The Complainant is Smart Voucher Ltd T/A UKASH of United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SafeNames Ltd., United Kingdom.
The Respondents are Ukash Paysafe of Germany/Bulgaria, and Ukash Kart of Turkey.
The disputed domain names in this case, as identified below, are registered with Dotster, Inc. (“the Registrar”):
<buyukash.net>
<enucuzukash.com>
<guvenilirukash.com>
<kredikartiylaukash.com>
<kredikartiylaukash.net>
<myukash.net>
<onlineukash.net>
<paysafeukash.com>
<paysafeukashkart.com>
<paysafeukash.net>
<superbahisukash.com>
<ucuz-ukash.com>
<ucuzukash.com>
<ukash-al.com>
<ukashalmak.com>
<ukashal.net>
<ukashal.org>
<ukashbuy.com>
<ukashcard.net>
<ukashcard.org>
<u-kash.com>
<ukashfiyatlari.com>
<ukashfiyatlari.net>
<ukashforum.com>
<ukashforum.net>
<ukashhakkinda.com>
<ukashhakkinda.net>
<ukashkartalma.com>
<ukashkartalmakistiyorum.com>
<ukashkartalmakistiyorum.net>
<ukashkartalma.net>
<ukashkart.biz>
<ukashkartfiyatlari.com>
<ukashkartfiyatlari.net>
<ukashkartfiyatlari.org>
<ukashkarti.com>
<ukashkarti.net>
<ukashkart.info>
<ukashkartnasilalirim.com>
<ukashkartnasilalirim.net>
<ukash-kart.net>
<ukashkart.net>
<ukashkart.org>
<ukashkartsatinal.com>
<ukashkartsatinal.net>
<ukashkartsatinal.org>
<ukashkartturkiye.com>
<ukashkartturkiye.net>
<ukashkredikarti.com>
<ukashnasilalinir.com>
<ukashnasilalinir.net>
<ukashnedemek.com>
<ukashnedemek.net>
<ukashnedir.com>
<ukashnedir.net>
<ukashonline.org>
<u-kash.org>
<ukashparayatirma.com>
<ukashparayatirma.net>
<ukashpaysafe.com>
<ukashpaysafekart.com>
<ukashpaysafe.net>
<ukashsatinal.com>
<ukashsatinal.net>
<ukash-satis.net>
<ukashsatis.net>
<ukashsatis.org>
<ukash-shop.net>
<ukashsiteleri.com>
<ukashsiteleri.net>
<ukashtr.net>
<ukashtr.org>
<ukashturkiye.net>
<uukash.com>
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2011. On October 26, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 26, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names. In response to a request for clarification from the Center, the Complainant filed an Amended Complaint on November 11, 2011.
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 the Respondent of the Complaint, and the proceedings commenced on November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on December 20, 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.
The Complainant provides online cash payment services, namely, uniquely numbered vouchers (hereinafter referred to as “UKASH cards”) available for purchase at specific payment terminals and retail outlets, which can then be used to make online payments. The Complainant is regulated in the United Kingdom by the Financial Services Authority (FSA) as an electronic money institution, and has more than 420,000 sales outlets in 50 countries around the world, including authorized resellers.
The Complainant uses the trademark UKASH in connection with its products and services, and has secured trademark registrations for UKASH in the European Union (“EU”) and the United States of America (“US”), the earliest of which was issued in January 2008. The Complainant further operates websites located at “www.ukash.com” and “www.ukash.net”, and owns other domain names incorporating the UKASH mark.
The disputed domain names were registered by the Respondents Ukash Paysafe and Ukash Kart, respectively, on various dates between December 17, 2009 and October 13, 2010, according to the WhoIs information maintained by the Registrar. The websites to which the disputed domain names resolve (referred to herein as the “Respondents’ websites”) are all Turkish language websites. The Respondents’ websites prominently display the Complainant’s stylized UKASH logo, and appear to offer the Complainant’s UKASH cards as well as PAYSAFE cards, a similar product offered by a competitor of the Complainant.
