Claim Number: FA0901001243894
PARTIES
Complainant is Cottonwood Financial Ltd. (“Complainant”), represented by Duffy
Dillon, of Brennan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yourcashstore.com>, registered with Moniker
Online Services, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 21, 2009; the
National Arbitration Forum received a hard copy of the Complaint on January 23, 2009.
On January 23, 2009, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <yourcashstore.com>
domain name is registered with Moniker Online
Services, Inc. and that Respondent is the current registrant of the
name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On February 2, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 23, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@yourcashstore.com by
e-mail.
A timely Response was received and determined to be complete on February 4, 2009.
On February 9, 2009, the Complainant filed an Additional
Submission.
On February 13, 2009, the Forum received an Additional Submission from
the Respondent.
Pursuant to Supplemental rule 7, a party may submit additional written
statements and documents to the Forum and the opposing party not later than
five (5) calendar days after the date the Response is submitted or the last
date the Response was due to be submitted to the Forum, whichever occurs first.
Each additional submission must be accompanied by an additional submission fee.
Although the Additional Submission of Complainant was received in a timely
manner, the payment was not timely. As a result, the Additional Submission
cannot be considered to comply with Supplemental Rule 7. No such submission
shall be considered by the Panel. The Additional Submission of Respondent shall
therefore also not be considered.
Nevertheless, Rule 10 entitled “General Powers of the Panel” provides
in Subsection (c) that, “The Panel shall ensure that the administrative
proceeding takes place with due expedition and it may, at the request of a
party or on its own motion, extend, in exceptional cases, a period of time
fixed by these Rules or by the Panel.” Thus, this Panelist may, “in exceptional
cases” exercise discretion to consider one or more of these untimely
submissions or payments.
On February 12, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
This Panelist finds that this case is not “an
exceptional case” that requires the examination of additional submissions.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Cottonwood is a
Cottonwood Financial Ltd. currently owns the US registered trademark
The Cash Store since August 17, 1999.
Complainant argues that Respondent registered the domain name <yourcashstore.com> and has
intentionally attempted to attract, for a commercial gain, Internet users to a
website by creating a likelihood of confusion with Cottonwood’s mark as to the
source, sponsorship, affiliation, and/or endorsement of yourcashstore.com in
the consumer lending services offered on said website.
Complainant contends that Respondent's domain names are confusingly
similar to Complainant’s registered mark and operating name. Complainant
further contends that Respondent has no rights or legitimate interests in the
domain names. Complainant contends that Respondent registered and is
using the domain names in bad faith.
B. Respondent
Respondent denies that there is a likelihood of confusion between the Complainant’s mark and the disputed domain name.
Respondent further argues that its rights to and legitimate interest in the <yourcashstore.com> domain name are established by and through the continued use of the domain name over 6 years prior to Complainant offering the ability to accept internet customers.
Finally, Respondent denies that he registered the disputed domain names in bad faith. He believed that he had a right to register the disputed domain name. Respondent argues that the registration and use of the domain name <yourcashstore.com> is and has always been in good faith solely for the purpose of offering a matching service for customers looking for a Service Provider providing loans for internet customers.
Respondent also states that he had no knowledge of Complainant's registered trademarks when he registered the disputed domain names.
FINDINGS
1.
Complainant
is the owner of the trademark registrations:
U.S. Reg. No. 2,969,462 – CASH STORE for
consumer lending services. Registered July 19, 2005;
U.S. Reg. No. 2,576,147 – YOU’RE CASHWORTHY
AT THE CASH STORE for consumer lending services. Registered June 4, 2002;
U.S. Reg. No. 2,461,639 – THE CASH STORE for
consumer lending services. Registered March 19, 2001;
U.S. Reg. No. 2,270,955 – THE CASH STORE for
consumer lending services. Registered August 17, 1999;
2.
Complainant is
the owner of the <cashstore.com>
(registered October 23, 1997) and <thecashstore.com> (registered August 6, 1998) domain names;
3.
Complainant
uses the domain names actively for its websites;
4.
Respondent is
the owner of the <yourcashstore.com>
(registered September 27, 2002) domain name;
5.
Respondent
uses the domain name for a website that provides a matching service between
lenders and borrowers. The website contains inter alia the reference to Your
CashStore.com.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
The Panel finds that reference by Complainant to other domain names is irrelevant under Policy ¶ 4(a)(i).
