Complainant is Smart Voucher Ltd T/A UKASH of London, United Kingdom of Great Britain and Northern Ireland.
Respondent is RTCLTD. of Doha, Qatar; Protected Domain Services of Denver, Colorado, United States of America.
The disputed domain names <ukashreseller.com>, <ukashreseller.net>, <ukashresellers.com> and <ukashresellers.net> are registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 2, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain names. On March 3, 2011, Name.com LLC 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. On the same day, Name.com LLC also submitted an informative filing. The Center sent an email communication to Complainant on March 4, 2011providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 28, 2011.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on April 1, 2011. 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.
On March 3, 2011, the Center received an informative filing from the privacy service listed as a Respondent in this case. The Panel notes the contents and proceeds pursuant to its discretion to include the WhoIs-listed entity (privacy service) as a Respondent at the time of the filing of the Complaint in the present case. See Wikimedia Foundation Inc. v. Protected Domain Services - Customer ID: NCR 1181691 / webudaipur, web udaipur, WIPO Case No. D2011-0107.
Complainant, Smart Vouchers Ltd is an online company that provides alternative online cash payment services founded in 2005. Complainant specializes in providing customers with vouchers which they can receive through specific payment terminals or retail outlets in the United Kingdom, Europe, South Africa, Australia, South America, North America and most recently the People’s Republic of China.
Complainant has a noticeable international presence and in particular, its Ukash service is available in 400,000 outlets worldwide in 30 different countries. The notoriety and success of Complainant’s brand has warranted its own Wikipedia article.
Complainant holds several trademark registrations for the mark UKASH. In addition to the registered trademarks, the Complainant, its affiliates, branches, subsidiaries or associated companies own domain registrations which incorporate “ukash”.
Complainant asserts that the disputed domain names are confusingly similar to and fully incorporates the Complainant’s trademarks and brand. Complainant asserts that the possibility or likelihood of confusion between the disputed domain names and Complainant’s mark exists.
Complainant asserts that the addition of the term “reseller(s)” only works to enhance the likelihood of confusion that is being created by Respondent. Complainant asserts that the intention of Respondent was to increase the impact of the disputed domain names. Complainant argues that it has been established in previous UDRP cases that the addition of a generic or descriptive term to the domain name has little, if any, affect on a determination of legal identity between the domain name and the mark and that it does not escape a finding of similarity.
Complainant informs that it offers the service whereby individuals and organizations may become resellers of Complainants products and services. However, resellers are not granted permission to use or incorporate Complainant’s trademark in a domain name. In this capacity the term “reseller(s)” can be said not only to be a generic term but also a descriptive term of Complainant’s online service.
Complainant asserts that Internet users are likely to associate the combination of the terms “ukashreseller(s)” with Complainant as a service offered by them and that Respondent has clearly used the term “ukashreseller(s)” to create an association with Complainant and attract Internet users to the website by misleadingly causing them to believe such an association exists.
Furthermore, given both the visual and phonetic similarities, Complainant asserts that the disputed domain names are confusingly similar to its trademark.
The Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. The Complainant asserts that there is no evidence that Respondent can demonstrate that any of the circumstances that are set out in paragraph 4(c) of the Policy are available as a defence to its case.
Firstly, Complainant asserts that pursuant to paragraph 4 (c)(i) of the Policy Respondent has not before any notice of the dispute, used or made demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
Currently, the sites for which the disputed domain names (except <ukashreseller.com>) resolve to are pay per click parking pages. <Ukashreseller.com> resolves to a page which advertises that the disputed domain name is for sale. Complainant asserts that the use of a domain name which incorporates another’s trademarks or brand names as a PPC parking page cannot be considered to be in connection with a bona fide offering of goods or services.
Furthermore, Complainant asserts that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods and services.
Hence, in light of these facts, Complainant asserts that the disputed domain names were selected and used with the intent of trading on the fame of Complainant’s mark and thus there is no evidence to suggest that Respondent at any time was using the disputed domain names in connection with a bona fide offering of goods or services, presently or prior to being given notice of the dispute.
Secondly, Complainant asserts that Respondent has not been commonly known by the disputed domain names even without having acquired trademarks or service mark rights pursuant to paragraph 4 (c)(ii) of the Policy.
Respondent registered the disputed domain names in 2009: 7 years after Complainant facilitated and licensed the use of their brand name UKASH to authorized resellers. Respondent has no registered trademarks in the term UKASH. As far as Complainant is aware, Complainant is the sole proprietor of trademarks registered with the term UKASH. Complainant purports that this further supports the Complaint that Respondent has no rights or interests in the term UKASH.
Complainant informs that Respondent has not been licensed or given permission by Complainant to use any of its trademarks, or to incorporate any of those trademarks in a corresponding domain name.
Complainant expresses the reasoning given by the panel in the case of Pitney Bowes Inc. v. Mike Ostanik, WIPO Case No. D2000-1611 and suggests that, given the Respondent has (a) never been an authorized sales representative of Complainant; (b) has never been licensed to use the UKASH mark; and (c) has never received any approval, expressed or implied, to use the mark in or as part of a domain name, Respondent’s use of the disputed domain names cannot be legitimate.
Complainant further argues that Respondent is not commonly known by the term UKASH. There is no relation between Respondent and the term UKASH. The brand name is very unique. When the term UKASH is entered into Google search, all results are related exclusively to Complainant and its brand. Complainant asserts that Respondent used the word “ukash” to create an impression of an association with Complainant.
Thirdly, Complainant asserts that pursuant to paragraph 4 (c)(iii) of the Policy Respondent is not making a legitimate noncommercial or fair use of the disputed domain names and that Respondent’s intention is to misleadingly divert consumers or to tarnish the trademark or service mark at issue for commercial gain.
Complainant asserts that the use of the disputed domain names (<ukahsresellers.com>, <ukahsresellers.net> and <ukashreseller.net>) as PPC parking pages is not a noncommercial use and neither is this use fair. Respondent is generating a profit from the use of the disputed domain names as PPC parking pages. This use is not fair as Respondent is trading off the good will and fame of Complainant.
Complainant states that Respondent’s intention is to misleadingly divert consumers. Respondent is providing links to Complainant’s competitors. Internet users wishing to access the Complainant’s services will potentially be redirected to a competitor of Complainant. Even, where some Internet users may realize that there is no actual affiliation between Complainant and Respondent’s web page, Respondent may still gain commercially by attracting them to the site by the use of the disputed domain names that are confusingly similar to that of the Complainant’s mark.
The Complainant submits and asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent does not satisfy the requirements of paragraph 4(a)(ii) of the Policy.
Regarding bad faith use and registration, Complainant asserts pursuant to paragraph 4 (b)(i) of the Policy that circumstances indicate that Respondent has registered the disputed domain names for the purpose of selling, renting, or otherwise transferring the disputed domain names to Complainant who is the owner of the trademark or service mark or a competitor of Complainant, for valuable consideration in excess of Respondent’s out of pocket costs directly related to the disputed domain names.
Respondent has advertised on the “www.ukashreseller.com” site that the domain name is for sale. Complainant made Respondent aware of its interests and rights in the disputed domain names <ukashresellers.com> and <ukahsreseller.com> prior to the dispute and issued a cease and desist letter to Respondent. Respondent, who was made fully aware of Complainant’s rights, took this as its opportunity to sell the disputed domain names <ukashresellers.com> and <ukasreseller.com> to Complainant at an extortionate price of 3000USD. Complainant asserts that this evidence supports Complainant’s claim that Respondent has registered the disputed domain names with the intent to sell it to Complainant. The offering of the disputed domain names to Complainant for sale at a price which is substantially in excess of any out of pocket expenses is prima facie evidence of bad faith.
Secondly, Complainant asserts that pursuant to paragraph 4 (b)(ii) of the Policy Respondent registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and Respondent has engaged in a pattern of such conduct.
Thirdly, Complainant contends that pursuant to paragraph 4 (b)(iii) of the Policy the Respondent registered the disputed domain names primarily for the purpose of disrupting the business of a competitor.
Fourthly, Complainant asserts pursuant to paragraph 4 (b)(iv) of the Policy that by using the disputed domain names, Respondent intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites or locations or of a product or service on its websites or location.
Furthermore, Complainant contends that the four circumstances of the policy exemplified in paragraph 4 (b) (i)-(iv) are not exhaustive and bad faith may be found alternatively.
Complainant also asserts that bad faith can be drawn from the fact that Respondent, when registering the disputed domain names used the privacy setting on the WhoIs details, thereby withholding its details.
Complainant asserts that Respondent had actual or constructive knowledge of Complainant’s rights in the disputed domain names. Complainant’s trademark has a strong reputation and is widely known as is evidenced in its substantial use worldwide. There is no conceivable way that Respondent was not aware of Complainant’s brand. In the email communication, Respondent claimed that they registered the disputed domain names with the intent to become a reseller of Ukash products which was rejected by Complainant. Obviously this is evidence that Respondent was fully aware of Complainant’s rights in name UKASH.
Complainant asserts that the disputed domain name were intentionally created and registered in bad faith. Complainant asserts that its brand UKASH is a well-known product of which Respondent has no connection, which is evidence to show an existence of bad faith.
Complainant asserts that Respondent intentionally and wittingly registered the disputed domain names to make a commercial gain on the merits and reputation of Complainant. Respondent chose to register the disputed domain names clearly to cause Internet users to believe that Complainant endorses or is associated with Respondent’s websites. Respondent is merely using Complainant’s mark to misleadingly attract Internet users to its websites of Complainant’s competitors.