The Complainant maintains that the disputed domain names are confusingly similar to the Complainant’s UKASH mark because the domain names either incorporate of the UKASH mark in its entirety or else are comprised of intentional misspellings of the Complainant’s mark. According to the Complainant, UKASH is a uniquely coined phrase and has become well-known to consumers as a result of extensive use, promotion and advertising. The Complainant asserts that the addition of common or descriptive words or phrases in the disputed domain names does not dispel such confusing similarity. Further, according to the Complainant the word “kart” is a Turkish word commonly used to denote bank cards or telephone cards, and thus creates even greater Internet user confusion when combined with the Complainant’s mark.
The Complainant contends that the Respondents lack any rights or legitimate interests in the disputed domain names. The Complainant avers that the Respondents have not been authorized to use the Complainant’s UKASH mark, and maintains that the Respondents have not been commonly known by the disputed domain names. While the Complainant acknowledges that it operates an authorized reseller program, the Complainant insists that the Respondents are not affiliated with the Complainant in any manner and for this reason cannot make any legitimate use of the disputed domain names. To the contrary, the Complainant asserts that the Respondents essentially are perpetrating a fraud on Internet consumers.
The Complainant asserts that the Respondents’ websites do not disclose their lack of affiliation with the Complainant, and that the Respondent’s websites prominently display the Complainant’s UKASH logo and have been intentionally designed to convey the look and feel of the Complainant’s website. The Complainant contends that the Respondents registered and are using the disputed domain names to trade on the reputation and fame of the Complainant’s mark through the creation of Internet user confusion, offering online not only UKASH cards but also the PAYSAFE cards of one of the Complainant’s competitors. In view of this, the Complainant concludes that the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services within the meaning of the Policy.
Further, in light of all of the foregoing, the Complainant argues that the Respondents registered and are using the disputed domain names in bad faith. The Complainant asserts that the Respondents are using the disputed domain names in a bad faith attempt to attract, for commercial gain, Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, endorsement or affiliation. The Complainant also maintains that the Respondents registered the disputed domain names in bad faith for the purpose of disrupting the Complainant’s business, since the Respondents offer the competing PAYSAFE card on their websites. The Complainant further contends that the Respondents registered the disputed domain names in bad faith to prevent the Complainant from reflecting its mark in a corresponding domain name, and asserts that the Respondents have engaged in a pattern of such conduct.
The Respondents did not reply to the Complainant’s contentions.
The Complainant has requested that the multiple domain names registered by the Respondents, as identified in the Complainant, be consolidated in a single administrative proceeding. This Panel held in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, that consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the disputed domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties.
The uncontroverted facts in the instant record indicate that the disputed domain names and the websites to which they resolve are more likely than not under common control. A connection between Respondents Ukash Paysafe and Ukash Kart is evident from the totality of the circumstances. The disputed domain names have all been registered with one registrar, and the WhoIs records reflect that common contact information has been provided by the Respondents for a number of the disputed domain names. As an example, according the relevant WhoIs data, the disputed domain name <ukashpaysafe.com> is registered to the Respondent Ukash Paysafe, but the Respondent Ukash Kart is listed as the administrative contact, and the contact information, including physical address and email, is the same contact information used for a number of disputed domain names registered in the name of Ukash Kart.
In addition, there are substantial commonalities in the websites to which the disputed domain names resolve. All of the websites are Turkish language websites. The Respondents’ websites prominently feature the Complainant’s UKASH logo and mark and in other respects mimic the look and feel of the Complainant’s website or those of its authorized resellers. Further, the Respondents’ websites offer both the Complainant’s UKASH cards and the competing PAYSAFE cards. In short, the record before this Panel reflects that the Complainant has been the target of common conduct by the Respondents directly affecting the Complainant’s rights.