On the other hand, the Panel finds that Complainant asserts that it has established rights in the THE CASH STORE and the CASH STORE mark through registration of these marks with the United States Patent and Trademark Office (“USPTO”) as well as through continuous use of the mark in commerce in connection with its consumer lending services. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The Panel also finds that
Respondent’s <yourcashstore.com>
domain name is confusingly similar to Complainant’s THE CASH STORE or CASH
STORE mark under Policy ¶ 4(a)(i), as the domain name incorporates
Complainant’s mark and adds the generic term “your.” See Arthur
Guinness Son & Co. (
The Panel finds that a disputed domain name that adds a generic term such as “your,” to a registered mark creates a confusing similarity between the disputed domain name and the established mark. See Wells Fargo Home Mortgage v. domains Ventures, FA 810215 (Nat. Arb. Forum Nov. 14, 2006) (finding the addition of the term “your” to the WELLS FARGO mark in the <yourwellsfargomortgage.com> domain name to be insufficient to distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
Therefore, pursuant to Policy ¶
4(a)(i), the Panel is of the opinion that Respondent’s <yourcashstore.com> domain name is confusingly
similar to Complainant’s THE CASH STORE and CASH STORE marks.
Respondent’s contention that the <yourcashstore.com> domain name is comprised of
common, descriptive terms and as such cannot be found to be identical to
Complainant’s mark, is of no relevance, since such a determination is not
necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only
whether Complainant has rights in the mark and whether the disputed domain name
is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs., FA 915206 (Nat.
Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual
word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark law.”).
It is established jurisprudence
that the burden of proof shifts to Respondent when Complainant makes a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii).
See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the Respondent to show that it does have
rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Respondent is identified as “John
Ayers”. The Panel considers that
Respondent is not commonly known by the disputed domain name under Policy ¶
4(c)(ii). See Instron Corp. v. Kaner,
FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the
respondent was not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of
the disputed domain names and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute);
see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply).
Furthermore, Respondent’s disputed domain
name resolves to a website offering consumer lending services. According to the
disclaimer on the website, Respondent is not offering or soliciting to lend,
but merely providing a matching service only. It must be understood that the
matching service is between potential customers looking for a loan to a company that
would have the ability to offer them a loan. Hereby, Respondents service is in direct competition with the consumer
lending services of Complainant.
According to the Panel, such use of the disputed domain name is neither
a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i),
nor legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum
Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name
to redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services).
The Panel concludes that Respondent has registered the <yourcashstore> domain name with a view of using it to attract Internet users to its commercial website by taking advantage of the likelihood of confusion between Complainant’s CASH STORE and THE CASH STORE marks and Respondent’s confusingly similar domain name. The likelihood of confusion is even enhanced by the website that respondent has linked to the domain name, since the website mentions “Your CashStore.com” is two separate words. Hereby, Respondent gives the impression that there exists a link between on the one hand Complainant’s website and trademark, and on the other hand Respondent’s website and services.
As a result, the Panel observes
that Respondent has created a likelihood of confusion as to Complainant’s
source and endorsement of the disputed domain name and corresponding
website. Therefore, the Panel considers
that Respondent engaged in bad faith registration and use under Policy ¶
4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where the respondent registered and
used a domain name confusingly similar to the complainant’s mark to attract
users to a website sponsored by the respondent); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th Cir. 2002) ("While an
intent to confuse consumers is not required for a finding of trademark
infringement, intent to deceive is strong evidence of a likelihood of
confusion.").
Furthermore, Respondent links the domain name to a website that aims at matching visitors to a company that would have the ability to offer them a loan. This practice is clearly in direct competition with Complainant’s business of offering consumer lending services and is likely to disrupt the business of Complainant.
Thus, the Panel concludes that such
use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See
AOL LLC v. AIM Profiles, FA 964479
(Nat. Arb. Forum May 20, 2007) (finding bad faith where respondent registered a
domain using complainant’s AIM mark and advertised competing instant messaging
products and services); see also Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used a domain name confusingly similar to the
complainant’s mark to attract users to a website sponsored by the respondent); see
also State Fair of
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yourcashstore.com> domain name be TRANSFERRED
from Respondent to Complainant.
Flip Petillion, Panelist
Dated: February 23, 2009
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