CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1504001614972
Complainant is CNU ONLINE Holdings, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cashetusa.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 known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2015; the Forum received payment on April 16, 2015.
On April 22, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <cashetusa.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 Internet.bs Corp. 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 April 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2015 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@cashetusa.com. Also on April 23, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 has rights in the CASHNETUSA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,210,976, registered February 20. 2007) as well as the CASHNETUSA.COM mark (Reg. No. 3,380,743, registered February 12, 2008). Complainant has common law rights in the CASHNETUSA and CASHNETUSA.COM marks based on their first use in commerce as early as May 1, 2004, the registration of Complainant’s primary website on January 22, 2004, and the press releases of the brand prior to the registration of the disputed domain names. Respondent’s <cashetusa.com> domain name is confusingly similar to Complainant’s CASHNETUSA and mark, because Respondent has simply removed the letter “n” from the mark and attached the generic top-level domain (“gTLD”) “.com.”
(ii) Respondent is not commonly known by the disputed domain names, as the WHOIS information for the disputed domain name lists “Domain Admin” as Registrant. Moreover, Respondent has not submitted any further evidence to indicate it is commonly known by the disputed domain name. Respondent registered the disputed domain name in order to redirect Internet users to a website operated by Complainant’s competitors.
(iii) Respondent uses the disputed domain to redirect Internet users to a website selling services competing with Complainant, which constitutes bad faith disruption. Respondent uses the disputed domain name to intentionally attract Internet users to its own website for its own commercial gain. The slight misspelling of the disputed domain name constitutes typosquatting, which is further evidence of bad faith under Policy ¶ 4(a)(iii). Respondent has used falsified or incomplete WHOIS contact information in order to avoid being held accountable.
B. Respondent
Respondent did not submit a Response in this proceeding. The <cashetusa.com> domain name was created on January 18, 2007.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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.”).
Complainant alleges that it has rights in the CASHNETUSA mark through its registration with the USPTO (Reg. No. 3,210,976, registered February 20, 2007), as well as the CASHNETUSA.COM mark through registration with the USPTO (Reg. No. 3,380,743, registered February 12, 2008). Past panels have found that “a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i).” See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007). Past Panels have also found that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Consistent with this precedent, the Panel finds the Complainant’s USTPO registrations establish Complainant’s right in the CASHNETUSA and CASHNETUSA.COM marks according to Policy ¶ 4(a)(i).
Complainant admits that the disputed domain name was created after its marks were registered with the USPTO. However, Complainant contends that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts common law rights to the CASHNETUSA and CASHNETUSA.COM marks, dating back to May 1, 2004, which was allegedly Complainant’s first use in commerce for the marks. To have common law rights, Complainant must show that the mark has secondary meaning. Secondary meaning can be established through length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant has provided documentation of recognition of use of the CASHNETUSA and CASHNETUSA.COM marks from media/press and other sources in Exhibit G. As the Panel finds that Complainant has submitted evidence sufficient to establish secondary meaning, it grants Complainant common law rights under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <cashetusa.com> domain name is confusingly similar to Complainant’s CASHNETUSA and mark, on the basis that the disputed domain name only differs from Complainant’s CASHNETUSA mark by only a single character, the missing ‘n.’ Complainant argues this is evidence of typosquatting. The Panel notes that Respondent’s disputed domain name also differs from Complainant’s CASHNETUSA mark, by the addition of the gTLD “.com.” Previous panels have found that the removal of a single letter does not remove a mark from the realm of confusing similarity under Policy ¶ 4(a)(i). See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). Further, panels have also found that the addition of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The present Panel, therefore, finds that Respondent’s <cashetusa.com> domain name is confusingly similar to Complainant’s CASHNETUSA mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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.”).
Complainant alleges that Respondent has no rights or legitimate interest in the <cashetusa.com> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name, as demonstrated by the available WHOIS information. Further, Complainant notes that Respondent is neither licensed nor authorized to use Complainant’s CASHNETUSA mark. The Panel notes that “Domain Admin” is the Registrant of the disputed domain name. The Panel recalls that Respondent has failed to submit a response in this proceeding to refute any of Complainant’s contentions. As such, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation”).
Complainant alleges that Respondent registered the disputed domain in order to redirect Internet users to a website operated by Complainant’s competitors, as demonstrated by Exhibit H. Complainant believes that such behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Prior Panels have agreed with this argument. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). Therefore, the present Panel finds such use as a lack of bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant alleges that Respondent uses the disputed domain name for the purpose of redirecting Internet users to a website selling competing services. Complainant has presented evidence of this use in Exhibit H. Complainant claims that such a use of the disputed domain name disrupts its business and is thus evidence of bad faith under Policy ¶ 4(b)(iii). