WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cash Converters Pty Ltd v. Michael Newton
Case No. D2014-1993
1. The Parties
Complainant is Cash Converters Pty Ltd of Perth, Australia, represented by Wrays, Australia.
Respondent is Michael Newton of London, United Kingdom.
2. The Domain Name and Registrar
The Disputed Domain Name <cashconverters.london> is registered with Webfusion Ltd trading as 123-reg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2014. On November 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 19, 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 Complaint, and the proceedings commenced on November 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 10, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 11, 2014.
The Center appointed Richard W. Page as the sole panelist in this matter on December 16, 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 is the owner of several trademark registrations in Australia and the United Kingdom. The name “Cash Converters” and the name of Complainant “Cash Converters Pty Ltd” are included within the mark as indicated by registrations with the Australian Investments & Securities Commission. Each of the trademark registrations is for either the word mark CASH CONVERTERS, or a mark of which the primary and most significant element is CASH CONVERTERS. Complainant’s trademarks, including registrations, shall be collectively referred to as the “CASH CONVERTERS Mark” in this decision.
The first registration for the CASH CONVERTERS Mark was in the United Kingdom, registered with effect from May 2, 1991. The Cash Converters name has been continuously used by Complainant in relation to its services.
In addition to the CASH CONVERTERS Mark, Complainant has used a number of the top-level and second-level domain names incorporating the CASH CONVERTERS Mark.
Complainant is a well-known international pawn broking and short-term lending business with a long association to the CASH CONVERTERS Mark. It is a company listed on both the Australian Stock Exchange and the London Stock Exchange. The core business of Complainant and its associated entities is the ownership and franchising of the “Cash Converters” retail and financial services stores, which operate as retailers of second-hand goods and suppliers of financial products.
For over 20 years, Complainant has developed and refined its franchise offering to the point where it has multi-store franchise chains in the United Kingdom and many other countries throughout the world. Complainant’s parent company, Cash Converters International Pty. Ltd, also acts as the international master franchisor of the “Cash Converters” franchising concept. It grants licenses of the CASH CONVERTERS Mark to enable independent entities to develop a corresponding “sub” franchise chain in another country in return for a passive royalty income.
Complainant’s business was originally established in 1984 with a single store in Perth, Western Australia. The Cash Converters business has grown to 146 stores throughout Australia and over 700 stores in 21 countries around the world.
Complainant has more than 200 stores in the United Kingdom, including 10 stores in London, with one store on Walworth Road (about 1.3 miles from Respondent’s contact address).
The Disputed Domain Name was registered on September 18, 2014.
5. Parties’ Contentions
A. Complainant
Complainant alleges that the Disputed Domain Name is identical or confusingly similar to the CASH CONVERTERS Mark in which Complainant has rights.
Complainant has built a strong reputation in the CASH CONVERTERS Mark through substantial marketing and promotional activities in association with the CASH CONVERTERS Mark. Complainant alleges that it has used, continues to use and intends to use in the future the CASH CONVERTERS Mark in relation to services it offers under the CASH CONVERTERS Mark. The services provided under the CASH CONVERTERS Mark include, but are not limited to, pawn brokerage, online retailing of second-hand goods, appraisal and valuation services, financial and financing services (including loan services) and the provision of information services and business services relating to second hand dealers.
In addition, Complainant provides and promotes a full range of services and products under and in association with the CASH CONVERTERS Mark via its United Kingdom website “www.cashconverters.co.uk” and by way of various other registered websites. Complainant’s head United Kingdom franchisee, Cash Converters (UK) Limited has continuously used this website for over 16 years, since the domain name’s registration on November 13, 1997.
Complainant alleges that the Disputed Domain Name can be questioned under the Policy by comparing it to a trademark registered in any country. For the purposes of this Complaint, Complainant refers the Panel specifically to Complainant’s United Kingdom trademark registration as Respondent is located in the United Kingdom.
