The Complainant is Cash Converters Pty Ltd. of Perth, Australia, represented by Wrays, Australia.
The Respondent is The Trustee for the Capital Finance Trust of Sydney, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2015. On May 27, 2015, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day Tucows Inc. transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the Respondent registered the disputed domain name on October 20, 2014;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the .au Domain Name Dispute Resolution Policy (the "Policy" or ".auDRP"), and the .auDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of 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 June 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 24, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 30, 2015. 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's business started in Australia in Perth in 1984. Since then, the business has grown to over 150 stores throughout Australia. The "Cash Converters" business also has some 700 stores in 21 countries around the world. It conducts a pawn brokerage, appraisal and valuation service including financial services such as providing loans.
It has provided evidence of six registered trade marks in Australia dating from 1989 which include the words. For present purposes, it is sufficient to note only:
(a) Australian Trade Mark No. 806655 for CASH CONVERTERS registered from September 10, 1999 in respect of a wide range of goods and services in International Classes 9, 35, 38 and 42; and
(b) Australia Trade Mark No. 818553 for CASH CONVERTERS registered from December 21, 1999 in respect of services in International Classes 35 and 36 including, amongst others, pawnbrokerage and financial and financing services including loan services.
As noted above, the disputed domain name was registered on October 10, 2014. Prior to the filing of the Complaint, it resolved to a website with a banner heading "Cash Converters Online…Australia's #1 Specialist Expert in helping people with bad credit." There is a Youtube video which is captioned, "If you would like to read more about our popular Cash Converters Online loan product then please read the article below." (emphasis supplied) The article set out below starts with the text:
"Looking for a cash converters online loan? Look no further! We have cash solutions for all sorts of situations that come up in life. We like to keep things simple so you can spend less time filling out forms or waiting for approval. We have a dedicated credit underwriter who looks through all the cash converters online loan applications so you will have a much higher chance of getting a loan with us compared to a bank even if you have a bad credit history or a low credit score. We have helped hundreds of people in the past with cash loans online because we don't just make a decision based on your credit score but your overall financial situation and ability to repay the debt. A cash converters online loan is a great short-term financial solution and we offer a range of flexible finance options for all kinds of purposes even if you have a bad credit history or Bankruptcy! …." 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(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 or subsequently used in bad faith.
No response has been filed. However, the Written Notice has been served, on the physical coordinates specified in the WhoIs record (and confirmed as correct by the Registrar), and the Complaint has been served on the electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar), in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The Panel notes that the Complainant has recently obtained an order under the Policy for transfer of another domain name, from the Respondent: Cash Converters Pty Ltd. v. The Trustee For The Capital Finance Trust,WIPO Case No. DAU2015-0006. This case will be decided in accordance with the record in the current proceeding. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a name or trade mark and, if so, the disputed domain name must be identical or confusingly similar to the name or trade mark.
The Complainant has proven that it owns the six registered trade marks for, or based on, referred to in section 4 above. The Complainant's stores are also widespread throughout Australia and, given that, the Panel is willing to infer that it has a reputation in its name, or the truncated version of it, "Cash Converters", by which it is commonly referred to.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In the present context, it is permissible to disregard the "." component of the disputed domain name as a functional part of the domain name system: MapQ, Inc. v. William Scully Power and MapQuest Australia,WIPO Case No. DAU2006-0016; Jenna IP Holding Company LLC v. Mobile Alive Pty Limited,WIPO Case No. DAU2006-0013.
Therefore, the disputed domain name differs from the Complainant's truncated form of name and its registered trade marks only by the addition of descriptive term "online". That is insufficient to dispel the potential for confusion arising from the similarity of the disputed domain name to the Complainant's name and trade mark especially as the Complainant itself has an online presence.
Accordingly, the Complainant has established the first requirement under the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or is likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001.
The Complainant states the Respondent is unrelated to it in any way. It has not authorised or licensed the Respondent to use the name "Cash Converters" or register the disputed domain name. The disputed domain name is not derived from the Respondent's name. It is derived from the name used as the banner on the website to which the disputed domain name resolved just before the Complaint was filed. The registration of the disputed domain name does not itself provide a guarantee of entitlement. On the contrary, registration requires the registrant to warrant that its use of the name will not take advantage of someone else's rights.
The Respondent's usage started many, many years after the Complainant began using its name and trade mark in Australia and 15 years after the registration of the Complainant's trade mark which covers, amongst other things, loan services – Australian Trade Mark No. 818553. As noted above, the Respondent's website promotes and offers for sale "cash converters online loans"; services directly covered by the Complainant's trade mark. The term "Cash Converters" does consist of two ordinary English words. It is not itself, however, directly descriptive. If anything, it could be seen as contradictory as the essence of the Complainant's services is to convert things other than cash into cash, as it were. The association the term has with the services the Complainant and the Respondent are providing essentially derives from the Complainant's use of it. In these circumstances, the provision of those services under the name "Cash Converters Online" is likely to infringe the Complainant's trade mark: Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291.
The use of the Complainant's trade mark in the disputed domain name to provide services covered by the Complainant's registered trade mark without the Complainant's permission, or some other justification, is not use of the disputed domain name in connection with a bona fide offering of goods or services under the Policy. Accordingly, the Panel finds that the Complainant has established at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not sought to rebut that prima facie case. Therefore, the Complainant has established the second requirement under the Policy. C. Registered or Subsequently Used in Bad Faith
In contrast to the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.
This usually requires that the Complainant demonstrate that the Respondent has registered or is using the disputed domain name to take advantage of its significance as the Complainant's name or trade mark.
The Respondent is using the disputed domain name to provide services directly competing with the Complainant's services and covered by the Complainant's trade mark. As noted in section 5B above, the term "Cash Converters" is not descriptive of the services provided by the Complainant or the Respondent. The association the term has with those services derives from the Complainant's use of it. Given that and how widespread the Complainant's stores are throughout Australia and how long it has been operating here, it is likely that the Respondent was well aware of the Complainant's name and trade mark when the disputed domain name was registered. In these circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith. The subsequent use is also use in bad faith.
Accordingly, the Panel finds that the Complainant has also established the third requirement under the Policy. 6. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: July 12, 2015
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