WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JSM Capital AB v. Joan Baker
Case No. D2016-2499
1. The Parties
The Complainant is JSM Capital AB of Varberg, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Joan Baker of Dover, Delaware, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <cashbuddy.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2016. On December 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2016, the Registrar transmitted by email to the Center its verification response.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 11, 2017. 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 is a Swedish company providing various financial services such as consumer credit and loans under the trademark CASHBUDDY.
The Complainant is the registrant of the following trademarks:
CASHBUDDY.SE, word mark, registered with the European Intellectual Property Office (EUIPO), application date September 2, 2010, registration date February 8, 2011, registration number 9349234, class 36;
CASHBUDDY.SE, figurative, EUIPO, application date September 13, 2010, registration date March 18, 2011, registration number 9369851, class 36;
CASHBUDDY, figurative, EUIPO, application date March 19, 2014, registration date August 4, 2014, registration number 12708665, classes 35, 36, 45;
CASHBUDDY, word mark, EUIPO, application date March 19, 2014, registration date August 4, 2014, registration number 12708533, classes 35, 36, 45.
No background information is available about the Respondent except for the contact details provided to the Registrar. The disputed domain name was first registered on March 12, 2003 by another registrant, and according to the WhoIs record was in the name of the present Respondent on June 20, 2014.
5. Parties’ Contentions
The Complainant contends that it has rights in the trademarks CASHBUDDY and CASHBUDDY.SE. The Complainant says the disputed domain name contains the trademark CASHBUDDY in its entirety and is confusingly similar to it except for the addition of the generic Top-Level Domain (“gTLD”) designation “.com”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name and has not been authorised by the Complainant to register a domain name containing the Complainant’s trademark. The Complainant says the disputed domain name resolves to a website containing sponsored links and there is no evidence of other use or preparations for use. The Respondent is not commonly known by the disputed domain name and there is no evidence of legitimate non-commercial or fair use of the disputed domain name.
The Complainant says the disputed domain name was registered and is being used in bad faith. The trademark CASHBUDDY is distinctive, which is suggestive of the disputed domain name having been registered by the Respondent with the trademark in mind. The disputed domain name was acquired by the Respondent in June 2014, being later than the registration of the Complainant’s trademarks.
The Complainant contends that the disputed domain name was registered for the purpose of misleading, for commercial gain, consumers searching for the Complainant’s trademark. The Complainant says it is prevented from registering the disputed domain name, and its business is being disrupted by the Respondent’s use of it.
The Complainant says it sent a cease-and-desist letter to the Respondent on December 1 (presumably of 2016, since it is dated otherwise) and did not receive a reply.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced copies of its trademarks for CASHBUDDY.SE, which were granted registration before the disputed domain name was registered by the Respondent, and for CASHBUDDY, which were registered after the disputed domain name but were applied for earlier. The Panel is satisfied that the Complainant has the requisite rights in the trademarks CASHBUDDY.SE and CASHBUDDY for the purposes of paragraph 4(a)(i) of the Policy.
The disputed domain name is <cashbuddy.com>, of which the gTLD designation “.com” may be disregarded in the determination of confusing similarity. The definitive part of the disputed domain name, “cashbuddy”, is found to be identical to the Complainant’s registered trademark CASHBUDDY and confusingly similar to the trademark CASHBUDDY.SE, of which the component “.SE” is taken to refer to the country code Top-Level Domain (“ccTLD”) for Sweden. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie under paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been authorised by the Complainant to register a domain name containing the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not replied. The Complainant has produced evidence that the disputed domain name resolves only to a website offering sponsored links, which the Panel finds not to amount to a bona fide offering of goods or services by the Respondent since it is conducted through the use of the Complainant’s trademark. There is no evidence that the disputed domain name is a name by which the Respondent has been commonly known or that it has been used for a legitimate non-commercial or fair purpose. The Panel finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The disputed domain name, according to the WhoIs, was created by a previous registrant on March 12, 2003 and was recorded under a different registrant name on April 20, 2014. The WhoIs record shows the Respondent to have been the registrant on June 20, 2014, which is taken to be the date of registration of the disputed domain name for the purposes of the present proceeding. June 20, 2014 is later than the registration dates of the Complainant’s CASHBUDDY.SE trademarks in 2011.
Although the disputed domain name was registered by the Respondent while the application for the trademark for CASHBUDDY standing alone was pending, and the Panel would find on the evidence that, in the wording of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 3.1, “... it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights ...”, nevertheless it is sufficient to proceed in respect of the trademark CASHBUDDY.SE.
The Complainant has produced screen captures made on December 1 and December 12 (presumably of 2016) showing the web pages, expressed partly in Swedish and partly in English, to which the disputed domain name has resolved. Without resort to the provisions of paragraph 11 of the Rules it is evident that the website of the disputed domain name has offered links to third parties, for example “Get Google Chrome / google.com/chrome Fast, simple & secure web browser for all your devices. Download now!” and “Drive with Uber official / uber.com No Schedule: Drive When You Want. Get paid weekly in fares”. Prominent advertisements in English offered “.com” domain name registration services, an advertisement for website construction services with a “Get Started” button, and “Would you like to buy this domain?” with a “Learn More” button. The hosting provider, GoDaddy LLC, offered links on the website to a number of its services.
Thus, on the evidence, the disputed domain name is parked and it may reasonably be concluded that in accordance with the familiar domain name industry model, it is intended in the interim to earn advertising revenue of which the Respondent may receive a share. Furthermore, the disputed domain name is evidently for sale.
On the evidence, the Panel finds it more probable than not that the disputed domain name incorporating the distinctive component of the Complainant’s CASHBUDDY.SE trademark was acquired and registered by the Respondent speculatively with the primary intention of eventual sale or lease on profitable terms to either the Complainant or a competitor of the Complainant, which need not imply a direct business competitor (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279). The disputed domain name is found therefore to have been registered by the Respondent in bad faith under paragraph 4(b)(i) of the Policy. The fact that the disputed domain name is presently parked does not necessarily obviate a finding of use in bad faith. The Panel is unable to conceive of a plausibly legitimate use by the Respondent of the disputed domain name since it embodies the element CASHBUDDY of the Complainant’s trademark without authorisation. The disputed domain name is found to be in use to at least the extent of displaying its availability for purchase and as a platform for potentially remunerative advertising. Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
Furthermore, in order to derive revenue from click-through links or advertising, the Respondent’s website must necessarily attract Internet visitors. Inescapably the incorporation of the element CASHBUDDY of the Complainant’s trademark into the disputed domain name is intended to be a factor in the attraction of visitors to the corresponding website. The Panel finds the use of the disputed domain name for the provision of links to advertisers, irrespective of any division of revenue between the Respondent and intermediaries, to be evidence of an intention to attract Internet users by confusion with the Complainant’s trademark for commercial gain, constituting use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Panel further finds, on the evidence, that the disputed domain name was registered for the bad faith purposes for which it has been used.
Accordingly, on the totality of the evidence and on the balance of probabilities, the Panel finds that the disputed domain name has been registered and is being used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
The Complainant’s assertions of a blocking registration, of disruption to its business, and of its cease-and-desist letter having been ignored, are noted but need not be pursued.
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 <cashbuddy.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: January 20, 2017