Cashland Financial Services, Inc. v. Santiago Castillo Escobar
Claim Number: FA1304001492739
Complainant is Cashland Financial Services, Inc. (“Complainant”), represented by Robert J. Ward of GARDERE WYNNE SEWELL LLP, Texas, USA. Respondent is Santiago Castillo Escobar (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cashland.com>, registered with INTERNET.BS CORP.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 2, 2013; the National Arbitration Forum received payment on April 2, 2013.
On April 7, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <cashland.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the registration agreement of INTERNET.BS CORP. and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2013 by which Re-spondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cashland.com. Also on April 11, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as tech-nical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2013, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Not-ices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, together with its affiliated companies, is the largest provider of diversified financial services, including pawn loans, check cashing services and short-term cash advances made to individuals in the United States and Mexico.
Complainant has used the CASHLAND mark continuously since 1989, and has had an online presence since September of 1999, for the marketing of its finan-cial services, which it has extensively promoted under that mark, as a result of which Complainant has acquired valuable goodwill and common law rights in its CASHLAND mark.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for the CASHLAND service mark (including Registry No. 2,683,331, registered February 4, 2003).
Respondent registered the <cashland.com> domain name on March 19, 2000.
The domain name is substantively identical to Complainant’s CASHLAND mark.
Respondent has not been commonly known by either the CASHLAND mark or the <cashland.com> domain name.
Respondent has not been authorized to use Complainant’s CASHLAND mark.
Respondent has redirected traffic from the website resolving from the domain name <cashland.com> to a webpage of a third-party at “CashAdvance.com,” which invites consumers to apply for loans online.
This employment of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent knew of Complainant and its rights in the CASHLAND mark when it registered the disputed domain name.
Respondent’s <cashland.com> was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has common law rights in the CASHLAND service mark for pur-poses of Policy ¶ 4(a)(i) by reason of its undenied continuous use and promotion of the mark in commerce from 1989, thus predating Respondent’s registration of the disputed domain name in 2000, as described in the Complaint. See, for ex-ample, Sydney Markets Ltd. v. Rakis, WIPO Case No. D2001-0932, October 8, 2001.
This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Panama). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a UDRP complainant’s rights in a mark trace to the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question presented by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <cashland.com> domain name is sub-stantively identical to Complainant’s CASHLAND service mark. The domain name contains the entire mark, adding only the top-level domain “.com.” This alteration of the mark does not avoid a finding of identity between the domain name and the mark under the standards of the Policy. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007):
The Panel also finds that Respondent’s … domain name is identical to Complainant’s … mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by either the CASHLAND mark or the domain name <cashland.com>, and that Respondent has not been auth-orized to use Complainant’s CASHLAND mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Santiago Castillo Escobar,” which does not resemble the domain name. On this record, we con-clude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the domain name <cigaraficionada.com>, and so failed to show that it had rights to or legit-imate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant contends, without objection from Respondent, that the website resolving from the contested domain name redirects traffic from the <cashland.com> site to a third-party webpage entitled “CashAdvance.com,” which invites consumers to apply for loans online. In the circumstances here presented, we may comfortably presume that Respondent profits from this em-ployment of the domain name. This use of the disputed domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because a “[r]e-spondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and ser-vices in direct competition with those offered under [the complainant’s] mark,” the respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s for-profit employment of the disputed domain name in the manner alleged in the Complaint disrupts Com-plainant’s business, and therefore stands as evidence of bad faith registration and use of the domain name as described in Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008)
Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
That Respondent pursues this for-profit objective through the use of a domain name which is substantively identical to Complainant’s CASHLAND service mark constitutes evidence of bad faith registration and use of the domain name within the contemplation of Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a domain name was obviously connected with a complainant’s marks, thus creating a likelihood of confusion among Internet users for a respondent’s commercial gain).
Finally, we are convinced from the evidence that Respondent knew of Complain-ant and its rights in the CASHLAND mark when it registered the contested do-main name. This further demonstrates bad faith on the part of Respondent in the registration of the domain name. SeeYahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's at the time of domain name registration).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <cashland.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 27, 2013
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