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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CNU Online Holdings LLC v. To Thi Thanh Tam/ Vietnam Domain Privacy Services (VDPS)

Case No. D2014-1896

1. The Parties

The Complainant is CNU Online Holdings LLC of Chicago, Illinois, United States of America, represented by Foley & Lardner, United States of America.

The Respondent is To Thi Thanh Tam / Vietnam Domain Privacy Services (VDPS) of Ho Chih Min City, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <cashusanet.com> is registered with April Sea Information Technology Corporation ("the Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2014, 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/disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2014, providing the Registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on November 4, 2014.

The Center verified that 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 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 27, 2014, the Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 28, 2014.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on December 9, 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

Since at least as early as 2004, the Complainant which markets financial services, or its predecessor in interest, has used the name and marks CASHNETUSA and CASHNETUSA.COM to brand its financial services.

The Complainant currently owns United States Federal Trademark registrations, incorporating the mark CASHNETUSA, covering financial lending services, namely money lending, in class 36.

These include the following marks:-

- CASHNETUSA – number 3,210,976

- CASHNETUSA.COM – number 3,380,743

- CASHNETUSA – number 4,521,941

- CASHNETUSA (stylised) – number 4,617,254

- CASHNETUSA (stylised) – number 4,617,253

- MONEYS ON THE WAY WITH CASHNETUSA – number 4,389,011

- CASHNETUSA – MONEY'S ON THE WAY (and design) – number 4,517,667

- CASHNETUSA MONEYS ON THE WAY (and design) – number 4,517,668

- CASHNETUSA.COM MAKE ANY DAY PAYDAY – number 3,893,164

- CASHNETUSA.COM MAKE ANY DAY PAYDAY (stylised) – number 3,893,165

Copies of the registration certificates for the above marks are annexed to the amended Complaint at Annex D.

The Complainant markets its services via its website accessible from the domain name <cashnetusa.com>. This domain name was registered on January 22, 2004. A true and correct copy of the printout of WHOIS lookup for the domain name <cashnetusa.com> is annexed as Annex E to the Amended Complaint.

The Complainant has invested a substantial amount of time and resources to promote and advertise the CASHNETUSA service marks and the goods and services associated therewith. The Complainant advertises extensively online, promoting its CASHNETUSA service marks and brand through multiple social media pages, blogs offering useful financial tips to consumers, banner advertisements, search engine optimisation marketing and the use of unique and innovative sweepstakes and contest promotions to engender goodwill amongst its new and prospective customers.

Conservatively, the Complainant has spent millions of dollars each year over the past five years to advertise and promote its business, goods and services under the CASHNETUSA service marks. The Complainant has developed extremely valuable goodwill and an outstanding reputation in the CASHNETUSA service marks. The marks are famous for financial services and indicate the quality of services originating exclusively with the Complainant.

On or about July 14, 2014, the Complainant first learned that the domain name in dispute was pointing to a website (the Respondent's website) that contains hyperlinks to multiple competitor financial service sites of the Complainant, including <checkintocash.com>, <cashloanwebbank.com> and <loanbyphone.com>. Copies of extracts from these websites captured on October 27, 2014, are annexed to the Amended Complaint at Annex F.

On August 1, 2014 and August 18, 2014, the Complainant sent a demand letter via electronic mail to the Respondent regarding the unauthorised use of the CASHNETUSA service marks and the domain name. The Respondent did not respond to that letter, copies of the correspondence sent to the Respondent are annexed to the Amended Complaint at Annex G.

In the absence of a Response and evidence to the contrary, the Panel finds that the evidence adduced by the Complainant to be true and proceeds to determine the Complaint on the basis of that evidence.

5. Parties Contentions

A. Complainant

1. The Complainant submits that it has trademark rights in the mark CASHNETUSA.COM and variations of that mark.

2. The Complainant submits that the domain name in dispute is confusingly similar to the Complainant's service marks CASHNETUSA.

3. The Respondent has never been authorised by the Complainant to use any of the CASHNETUSA service marks or any mark confusingly similar thereto. There is no evidence that the Respondent has any rights or legitimate interests in the domain name.

4. There is no evidence that the Respondent is engaged in bona fide use of the domain name in dispute.

5. There is no evidence that the Respondent has been commonly known by the domain in dispute.

6. The Respondent is not making legitimate non-commercial or fair use of the domain name.

7. The only reason the Respondent could possibly have registered the domain name in dispute is to attract users looking for the Complainant's website for the Respondent's own commercial gain. This is evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion And Findings

A. Identical or Confusingly Similar

Given the evidence adduced by the Complainant of its registered trademarks, consisting of the mark CASHNETUSA and variations of that mark, together with evidence of promotion of its services under that mark, the Panel finds that the Complainant owns and has well established rights in those service marks.

The domain name in dispute is confusingly similar to the Complainant's CASHNETUSA service marks, save that the terms "net" and "usa" have been reversed. In the Panel's view, the reversal of "net" and "usa" is insufficient to distinguish the domain name in dispute from the Complainant's marks and that the domain name in dispute <cashusanet.com> contains essentially the same elements as the Complainant's trademarks. Accordingly, the Panel finds that the domain name in dispute is confusingly similar to the Complainant's trademarks CASHNETUSA.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has been commonly known by the domain name in dispute nor that it has acquired trademark or service rights in the domain name.

There is also no evidence that the Respondent has been commonly known by the domain name in dispute or has acquired trademark or service mark rights in the domain name prior to the registration of the domain name. It is established by previous decisions that a respondent must have been commonly known by the domain name prior to the date of registration. This is not so here.

Moreover, the Panel takes the view that the Respondent's use of the domain name misdirects potential visitors seeking the Complainant's commercial website to the Respondent's own website and that this does not constitute a bona fide offering of goods or services and therefore does not constitute a legitimate noncommercial or fair use of the domain name in dispute.

C. Registered and Used in Bad Faith

The Complainant asserts that the only reason the Respondent could possibly have registered the domain name is in order to attract users looking for the Complainant's website and that this was intentionally done in order to misdirect consumers to the Respondent's website. Having considered the evidence of the Respondent's website, the Panel takes the view that it is confusingly similar to the Complainant's website. The Panel therefore finds that the Respondent registered the domain name in dispute in order to attract users looking for the Complainant's website for the Respondent's own commercial gain.

The Panel also takes into account that the Respondent did not reply to the Complainant's demand letter and that the Respondent's use of a privacy service to conceal the underlying Registrant of the domain name further evidences bad faith.

In these circumstances and in the absence of any evidence to the contrary from the Respondent, the Panel finds that the Respondent has registered and used the domain name in dispute in bad faith.

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 <cashusanet.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist
Date: December 23, 2014

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