Respondent did not reply to Complainant’s contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith, Policy, paragraph 4(a).
According to Complainant’s arguments and the exhibits attached to the Complaint, it is proved that Complainant has trademark rights over the expression UKASH.
The Panel finds that Complainant’s registered UKASH trademarks are well-known in its field of activity and have a strong reputation in many countries. The Panel finds that the disputed domain names are confusingly similar with Complainant’s UKASH trademark. The only difference between Complainant’s registered trademark and the disputed domain names is the addition of the word “reseller” or “resellers”.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain names as being distinct from Complainant’s registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”). Moreover, the Panel finds that adding a generic expression such as “reseller” or “resellers” is likely to increase the possibility of confusion amongst consumers.
The Panel finds that this similarity can mislead Internet users who search for Complainant’s services and divert them to the disputed domain names.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Taking into consideration that Respondent has failed to respond to Complainant, the Panel will assume that Respondent lacks rights and legitimates interests in the disputed domain names.
As a matter of a fact, Complainant has made a prima facie case in support of its allegations and, due to this, the burden of proof shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain names, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the Complaint was filed, the disputed domain names directed Internet users to parking pages offering goods and services in competition with Complainant. The Panel finds that this is not a bona fide offering of goods and services.
So, in view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the policy.
Pursuant to paragraph 4 (b)(i) it shall be evidence of the registration and use of a domain name in bad faith:
circumstances indicate that respondent has registered the domain name for the purpose of selling, renting, or otherwise transferring the domain name to complainant who is the owner of the trademark or service mark or a competitor of complainant, for valuable consideration in excess of respondent’s out of pocket costs directly related to the domain name.
Respondent has advertised on the “www.ukashreseller.com” site that the disputed domain name is for sale. Complainant made Respondent aware of its interests and rights in the disputed domain names <ukashresellers.com> and <ukahsreseller.com> prior to the dispute and issued a cease and desist letter to Respondent. Respondent, who was made fully aware of Complainant’s rights, took this as his opportunity to sell the disputed domain names <ukashresellers.com> and <ukasreseller.com> to Complainant at an extortionate price of 3000USD.
The panel in Accor v. Mr Young Gyoon Nah. WIPO Case No. D2004-0681 stated that “It can be inferred from the Respondent’s offer to sell the domain name at an elevated price that the respondent registered it for this purpose…This is a prime example of bad faith abuse of the domain name system as recognized in paragraph 4 (b)(i).”
Under paragraph 4 (b)(ii) of the Policy Respondent registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and Respondent has engaged in a pattern of such conduct.
Complainant asserts that Respondent has engaged in a pattern of conduct of registering four disputed domain names which reflect Complainant’s mark with the intention to prevent Complainant from registering such obvious domain names. The Panel agrees. See Foreningen Roskilde Festival v. Martin Vindheim, WIPO Case No. D2004-0285.
Pursuant to paragraph 4 (b)(iii) of the Policy Respondent registered the disputed domain names primarily for the purpose of disrupting the business of a competitor.
Complainant asserts that its relationship with Respondent falls within the definition of the term “competitor”, and that Complainant may potentially lose customers to their competitors because of Respondent’s actions. Complainant concludes this in essence has a disruptive effect on Complainant’s business. The Panel agrees. When Respondent uses the disputed domain names to host websites where advertisements of Complainant’s competitors are shown, this must be deemed as a purpose to disrupt the business of a competitor.
Under paragraph 4(b)(iv) of the Policy , a respondent has used and registered a domain name in bad faith if, inter alia, respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to respondent’s website or other online location by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s site or of a product or service offered on respondent’s site. Policy, paragraph 4(b)(iv).
Respondent has intentionally registered the disputed domain names which totally reproduces Complainant’s well-know trademark UKASH. By the time the disputed domain names were registered, it is unlikely that Respondent did not have knowledge of Complainant’s rights in the trademark UKASH.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its UKASH registered trademark when the disputed domain names were registered. Moreover, Complainant submitted consistent evidence that its trademark is well-known. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed Complainant’s trademark when it registered the subject domain names.
Also, under the Policy, it is evidence of bad faith that, “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 or service on your web site or location.” Policy, paragraph 4(b)(iv). Respondent used Complainant’s known trademark to attract users to a parking page offering goods and services in competition with Complainant. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.
In light of these, the Panel finds Respondent registered and used the disputed domain names in bad faith.. Complainant has established the third element of paragraph 4(a) of the Policy.
For all 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 <ukashreseller.com>, <ukashreseller.net>, <ukashresellers.com> and <ukashresellers.net> be transferred to Complainant.
Luiz E. Montaury Pimenta
Sole Panelist
Dated: April 6, 2011