Complainant asserts that the inclusion of a generic Top-Level Domain (“gTLD”) in the Disputed Domain Name is not distinctive. However, a gTLD may be considered under circumstances where the particular gTLD in question may have some impact on the similarity between the CASH CONVERTERS Mark and the Disputed Domain Name.
If the Disputed Domain Name is considered as a whole including the gTLD suffix, the only difference between the CASH CONTVERTERS Mark and the Disputed Domain Name is “london”. It is well established that the use of a famous mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the famous mark.
Complainant has several stores in London and has an established reputation all over the United Kingdom as the largest retailer of second-hand goods in the world. An Internet user is therefore likely to assume that Complainant is the sponsor of, or is associated with, the website to which the Disputed Domain Name resolves, and that the website to which the Disputed Domain Name resolves is associated with Complainant’s London stores.
Complainant further asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because: Respondent was never authorized to used the CASH CONVERTERS Mark, Respondent has never made use of the Disputed Domain Name in a way to sell or offer to sell bona fide goods and services, and Respondent is making an illegal, commercial and unfair use of the Disputed Domain Name.
Complainant alleges that the Disputed Domain Name currently resolves to a link farm that contains a variety of sponsored links. These are pay-per-click (“PPC”) links, where the website owner receives payment every time a website visitor clicks a sponsored link. The PPC links featured on Respondent’s website include links to financial services provided under links entitled “Quick Cash Loans” and “Quick CASH 24/7,” all of which provide short term loans, and are in direct competition with Complainant.
Complainant further alleges that Respondent is not commonly known by the Disputed Domain Name and so may not claim any rights established by common usage.
Complainant submits that the phrase “Cash Converters” has no common dictionary meaning and no other meaning except that the word has developed a meaning within those countries where Complainant operates its business, for example in the United Kingdom, as a term referring to Complainant and its business.
Complainant further submits that the disclaimer which is contained on Respondent’s website is inadequate to cure the illegal diversion of Internet users to the Respondent’s website. Complainant alleges that a disclaimer is insufficient in that it does nothing to actively disclaim an association or affiliation with or endorsement by Complainant.
Complainant contends that it has established a prima facie case demonstrating that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant contends that Respondent registered and has used, and is continuing to use the Disputed Domain Name in bad faith, by virtue of his holding the Disputed Domain Name without any proper or legitimate use. Complainant further contends that Respondent has registered the Disputed Domain
Name to mislead the public and Internet users by creating a false impression of association with Respondent. Complainant further contends that Respondent has created links to other sites related to Complainant’s services in the financial sphere, for the sole purpose of commercial gain by misleading and diverting consumer and internet users to the PPC advertising website to which the Disputed Domain Name resolves and collecting the click-through revenue from the advertising links.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the CASH CONVERTERS Mark, that its trademark registrations are valid and subsisting, and serve as prima facie evidence of Complainant’s ownership and the validity of the CASH CONVERTERS Mark. Complainant further contends that Respondent has the burden of coming forward with rebuttal evidence to prove otherwise. Respondent has not done so. Therefore for purposes of this proceeding, the Panel finds that Complainant has enforceable trademark rights in the CASH CONVERTERS Mark.
Complainant further contends that the Disputed Domain Name is identical and confusingly similar to the CASH CONVERTERS Mark pursuant to the Policy paragraph 4(a)(i). Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the trademark.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. The addition of other terms which are non-distinctive in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.
The Panel notes that the entirety of the CASH CONVERTERS Mark is included in the Disputed Domain Name and that the addition of the gTLD “.london” is non-distinctive. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the CASH CONVERTERS Mark pursuant to the Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing rights or legitimate interests applies, a respondent must come forward with contrary evidence to rebut the complainant’s prima facie case. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Respondent has no relationship with or permission from Complainant for the use of the CASH CONVERTERS Mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 trademark or service mark at issue.
Complainant has sustained its burden of showing a prima facie case under these elements that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has not provided any contrary evidence. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product
The Panel finds that Complainant’s evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).
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 <cashconverters.london> be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: December 31, 2014
