WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cash Converters Pty Ltd v. Craig Nelson
Case No. D2013-0673
1. The Parties
The Complainant is Cash Converters Pty Ltd of Perth, Western Australia, Australia, represented by Wrays, Australia.
The Respondent is Craig Nelson of Helensvale, Queensland, Australia.
2. The Domain Names and Registrar
The disputed domain names <carcashconverters.com> and <cashcarconverters.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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. In response to a notification by the Center regarding the mutual jurisdiction, the Complainant clarified its selection of the mutual jurisdiction on April 16, 2013.
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 April 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on May 13, 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.
4. Factual Background
The Complainant operates an international pawn broking business that began in 1984 with a single store in Perth, Western Australia. The Cash Converters business has grown to 146 stores throughout Australia and over 630 stores in 16 countries around the world and 45 stores in Queensland.
The Complainant owns various logo and word mark registrations which incorporate its CASH CONVERTERS word mark including Australian word mark registration number 806655 for CASH CONVERTERS which dates from 1999. The Complainant offers its products and services in particular through a website at its domain name “www.cashconverters.com.au” as well as through various other websites.
The Respondent registered both the disputed domain names on July 12, 2012.
5. Parties’ Contentions
The Complainant asserts that it owns registered trade mark rights in the CASH CONVERTERS mark as set out above and that each of the disputed domain names is confusingly similar to the CASH CONVERTERS mark. It submits that the addition of the generic word “car” in each of the disputed domain names does nothing to distinguish the disputed domain names from the Complainant’s mark.
The Complainant says that it has not authorized the Respondent’s use of its CASH CONVERTERS mark and nor is the Respondent making a use of the mark in relation to bona fide goods or services or a legitimate noncommercial or fair use of the disputed domain names. It submits that the Respondent is using the disputed domain names to advertise the services of competitors of the Complainant which is not a legitimate use.
As far as bad faith is concerned the Complainant asserts that its CASH CONVERTERS mark is an unusual and coined phrase which has no common meaning in English and was used by the Complainant some 26 years prior to the registration of the disputed domain names. Based on the renown attaching to the Complainant’s mark, in particular in Queensland, the Complainant says that the Respondent must have known of its mark and that he purposefully incorporated it into the disputed domain names in order to take advantage of goodwill attaching to the mark. The Complainant asserts the Respondent did so in order to divert Internet users to various pay per click (PPC) parking sites which offer payday loan services that compete with certain of the services offered by the Complainant (including pawn-broking and loan services). It hypothesise also that as the Respondent owns the domain name <motorvehiclesdirect.com> at which the Respondent appears to operate a car sales business that the Respondent may eventually seek to use the disputed domain names to divert customers to this site also.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trade mark rights in the CASH CONVERTERS mark as set out above and in particular, Australian word mark registration number 806655 for CASH CONVERTERS. This mark although the combination of two common English words comprises an expression that is not commonly used in the English language and is therefore distinctive.
The disputed domain names differ from this mark only by the inclusion of the word “car”, either before the mark or in between its constituent elements. The mere inclusion of this common English word does nothing to distinguish either of the disputed domain names from the Complainant’s mark and as a result the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s trade mark.
As a consequence the Panel finds that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
There is no evidence to suggest that the Complainant has authorised the use of its CASH CONVERTERS mark by the Respondent, that the Respondent is making a bona fide offering of goods or services in relation to either disputed domain name or that the Respondent is making a noncommercial or fair use of either disputed domain name. As further set out under Section C below the Panel finds that the Respondent’s use of the disputed domain names is not legitimate and as a result finds overall that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in either of the disputed domain names.
As there is no evidence before the Panel to rebut this case, the Panel finds that the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
By the date of registration of the disputed domain names (July 12, 2012) the Complainant had been using its CASH CONVERTERS trade mark for approximately 26 years in Australia. Notably, the Complainant appears to have opened a substantial number of outlets in Queensland by this time and the Panel infers that it enjoyed as a result a substantial degree of renown in that State. In these circumstances and considering that the phrase “cash converters” although made up of two common English words is not itself a common term in the English language and was obviously coined by the Complainant as its trade mark, it seems to the Panel that it is more likely than not that the Respondent, being based in Queensland, was well aware of the Complainant’s trade mark and business. As a result the Panel infers that the Complainant chose purposefully to incorporate the CASH CONVERTERS mark into each of the disputed domain names, and therefore registered the disputed domain names in bad faith.
Each of the disputed domain names resolve to websites that contain advertisements for or links to products that in many cases offer loan services. The Complainant asserts that these products compete in particular with the loan services and pawn broking services offered from its own website and from its outlets under the CASH CONVERTERS mark. These appear to be PPC links and the Respondent’s conduct in choosing, registering and using the disputed domain names in this manner in the Panel’s view amounts under paragraph 4(b)(iv) of the Policy to the Respondent intentionally seeking to divert Internet users for commercial purposes by confusing them as to the affiliation, sponsorship or association of the Complainant’s mark when used in each of the disputed domain names. The Panel notes that it is possible that the Respondent’s eventual goal was as suggested by the Complainant to divert traffic to its website at “www.motorvehiclesdirect.com” although there is no evidence of such at this stage and it does not appear that any of the links at the Respondent’s webpages resolve to this site.
Overall the Panel is satisfied based on the evidence before it and on the balance of probabilities that the Respondent both registered and is using each of the disputed domain names in bad faith and accordingly finds that the Complaint succeeds under the third element 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 <carcashconverters.com> and
<cashcarconverters.com> be transferred to the Complainant.
Date: May 27, 2013