WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JSM Capital AB v. Whoisguard Protected, Whoisguard, Inc. / Jerry Yap, Empower Now Pte Ltd

Case No. D2016-1203

1. The Parties

Complainant is JSM Capital AB of Varberg, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.

Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Jerry Yap, Empower Now Pte Ltd of Singapore, Singapore, self-represented.

2. The Domain Names and Registrars

The disputed domain names <cashbuddy.club>, <cashbuddy.online> and <cashbuddy.website> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2016. On June 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 15, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 19, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 27, 2016. Complainant filed an amendment to the amended Complaint on June 28, 2016.

The Center verified that the Complaint together with the amended Complaint and the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2016. An automatic extension of the Response due date was granted until July 22, 2016 under paragraph 5(b) of the Rules. The Response was filed with the Center on July 19, 2016.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 1, 2016. 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

Complainant is a company incorporated in Sweden, operating since 2005 in the field of credit and lending. Complainant has conducted business since 2009 through a website at “www.cashbuddy.se”.

Complainant owns the following European Union trademarks:

(i) CASHBUDDY, reg. no. 012708533, application date March 3, 2014, registered in classes 35, 36, 45;

(ii) CASHBUDY (figurative), reg. no. 012708665, application date March 3, 2014, registered in classes 35, 36, 45;

(iii) CASHBUDDY.SE, reg. no. 009349234, application date September 2, 2010, registered in class 36; and

(iv) CASHBUDDY.SE (figurative), reg. no. 009369851, application date September 13, 2009, registered in class 36.

The Domain Names were all registered on March 22, 2016. Cease and desist letters were sent by Complainant to Respondent on April 6, 2016, without receiving any answer.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states that it has registered rights in its CASHBUDDY trademarks and that the Domain Names are identical to Complainant’s CASHBUDDY marks. The addition of a generic Top-Level Domains (“gTLD”), “.club”, “.website” and “.online,” are irrelevant for the assessment of confusing similarity between Complainant’s marks and the Domain Names. Complainant contends that because the CASHBUDDY marks and the Domain Names are identical, the requirements of paragraph 4(a)(i) of the Policy are fulfilled.

(ii) Rights or legitimate interests

Complainant asserts that Respondent does not have any rights in the CASHBUDDY mark, nor is Respondent a licensee of Complainant. Complainant has not given Respondent any permission to register its trademark as a domain name. There is no evidence that Respondent has been commonly known by the Domain Names or is making a legitimate noncommercial or fair use of them.

Complainant states that a review of the websites linked to the Domain Names shows that they are used to make a profit using Complainant’s business, by filling the sites with sponsored links to Complainant’s competitors, as shown by source codes and screen shots submitted in evidence. Complainant has the exclusive right to use the CASHBUDDY marks, as is demonstrated by its registered trademark rights. The use of the Domain Names strongly suggests that they were registered with the mark CASHBUDDY in mind and to commercially profit from misleading consumers searching for information about Complainant’s business.

Considering all of the above, Complainant argues that Respondent has no right or legitimate interest in respect of the Domain Names.

(iii) Registered and used in bad faith

Complainant states that its trademarks were registered well before Respondent became the owner of the Domain Names. The Domain Names are identical to Complainant’s registered rights. Complainant argues it is obvious Respondent was aware of Complainant’s trademarks and business when registering the Domain Names. Complainant was using the CASHBUDDY trademark as early as 2009, which means it was using the trademark for at least seven years before the Domain Names were registered. Also, the fact that the websites linked to the Domain Names include Complainant’s entire CASHBUDDY trademark and contain links to Complainant’s competitors implies knowledge of Complainant’s trademarks and business.

Complainant contends that Respondent is trying to take advantage of the CASHBUDDY trademark or at least inflict damage on Complainant’s business. Therefore, Complainant submits that the Domain Names have been registered to commercially profit from the likelihood of confusion between the trademark and the Domain Names, or at least use the likelihood of confusion in a way that is detrimental to Complainant and its business.

Complainant concludes that all of the above mentioned circumstances strongly suggest that the Domain Names have been registered and used in bad faith by Respondent.

B. Respondent

(i) Identical or confusingly similar

Respondent has not attempted to dispute whether Complainant has trademark rights in the CASHBUDDY marks, although Respondent has emphasized that the mark is registered only in the European Union and that Complainant does not have a right to prohibit the use of common English words in other countries or parts of the world where Complainant does not operate.

Respondent has not addressed the issue of whether the Domain Names are identical or confusingly similar to Complainant’s marks.

