renner S.A. [2011] ONCA 548, concerning the domain name . In that case the issue was whether the domain name was "personal property in Ontario" for the purpose of Rule 17.02 of Ontario Rules of Civil Procedure. After reviewing a number of authorities and academic writings in Canada and other common law jurisdictions including the United States of America, England, Australia and India, the Court concluded that "Tucows has a bundle of rights in the domain name that constitutes 'personal property' within the meaning of Rule 17.02(a)". Leave to appeal to the Supreme Court of Canada was denied [2012] Can Lii .28261.
In reaching its conclusion the Court of Appeal considered the "three step" test applied by the United States Federal Court in Kremen v. Cohen, 337F. 3d 1030, namely whether a domain name licence created an interest capable of precise definition; is capable of exclusive possession or control, and can establish a legitimate claim to exclusivity.
In England, in OBG Ltd v. Allan, [2008] AC 1, Lord Hoffman, whilst critical of the result in Kremen v. Cohen, stated, "I have no difficulty with the notion that a domain name may be intangible property like a copyright or a trademark".
On the other hand, the courts in the State of Virginia, United States, have held that a domain name registrant acquires the contractual right to use a unique domain name for a specified period of time "and that a domain name is not personal property but the product of a contract for services" (see Network Solutions v. Umbro International, Inc, 529 S.E. 2d 80 (Va 200), applied more recently in Alexandria Surveys LLC v. Alexandria Consulting Group, LLC, Civil Action No. 1: 13-CV00891). Similar conclusions have been reached in some other cases in the United States.
In Australia, in Hoath v. Connect Internet Services Pty Ltd, [2006] NSWSC 158, the New South Wales Supreme Court considered whether Hoath was entitled to damages in conversion in relation to the misappropriation of the domain name and associated IP addresses and AS number. The court discussed Kremen v. Cohen and said "I will assume, without deciding, that Mr. Heath's right to the domain name, IP addresses and AS number was a proprietary right. The property is intangible." The court declined however to find that Hoath was entitled to damages in conversion absent a showing that he owned or had a right to possession of a chattel in which the intangible property was embodied. In Vitamins Australia Ltd v. Beta-Carotene Industries Pty Ltd, (1987) 9 IPR 41, the Supreme Court of Western Australia, on appeal, considered a case where a company, the owner of a patent, had granted an exclusive licence under the patent and was then subsequently dissolved. The Court held, confirming the decision at first interest, that the exclusive licence created a proprietary interest in the patent and that on dissolution of the patentee, the patent, subject to the exclusive licence, vested in the Corporate Affairs Commission under the provisions of the Western Australian Companies Code then in force. It did not deal with the question of whether the exclusive licence itself vested in the Commission.
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