WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cash Converters Pty Ltd. v. Cameron David Jackson
Case No. D2014-2265
1. The Parties
The Complainant is Cash Converters Pty Ltd. of Perth, Australia, represented by Wrays, Australia.
The Respondent is Cameron David Jackson of Kingston, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <cashconverterbabes.com>, <cashconverters.asia>, <cashconvertersg.com>, <cashconverters.link>, <cashconvertersmobile.com>, <cashconverters.trade>, <cashconverterstv.com>, <cashconvertersydney.com>, <cashconverters.name>, <cashconverterspenrith.com>, <cashconverterscourtcase.com>, <cashconverters.click>, and <cashconvertersinternational.com> are registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2014. On December 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 28, 2014, February 13, 2015, March 8 and 9, 2015, 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 January 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2015.
On February 6, 2015, the Center received a Supplemental Filing from the Complainant requesting the addition of the domain names <cashconverters.trade>, <cashconverterstv.com>, <cashconvertersmobile.com>, <cashconvertersg.com>, <cashconvertersydney.com>, and <cashconverterbabes.com> to this proceeding. The Center acknowledged its receipt, and informed the parties that it would be forward to the Panel, once appointed, who would have the discretion to accept or reject it.
The Center appointed James A. Barker as the sole panelist in this matter on February 12, 2015. 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.
As the Complainant sought to add additional domain names to this dispute, upon appointment the Panel issued Administrative Panel Procedural Order No. 1 on February 12, 2015. The Panel allowed the addition of the further disputed domain names, subject to allowing the Respondent a further opportunity to file a Response, and to accordingly extend the due date for the decision until March 6, 2015. The Respondent sent only a very brief email to the Center in response to this Panel Order, stating that the Respondent wanted to keep the disputed domain names, but not otherwise addressing the merits of the Complaint.
On February 24, 2015, the Complainant filed a further supplemental submission, seeking to add yet another five domain names to this dispute: <cashconverters.name>, <cashconverterspenrith.com>, <cashconverterscourtcase.com>, <cashconverters.click>, and <cashconvertersinternational.com>. The Complainant requested that these domain names also be included in this dispute because, since its further request of February 6, 2015, the Complainant had become aware that the Respondent had registered a further 5 domain names incorporating the Complainant’s trademark.
In response to this additional filing, the Panel issued Administrative Panel Procedural Order No. 2 in which it further extended the due date until March 12, 2015 and noted that, to allow this case to proceed to a decision, the Panel would not consider the addition of any further domain name to this dispute.
4. Factual Background
The Complainant has a number of registered marks for CA$H CONVERTERS (stylized) that prominently incorporates the term “cash converters” or includes those words together. The earliest of these marks was registered in 1989.
The Complainant is a well-known international pawn-broking and short-term loan business. The core business of the Complainant is the ownership and franchising of its retail and financial services stores. The Complainant’s business was originally established in 1984 with a store in Perth, Western Australia. Since that time, the Complainant’s business has grown to 146 stores throughout Australia and 200 stores in 21 countries around the world, including in particular in Malaysia and Singapore.
The Complainant has registered a number of domain names in connection with its business, including <cashconverters.com> and a large number of country code domain names that incorporate its mark.
The disputed domain names were registered between December 2014 and February 2015.
The Respondent has been a previously unsuccessful respondent in proceedings under the Policy. See e.g. BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338. The Complainant provides evidence that the Respondent is the registrant of a large portfolio of other domain names that apparently incorporate the trademarks of third parties.
5. Parties’ Contentions
The Complainant argues that the disputed domain names are identical or confusingly similar to its registered marks. The Complainant notes that six of the disputed domain names wholly incorporate its mark, if the generic Top-Level Domain (gTLD) is ignored. The disputed domain name <cashconvertsg.com> consists of the Complainant’s mark combined with the letters “sg”, which is the country code for Singapore. The disputed domain name <cashconvertersydney.com> and <cashconverterspenrith.com> include the Complainant’s trademark with a geographic identifier. The remainder of the disputed domain names include only generic terms, which serve to reinforce a connection with the Complainant.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant says the Respondent has no relevant authorization from the Complainant, and is making an illegal, commercial and unfair use of the disputed domain names. The disputed domain names either redirect to YouTube videos (most of which are music videos which do not relate to the Complainant) or are “parked”. As at February 19, 2015, the disputed domain name <cashconvertersinternational.com> directs to a website at “www.pooman.co.nz”.
Thirdly, the Complainant alleges that the disputed domain names have been registered and used in bad faith. The disputed domain names are so obviously connected with the Complainant that their use by someone with no connection to the Complainant suggests opportunistic bad faith. In December 2014, the Respondent contacted the Complainant’s representative, offering to sell two of the disputed domain names for $ 600. The Respondent followed this offer up with further emails and phone calls. The Complainant sent a “cease and desist” letter to the Respondent on December 15, 2014. The Respondent made a series of further offers (by email) to sell other disputed domain names, including those which the Complainant sought to include in these proceedings after the filing of the initial Complaint. The Respondent is a flagrant recidivist registrant of domain names that incorporate third party trademark rights.