In the Panel’s view, the totality of circumstances surrounding the registration and use of the disputed domain names are strongly indicative of common control or control of the disputed domain names and the websites to which they resolve. Given readily identifiable commonalities in the registration and use of the disputed domain names, evidence of common conduct by the Respondents affecting the Complainant’s rights, and noting that common questions of law and fact are predominant, the Panel is of the view that consolidation would be procedurally efficient, and fair and equitable to all parties, and will proceed to a decision on the merits of these domain name disputes.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: and
(ii) The Respondents have no rights or legitimate interests with respect to the disputed domain name: and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds for purposes of paragraph 4(a)(i) that the disputed domain names are confusingly similar to the Complainant’s UKASH mark, in which the Complainant has established rights. Regarding the question of identity or confusing similarity, the first element of the Policy functions essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and the disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011. See also RUGGEDCOM, Inc. v. James Krachenfels, WIPO Case No. D2009-0130 (at the heart of paragraph 4(a)(i) is whether the trademark and the disputed domain name look, sound, and “feel” sufficiently similar that Internet users looking for websites associated with the complainant would be likely to arrive at a website at the disputed domain name) (majority opinion).
In this case, the disputed domain names incorporate the Complainant’s UKASH mark in its entirety, or in several instances contain slight alterations of the Complainant’s mark, such as <u-kash.org> and <uukash.com>.2 The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark under the above-described standard. The confusing similarity resulting from the use of the Complainant’s trademark is not diminished by the addition of common or descriptive words or phrases. This is particularly so with respect to the addition of words such as “kart” – a Turkish word associated with bank cards – given the primary usage of the Complainant’s UKASH mark with an online payment card. See Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870. See also National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524 (hereinafter “National Association for Stock Car Auto Racing”).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Respondents have registered more than seventy (70) domain names which incorporate the Complainant’s mark and are confusingly similar. It is undisputed that the Respondents have not been authorized by the Complainant to use the Complainant’s mark. The Respondents notwithstanding are using the disputed domain names with websites prominently displaying the Complainant’s UKASH mark and logo, on which it appears that the Respondents are providing UKASH cards without the Complainant’s authority, while at the same time providing a similar product – the PAYSAFE card – of a competitor of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondents’ use of, or 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; or
(ii) the Respondents have been commonly known by the disputed domain names, even if they have acquired no trademark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondents have not submitted a Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
To the extent that the Respondents’ websites suggest they are reselling of the Complainant’s UKASH cards, the consensus view of UDRP panelists is that a reseller offering trademarked goods or services using a domain name containing the trademark may establish rights or legitimate interests in the domain name only where the following conditions are met:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
See WIPO Overview 2.0, at paragraph 2.3. The leading decision is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”). Some panels subscribing to the principles established in Oki Data have determined it may be applicable to both authorized and unauthorized resellers. See WIPO Overview 2.0, at paragraph 2.3.
Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondents have not demonstrated, consistent with the fair use principles underlying Oki Data, use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Even a cursory review of the record in this administrative proceeding demonstrates that the Respondents have blatantly disregarded the Oki Data standards and underlying fair use principles. It is critical to the establishment of rights or legitimate interests under Oki Data that the reseller make use of the manufacturer’s trademark only insofar as is reasonably necessary, that such use involve only the trademark owner’s products, that the reseller take steps to avoid using of the owner’s mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement, and that the reseller’s website effectively and accurately disclose the relationship with the trademark owner.
The Respondents’ registration of more than seventy (70) domain names appropriating the Complainant’s mark suggests that the Respondents have set out to “corner the market” in all relevant domain names, and is plainly inconsistent with the fair use standards articulated in Oki Data. The record further reflects the Respondents’ use of websites that mimic the look and feel of the Complainant’s website, as evidenced by the Respondents’ prominent use of the Complainant’s UKASH mark and logo. Further, the Respondents are offering not only the Complainant’s trademarked products but competing products as well, evocative of “bait and switch” tactics. Finally, the Respondents’ do not effectively and accurately disclose their relationship with the Complainant.
