Cash America International, Inc. v. ICS inc.
Claim Number: FA1309001519552
Complainant is Cash America International, Inc. (“Complainant”), represented by Robert J. Ward of Gardere Wynne Sewell LLP, Texas, USA. Respondent is ICS inc. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cashamericainternational.com>, registered with Tucows, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2013; the National Arbitration Forum received payment on September 16, 2013.
On September 16, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <cashamericainternational.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement 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 September 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2013 by which Respondent 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@cashamericainternational.com. Also on September 19, 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 technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
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 Notices, 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
i. Complainant owns the CASH AMERICA mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,481,033, registered March 15, 1988).
ii. Since 1992, Complainant has used the registered CASH AMERICA mark, as well as the unregistered CASH AMERICA INTERNATIONAL mark, in connection with pawn brokerage and financial services, namely for pawn loans, short-term loans, cash advances, payday loans, and other financial services.
iii. Complainant is one of the largest providers of specialty financial services to the United States and Mexico. Complainant also provides services in Australia, Canada, and the United Kingdom. Complainant has acquired substantial goodwill in the mark as a result.
iv. Complainant is the owner of the domain name <cashamerica.com>.
v. The <cashamericainternational.com> domain name is confusingly similar to Complainant’s CASH AMERICA mark. The inclusion of the generic top-level domain (“gTLD”) does not negate the confusion.
vi. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the subject domain name as the WHOIS record indicates that “ICS inc.” is the registrant of the disputed domain. Complainant has not licensed or otherwise authorized Respondent to use the mark.
vii. Respondent is not making a bona fide offering of goods or services at the disputed domain name, and Respondent’s use of the disputed domain name is commercial with the intent to mislead and divert users. Respondent uses the domain name solely to obtain referral fees or click-through fees from linked third parties. Respondent uses the guise of a loan service provider to divert internet traffic for commercial gain. In the alternative, even if Respondent is offering loan services, Respondent registered and is using the domain name solely for the purpose of diverting customers or potential customers of Complainant to Respondent’s website.
viii. Respondent intentionally diverts potential customers of Complainant to third-party websites, which provide similar loan services. The diversion is done at the expense of Complainant, and is evidence of bad faith.
ix. Respondent’s bad faith is further demonstrated by Respondent’s use of the domain name to create confusion as to Complainant’s association with the disputed domain name, and Respondent attempts to commercially benefit based on the resulting confusion. Respondent is likely generating click-through fees from the third parties reachable through Respondent’s website.
x. Respondent had constructive, if not actual, knowledge of Complainant’s rights in the CASH AMERICA mark at the time Respondent registered the disputed domain name. Such knowledge is evidence of Respondent’s bad faith registration.
B. Respondent
Respondent failed to submit a response in this proceeding.
Complainant holds trademark rights for the CASH AMERICA mark. Respondent’s domain name is confusingly similar to Complainant’s CASH AMERICA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <cashamericainternational.com> domain name, and that Respondent registered and uses the domain names 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 cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
The record reflects the following. Complainant owns the CASH AMERICA mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,481,033, registered March 15, 1988). Since 1992 Complainant has used the mark in connection with pawn brokerage and financial services, namely for pawn loans, short-term loans, cash advances, payday loans, and other financial services. The Panel finds that Complainant’s USPTO registrations are sufficient to establish Complainant’s rights in the CASH AMERICA mark pursuant to Policy ¶ 4(a)(i), even though Respondent purports to reside outside of the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <cashamericainternational.com> domain name is confusingly similar to Complainant’s CASH AMERICA mark. Complainant points out that it is known by, and uses, the unregistered CASH AMERICA INTERNATIONAL mark. Therefore, Complainant asserts that the use of the term “international” in the disputed domain name actually heightens, rather than diminishes, the confusing similarity with the CASH AMERICA mark. The addition of generic or descriptive terms to a registered mark is insufficient to differentiate the resulting domain name from the included mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“The addition of the generic term ‘perfumes’ is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
The disputed domain name also differs from Complainant’s mark in that the domain name eliminates the space within in the mark. The elimination of spaces, as well as the inclusion of a gTLD, are irrelevant to the Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Accordingly, the Panel finds that the <cashamericainternational.com> domain name is confusingly similar to Complainant’s CASH AMERICA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name as the WHOIS record indicates that “ICS inc.” is the registrant of the disputed domain. Further, Complainant contends that it has not licensed or otherwise authorized Respondent to use the mark. Therefore, in the absence of evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also argues that Respondent is not making a bona fide offering of goods or services and that Respondent’s use of the disputed domain name is commercial with the intent to mislead and divert users. Complainant asserts that Respondent uses the domain name solely to obtain referral fees or click-through fees from linked third parties. Complainant alleges that Respondent uses the guise of a loan service provider to divert Internet traffic for commercial gain. In the alternative, even if Respondent is offering loan services, Complainant argues that Respondent registered and is using the domain name solely for the purpose of diverting customers or potential customers of Complainant to Respondent’s website. Complainant includes screen shots of the resolving pages which shows that Respondent’s website promotes links to third parties in the finance and loan fields such as <cashstore.com> and <speedycash.com>. In
Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), the panel concluded that the operation of a pay-per-click website at a confusingly similar domain name did not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolved to competing or unrelated websites or if the respondent was itself commercially profiting from the click-through fees. Given Respondent’s apparent intent to divert Internet users, the Panel finds that Respondent’s use of the disputed domain name does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent intentionally diverts potential customers to third-party websites, which provide similar loan services. Complainant argues that the diversion is done at the expense of Complainant, and is evidence of bad faith. As Complainant has included evidence that Respondent promotes competing hyperlinks to third parties in the finance and loan fields, the Panel finds evidence of bad faith disruption pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant argues that Respondent’s bad faith is further demonstrated by Respondent’s use of the domain name to create confusion as to Complainant’s association with the disputed domain name, and that Respondent attempts to commercially benefit based on the resulting confusion. Complainant claims that Respondent is likely generating click-through fees from the third parties reachable through Respondent’s website. In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panel wrote, “Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.” Consistent with TM Acquisition, the Panel determines that Respondent is attempting to create confusion and benefit from that confusion. As such, the Panel finds that Respondent registered and uses the <cashamericainternational.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent had constructive, if not actual, knowledge of Complainant’s rights in the CASH AMERICA mark at the time Respondent registered the disputed domain name. Complainant argues that such knowledge is evidence of Respondent’s bad faith registration. Complainant stresses that it has had an online presence since July 1998, and has been conducting business since1984. It is reasonable for the Panel to infer that Respondent had actual knowledge of Complainant’s rights in the CASH AMERICA mark given Respondent’s incorporation of the mark in the domain name, and the fact that the domain name resolves to a webpage displaying content associated with the field of loans and financial services, in which Complainant is a considerable player. Therefore, the Panel concludes that Respondent registered the <cashamericainternational.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) based on Respondent’s actual knowledge of Complainant’s rights. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cashamericainternational.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 28, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page