The Respondent did not formally reply to the Complainant’s contentions.
After the Notification of Respondent Default, the Respondent wrote to the Center on February 5 and 6, 2015, that allowing further domain names to be added to this dispute would not be fair. In this communication, the Respondent did not otherwise respond to the merits of the Complaint or explain why he thought it would not be fair to include further domain names in the dispute.
In response to the first Panel Order issued on February 12, 2015, the Respondent replied on February 16, 2015 that he wished to keep the disputed domain names. He further stated “There are a diverse market for these domain names in many countries, and one interested party cannot seek to avoid paying a fair market price otherwise they always have the opportunity to register them”.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below, immediately following a consideration of the addition of the disputed domain names that were added to this dispute, after the commencement of the administrative proceeding.
A. Additional Disputed Domain Names
As noted above, in its supplemental filings the Complainant sought to include further domain names in this dispute after the commencement of the administrative proceeding. On February 6, 2015, the Complainant sought to add six domain names to this dispute, and a further five on February 24, 2015.
Neither the Policy nor the Rules explicitly address the way in which the Panel should approach such a request. Paragraph 10(e) of the Rules provides that the Panel “shall” decide a request by a party to consolidate multiple domain name “disputes”. That is, this paragraph requires consideration of two issues: Firstly, are there “disputes” to be consolidated? Secondly, is the Panel required to consider consolidation?
On the first issue, neither the Policy (in particular, paragraph 4(f)) nor the Rules articulate what a “dispute” is for this purpose. The “disputes” to be consolidated might be separately filed complaints under the Policy and the Rules. Alternatively, “disputes” could relate to any dispute over a domain name, if it is in connection with a complaint filed under the Policy and the Rules. This Panel has taken the latter approach, consistent with the general meaning of the term. It is also an approach consistent with previous UDRP panel decisions on this issue: see e.g. Sharman License Holdings, Limited v. Mario Dolzer, WIPO Case No. D2004-0935. On either approach, consolidation would involve an amendment to a complaint to include additional domain names.
On the second issue, paragraph 10(e) of the Rules does not require a request for consolidation to be made at any particular time or in a particular form, but does require that the Panel “shall” consider it. On the other hand, paragraph 12 of the Rules provides that the Panel “may” request, in its sole discretion, further statements or information from either of the parties, and paragraph 10(a) the Rules provides for a panel to conduct the administrative proceeding in such a manner as it considers appropriate. Paragraph 12 and 10(a) of the Rules might suggest that the consideration of a supplemental filing (to include further domain names) is a discretionary matter, if it is one that has not been asked for by the Panel. Paragraph 10(e) of the Rules suggests that it is mandatory.
This Panel considers that the clear terms of paragraph 10(e) of the Rules require the Panel to decide on a request for consolidation, at least if that request is submitted before the Panel is appointed. This is also consistent with the intent of the Policy, which is for an efficient and fair proceeding. The intent of the Policy suggests to this Panel that a request for consolidation should generally be allowed, as long as it is more efficient to proceed that way, and does not result in unfairness to the Respondent. The Panel does not consider this is at odds with paragraphs 12 and 10(a) of the Rules, which deal with the more general circumstance where a panel considers it appropriate to seek further information, and the general powers of the panel respectively.
As such, in accordance with paragraph 10(e) of the Rules, the Panel must make a decision on the request, and can only do so if the Panel considers it. In this connection, the Complainant refers to previous UDRP Panel decisions relating to the issue of whether a supplemental submission should be allowed: e.g. A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172. It follows that the Panel does not consider it relevant to apply those principles in this case. (Not all panels have proceeded this way however: others have proceeded on the basis that a request to consolidate a dispute is, in effect, a supplemental submission which is discretionary to consider: e.g. Tractor Supply Co. of Texas LP and Tractor Supply Company v. Speedeenames.com / Troy Rushton, WIPO Case No. D2010-0795.)
In this case, however, the Complainant submitted two requests to add domain names to this dispute, one before and one after the Panel was appointed. While the Panel considers that a request for consolidation received before the Panel is appointed must be decided on, does the same hold for a request received even after the Panel is appointed? Again, neither the Policy nor the Rules are explicit on this point. Paragraph 4(f) of the Policy suggests that a petition to consolidate a dispute shall be made to the panel once it is appointed. But a panel is also required to render a decision within 14 days “absent exceptional circumstances” and is required to conduct a proceeding with “due expedition”. On balance, the Panel considers that the Policy suggests that requests received after the Panel is appointed should generally be considered, subject to the requirement for an expeditious proceeding. Requests made after the Panel is appointed will make it more difficult to render a decision within the timeframes required by the Rules.
In this Panel’s experience, requests to consolidate a dispute occur infrequently. As such, the Panel considered that the Complainant’s request of February 24, 2015 could reasonably be treated as exceptional circumstances for the purpose of paragraph 10(c) of the Rules, but that any further requests would unreasonably delay the proceedings. Accordingly, the Panel extended the due date for decision in this case in response to the Complainant’s requests for addition of further domain names (i.e. to consolidate the disputes), but also noted that no further requests would be considered.
