The Complainant is Cash Converters Pty Ltd. of Perth, Western Australia, Australia represented by Wrays, Australia.
The Respondent is Rui Zhang of Nanjing, Jinagsu, China.
The disputed domain name <wwwcashconverters.com> is registered with Moniker Online Services, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2013. On April 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2013.
The Center appointed Stefan Naumann as the sole panelist in this matter on June 19, 2013. 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 is an Australian company that operates pawn broking outlets. It owns six Australian trademarks, two United Kingdom trademarks and five United States of America (US) trademarks containing the terms “cash converters” in capital letters, either in a specific font or plain block letters, alone or in combination with graphic elements. The various marks designate products and services in international classes 9, 35, 36, 38, 39 and 42. The earliest trademark was filed on May 16, 1989 in Australia, and the marks have all apparently been duly renewed and are currently in effect according to the print-outs from the databases of the corresponding trademark offices that were submitted by the Complainant.
The Complainant’s marks include the following:
- UK registration No. 1 463 232 cash converters of May 2, 1991;
- Australian registration No. 610 704 cash converters ca$h converters of august 31, 1993;
- Us registration No. 1 991 782 cash converters of June 20, 1994;
- Australian registration No. 806 655 cash converters of September 10, 1999.
All of the trademarks were filed before the disputed domain name <wwwcashconverters.com> was registered on October 7, 2010.
The Complainant also claims trade name rights in the terms “cash converters” and owns various domain names with the terms “cash converters”.
The evidence shows that the website that appears at “www.wwwcashconverters.com” contains links to websites offering loans, fast cash, emergency cash, cash for diamonds, loan deals, quick cash and small loans.
The Complainant asserts that the registered CASH CONVERTERS trademarks are distinctive since the words “cash converters” do not constitute a common phrase, have no dictionary meaning, and the marks have acquired secondary meaning as a combination of terms referring to the Complainant and its business in Australia.
The Respondent has no relationship with the Complainant and has no permission from the Complainant to use any of Complainant’s trademarks, nor is it commonly known by the disputed domain name.
The Complainant asserts that the Respondent’s registration and use of the disputed domain name violates the Complainant’s rights in the registered CASH CONVERTERS trademarks, and that the disputed domain name is used by the Respondent solely to attract Internet users by creating a likelihood of confusion. In this context, the Complainant argues that <wwwcashconverters.com> is identical or confusingly similar to the CASH CONVERTERS trademarks, and that the only difference between the Complainant’s trademarks and the disputed domain name is the use of the letters “www”.
The Complainant offers further detailed analysis in support of its case and points to previous UDRP decisions that have ordered the transfer of other domain names filed by the Respondent (four cases) or ordered the transfer of domain names with the terms “cash converters” from other respondents to the Complainant (four cases out of ten brought by the Complainant).
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i). the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii). the Respondent has 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.
The disputed domain name incorporates the words “cash converters” of the CASH CONVERTERS trademarks. The verbal element alone of the CASH CONVERTERS trademarks is composed of two words that together are strongly evocative of and may even seem descriptive for financial services such as pawn broker services. However, the terms “cash converters” are not a common expression or a combination of words in accordance with ordinary rules of grammar that together describe a pawn broker, nor is there any evidence before the Panel (i) that this combination of words had become a descriptive phrase in common or professional parlance in any of the three countries where the Complainant filed its marks before those marks were filed, or (ii) that this combination has become a generic phrase for pawn brokers since then.
The Complainant indicates that previous UDRP panels have also found that the marks are or have become sufficiently distinctive to be protected.
The Panel finds that the trademarks are distinctive or have become distinctive for the products and services covered by the marks for the purposes of the present dispute.
The disputed domain name <wwwcashconverters.com> only differs from the CASH CONVERTERS trademarks in details that do not diminish the risk of confusion resulting from the similarity to the trademarks in which the Complainant has rights. Specifically, and in line with the UDRP cases cited by Complainant, the mere addition of the letters “www” to the terms “cash converters” is not sufficient to dispel the confusing similarity between the CASH CONVERTERS marks and the disputed domain name. When viewed in light of Respondent’s prior UDRP cases as respondent, it appears that the use of the letters “www” may in fact have been intended to achieve this result.
The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s CASH CONVERTERS trademarks for the purposes of the Policy.
The Respondent has chosen not to reply to the Complaint and the Panel has found that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests and has found no indication in the evidence that the Respondent claims or could have claimed rights or legitimate interests of its own in the terms “Cash Converters”. To the contrary, the Respondent’s track record as respondent in previous UDRP cases indicates that it has repeatedly filed third party marks as domain names with typographical errors or in combination with non distinctive terms. Since the Respondent has no permission from the owner of the CASH CONVERTERS marks, its use of the disputed domain name is without rights or legitimate interests.
The Panel considers that in the present case the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Respondent’s use of a webpage with links to various pawn brokerage and loan operators for small loans for individual borrowers, which are services competing with those of the Complainant, indicates that the Respondent registered and is using the disputed domain name in bad faith.
In view of the above, the Panel also finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as per paragraph 4(b)(iv) 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 domain name <wwwcashconverters.com> be transferred to the Complainant.
Stefan Naumann
Sole Panelist
Dated: July 3, 2013