Based on the record before the Panel, the Respondents clearly had the Complainant’s UKASH mark in mind when registering the disputed domain names. The Panel finds that the Respondents registered the disputed domain names in order exploit and profit from the Complainant’s rights in the mark through the creation of initial interest confusion. Considering the overall look and feel of the Respondent’s websites, the prominent display of the Complainant’s UKASH logo and mark, and the absence of any effective disclaimer, Internet users easily could be confused whether the Respondents’ websites are affiliated with or have the endorsement or sponsorship of the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondents were aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain names. The Respondents’ primary motive in relation to the registration and use of the disputed domain names most likely was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of Internet user confusion. The Respondents’ websites appear to have been intentionally designed to capture the look and feel of the Complainant’s website, and the Respondents have not effectively or accurately disclosed their relationship with the Complainant, while at the same time offering competing products. In view of the foregoing, the Panel concludes that the Respondents registered and have used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to their websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 identified below be transferred to the Complainant:
<buyukash.net>
<enucuzukash.com>
<guvenilirukash.com>
<kredikartiylaukash.com>
<kredikartiylaukash.net>
<myukash.net>
<onlineukash.net>
<paysafeukash.com>
<paysafeukashkart.com>
<paysafeukash.net>
<superbahisukash.com>
<ucuz-ukash.com>
<ucuzukash.com>
<ukash-al.com>
<ukashalmak.com>
<ukashal.net>
<ukashal.org>
<ukashbuy.com>
<ukashcard.net>
<ukashcard.org>
<u-kash.com>
<ukashfiyatlari.com>
<ukashfiyatlari.net>
<ukashforum.com>
<ukashforum.net>
<ukashhakkinda.com>
<ukashhakkinda.net>
<ukashkartalma.com>
<ukashkartalmakistiyorum.com>
<ukashkartalmakistiyorum.net>
<ukashkartalma.net>
<ukashkart.biz>
<ukashkartfiyatlari.com>
<ukashkartfiyatlari.net>
<ukashkartfiyatlari.org>
<ukashkarti.com>
<ukashkarti.net>
<ukashkart.info>
<ukashkartnasilalirim.com>
<ukashkartnasilalirim.net>
<ukash-kart.net>
<ukashkart.net>
<ukashkart.org>
<ukashkartsatinal.com>
<ukashkartsatinal.net>
<ukashkartsatinal.org>
<ukashkartturkiye.com>
<ukashkartturkiye.net>
<ukashkredikarti.com>
<ukashnasilalinir.com>
<ukashnasilalinir.net>
<ukashnedemek.com>
<ukashnedemek.net>
<ukashnedir.com>
<ukashnedir.net>
<ukashonline.org>
<u-kash.org>
<ukashparayatirma.com>
<ukashparayatirma.net>
<ukashpaysafe.com>
<ukashpaysafekart.com>
<ukashpaysafe.net>
<ukashsatinal.com>
<ukashsatinal.net>
<ukash-satis.net>
<ukashsatis.net>
<ukashsatis.org>
<ukash-shop.net>
<ukashsiteleri.com>
<ukashsiteleri.net>
<ukashtr.net>
<ukashtr.org>
<ukashturkiye.net>
<uukash.com>
William R. Towns
Sole Panelist
Dated: January 3, 2012
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
2 These slight alterations do not diminish the confusing similarity of the disputed domain names with the Complainant’s mark in terms of sight, sound and overall impression, and are strongly evocative of the practice commonly referred to as “typosquatting” – the intentional registration and use of a domain name that is a common misspelling of a mark. The Panel notes that in situations where the disputed domain name is a common or obvious misspelling of a complainant’s mark, confusing similarity normally is found. See WIPO Overview 2.0, paragraph 1.10.