Having considered the Complainant’s requests, the Panel decided to accept the additional domain names in this dispute and, as such, the Complainant’s relevantly amended Complaint. The Panel made this decision on the basis that:
- The addition of the disputed domain names would not cause a significant delay to these proceedings.
- Requiring the Complainant to file a new Complaint for additional domain names would, overall, require additional time and administrative expense for both parties. To require the Complainant to submit a new Complaint would also create the potential for further disruption, as the requirements for the domain names to remain on Registrar “lock” would only apply after the commencement of a new proceeding;
- The Respondent provided no real explanation as to why additional domain names should not be added. While the Respondent made a claim that the addition of domain names would be “unfair”, he did not explain the basis for this contention. In the circumstances of this case, the Panel can think of no reason why it would be unfair to the Respondent to consolidate the dispute.
- On its face, the disputed domain names all appear to have a similar character and be part of a similar pattern of conduct by the Respondent.
- In a number of cases (e.g. <cashconverterspenrith.com>) the Respondent has registered the disputed domain names after the date of the Panel appointment on February 12, 2015, or after the due date for the Response (e.g. <cashconvertersinternational.com.>) despite this proceeding. These additional registrations could not have been foreseen by the Complainant.
B. Identical or Confusingly Similar
The Complainant provided evidence of its registered trademark rights for CASH CONVERTERS. All of the disputed domain names incorporate that mark entirely, and merely add descriptive terms/letters or geographic identifiers. It is well-established under the Policy to find that the entire incorporation of a mark in a domain name, including a domain name that adds a generic word, may be sufficient for a finding of confusing similarity. See e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. Similar findings have also been made in prior cases involving the Respondent, where the Respondent’s conduct was comparable to its conduct in this case: see e.g., BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, supra.
Further, in the Panel’s view, the addition of the generic or geographic terms in this case are ones that an Internet user might readily associate with the Complainant’s business. As such, the addition of those terms are only likely to increase the potential for confusion with the Complainant’s mark.
For these reasons, the Panel considers that the Complainant has established that the disputed domain names are confusingly similar to a trademark in which it has rights, for the purpose of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The second thing which the Complainant must establish to succeed is that the Respondent has no rights or legitimate interests in the disputed domain names. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), for this element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating such rights or legitimate interests.
The Complainant is this case has made a substantial case against the Respondent. The Respondent has not submitted a substantive Response. As such, the Complainant’s case stands unrebutted. There is otherwise no evidence in the case file that would suggest the Respondent has rights or legitimate interests in the disputed domain names. Instead, the evidence of bad faith (outlined below) strongly indicates that the Respondent lacks rights or legitimate interests.
For these reasons, the Panel considers that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain names, for the purpose of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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) [the respondent has] registered the domain name in order to prevent the owner of the trade mark 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) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The evidence in this case indicates that the Respondent has variously acted in bad faith in some or all of these circumstances. For the purpose of this dispute, it is sufficient to consider the evidence of bad faith for the purpose of paragraph 4(b)(i) of the Policy.
The Complainant provides evidence of a series of approaches to it from the Respondent, between December 2014 and February 2015, offering to sell the particular domain names in dispute and, on other occasions the disputed domain names more generally. These include emails in which the Respondent refers to the “cash converters domains” for sums including $ 200 to $ 600. On its face, these sums appear to the Panel to be in excess of the out-of-pocket costs that could reasonably be incurred by the Respondent. The alternative “documentation” of those costs would be peculiarly within the knowledge of the Respondent. The Respondent has not come forward with evidence of those documented costs to show that what it was seeking was merely to recoup its costs. Rather, the nature of the Respondent’s repeated communications suggest that the sale of the disputed domain names to the Complainant was his primary motivation.
This conclusion is reinforced by evidence that the Respondent has engaged in similar conduct in a previous proceeding under the Policy: BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, supra. There was little evidence that the Respondent had an alternative motivation in mind. As noted above, the Complainant provided evidence that the disputed domain names were variously “parked” or referenced to particular YouTube videos with no apparent relationship to the dispute domain names itself. This evidence indicates to the Panel that the Respondent had no particular use in mind for the disputed domain names, other than the potential for them to be opportunistically used for sale to the Complainant.
For these reasons, the Panel finds that the Complainant has established that the disputed domain names were registered and used in bad faith for the purpose 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 following disputed domain names be transferred to the Complainant: <cashconverterbabes.com>, <cashconverters.asia>, <cashconvertersg.com>, <cashconverters.link>, <cashconvertersmobile.com>, <cashconverters.trade>, <cashconverterstv.com>, <cashconvertersydney.com>, <cashconverters.name>, <cashconverterspenrith.com>, <cashconverterscourtcase.com>, <cashconverters.click>, <cashconvertersinternational.com>.
James A. Barker
Date: March 11, 2015