(ii) Rights or legitimate interests

In the Response, Respondent has not addressed directly the question of whether Respondent has any rights or legitimate interests in the Domain Names. The Panel observes, however, that in an email dated June 29, 2016 to the Center (before Respondent submitted its Response), Respondent stated that “The domains have been registered for a legitimate business that will operate in Asia only and not in the EU where the trademark has been registered.” Respondent has also stated that Complainant is seeking to prevent others from using “common English words.”

(iii) Registered and used in bad faith

In response to Complainant’s claim that Respondent is profiting from the Domain Names by using them for sites with sponsored links to Complainant’s competitors, Respondent states that the sponsored links are part of the default parking page set-up that the Registrar uses for all domain names that do not yet have their own webpage. Further, the following statement appears on the bottom of the parking pages linked to the Domain Names: “The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers”. Respondent emphasizes that it does not control the Registrar’s parking pages and does not maintain any relationship with the advertisers, and that Complainant has chosen to ignore these statements.

Respondent states that on June 29, 2016, Respondent wrote a letter offering, as goodwill, that Respondent was prepared to take down the parking pages and replace them with Respondent’s own legitimate business webpage. However, Respondent states that the Registrar had already locked the Domain Names and refused to allow Respondent to take down the websites.

Respondent argues “it is patently untrue that the domain names were registered with cashbuddy.se in mind and to commercially profit from misleading customers”. Respondent states that no logo of Complainant is present on any of the parking pages and these pages look nothing like Complainant’s site. Further, it is wrong for Complainant to claim that Respondent has attempted to cause confusion or to mislead Complainant’s target customers. Complainant’s website is written in Swedish and there is no option to view the site in any language other than Swedish. In order to apply for a loan, the applicant must have a Swedish social security number and be registered in Sweden. Respondent argues that this shows Complainant’s business is targeting only Swedish customers and not any other part of the EU or the world. Moreover, the CASHBUDDY trademark is only registered in the EU.

Respondent refutes that the Domain Names were registered in bad faith. Respondent does not operate any business in Sweden or the European Union. Respondent argues that it is therefore absurd to suggest that the Domain Names have been registered to commercially profit from the likelihood of confusion between Complainant’s trademark and the Domain Names, or use the likelihood of confusion in a way that is detrimental to Complainant’s business. Respondent stresses that there was no attempt at any time to cause confusion, mislead or commercially profit. Complainant’s claim that their customers have been misled or confused is spurious.

Respondent’s asserts that the Complaint has been submitted in bad faith as an attempt by one business in one country to prevent other people from using common English words.

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and

(iii) Respondent has registered and is using the Domain Names in bad faith.

A. Identical or Confusingly Similar

The Panel must first determine whether the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns trademark registrations in the European Union for its CASHBUDDY and CASHBUDDY.SE marks, which have been used by Complainant since 2009. The Panel observes that, except for the gTLD extensions, the Domain Names are identical to Complainant’s CASHBUDDY trademark. Respondent has not challenged Complainant’s position under the first element of paragraph 4(a) of the Policy.

Accordingly, Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Names. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the policy.

In this case, Complainant has established a prima facie case. Respondent is not a licensee of Complainant, and Complainant did not give Respondent the right to use the CASHBUDDY marks in the Domain Names. There is no evidence that Respondent has been commonly known by the Domain Names or is making a legitimate noncommercial or fair use of them. Instead, Complainant indicated that, from a review of the websites linked to the Domain Names, they are being used for sponsored links to Complainant’s competitors, as shown by source codes and screen shots submitted in evidence. Complainant has argued that this usage of the Domain Names suggests they were registered with the CASHBUDDY mark in mind and to commercially profit by misleading consumers searching for information about Complainant’s business.

In response, Respondent has provided no information or arguments as to why Respondent has any rights or legitimate interests in the Domain Names. For example, Respondent has not provided any background or stated any reasons or goals for why Respondent registered the particular Domain Names combining the terms “cash” and “buddy”. Instead, Respondent in its Response focused on arguing that the Domain Names were not registered or used in bad faith, which is addressed below. The Panel has taken note of the email dated June 29, 2016 to the Center, in which Respondent stated that the Domain Names were registered for a legitimate business that will operate in Asia; however, Respondent provided no information, explanation or evidence whatsoever in the Response in support of this point.

In view of this record, the Panel finds that Respondent has failed to rebut adequately Complainant’s prima facie case showing that Respondent lacks any rights or legitimate interests in respect of the Domain Names.

Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith.

Complainant has contended that Respondent registered and used the Domain Names in bad faith because (i) Complainant has been using its registered CASHBUDDY trademark since 2009, 7 years before Respondent registered the identical Domain Names; and (ii) the websites linked to the Domain Names include Complainant’s entire CASHBUDDY mark and contain links to Complainant’s competitors, all of which suggests that Respondent registered the Domain Names with Complainant and its CASHBUDDY mark in mind, to commercially profit by misleading consumers searching for information about Complainant’s business.

Respondent has denied that the Domain Names were registered with Complainant in mind and with the intention to commercially profit by misleading customers. Respondent stated that the sponsored links on the websites to which the Domain Names resolve are part of the default parking page set-up that the Registrar uses for domain names that do not yet have their own webpage, which is confirmed by a statement at the bottom of each parking page. Respondent claims it does not control the Registrar’s parking pages and it tried to take down the webpages but they were locked down by the Registrar. Respondent has also urged that Complainant’s website is written in Swedish and targets only Swedish customers. Respondent denies that the Domain Names were registered in bad faith, as Respondent does not operate any business in Sweden or the European Union.

Regarding bad faith use, the Panel considers that two factors are relevant. First, during the short period in which the Domain Names were active, between March 22 and April 6, 2016, each of the three Domain Names was linked to a webpage that provided sponsored links, including links to competitors of Complainant. The Panel agrees with those UDRP panels that have found that a registrant cannot disclaim responsibility for the various links on a website linked to a disputed domain name, where they are concerned either with the complainant or with the field of commercial activity in which the complainant is a player. The Panel finds that Respondent is “ultimately responsible for the content of the website generated by domain sponsor’s technology”. Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. Thus, the Panel concludes in this respect that the Domain Names were being used in bad faith for the short period during which they were active prior to this dispute.

The second issue is whether the Domain Names were registered by Respondent in bad faith. This question is more difficult. The Panel is not in a position to evaluate whether Respondent’s statement – denying that Respondent targeted Complainant when registering the Domain Names – is true or false. There is a risk that Respondent’s statement is self-serving. Complainant, on the other hand, has not provided any direct evidence that Respondent was aware of or targeted Complainant and its marks; instead, it stated that the parking pages to which the Domain Names resolve, with links to Complainant’s competitors, “implies knowledge of the Complainant’s trademarks and business”. However, the evidence indicates that the parking pages and their links were automatically generated without the participation of Respondent (even though Respondent is responsible for their content). Moreover, the Panel observes that Respondent appears to be located in Singapore, and thus there would be no independent and compelling grounds to indicate that Respondent was likely aware of Complainant and registered the Domain Names with Complainant and its CASHBUDDY marks in mind. On the balance of the probabilities, the Panel cannot find sufficient evidence to conclude that Respondent intentionally targeted Complainant and its CASHBUDDY marks when it registered the Domain Names.

However, the question remains whether this is an appropriate case to apply concepts of constructive notice or willful blindness as against Respondent. Respondent has emphasized that Complainant’s website is in Swedish, but this argument does not adequately answer the point, especially because the Domain Names might nonetheless cause confusion as they are identical to Complainant’s CASHBUDDY marks. However, the Panel observes that the Domain Names are comprised of two common English words, “cash” plus “buddy”, which lend a descriptive element and a logical basis for their selection, apart from reasons solely relating to Complainant’s trademarks. Moreover, Complainant has not claimed, nor provided any evidence (such as marketing information, levels of sales, media coverage, etc.), that its CASHBUDDY marks, which are registered in the European Union, have developed sufficient goodwill and reputation such that they are well-known marks within their field, whether within Sweden or the European Union, or outside these territories. Without Complainant’s marks being well-known, it is difficult to conclude that Respondent, who appears to be located in Singapore, should be deemed to have constructive knowledge of Complainant’s trademarks or have acted with willful blindness when registering the Domain Names. The result might be different if Complainant had made a showing as to its reputation and if Respondent was located in Sweden or the European Union.

In view of the particular circumstances in this case, the Panel finds, on the balance of the probabilities, that Respondent likely did not target Complainant and its CASHBUDDY marks, nor should Respondent be deemed to have constructive knowledge of Complainant and its CASHBUDDY marks, when Respondent registered the Domain Names.

Accordingly, the Panel finds that Complainant has failed to satisfy the third element of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Christopher S. Gibson
Sole Panelist
Date: August 16, 2016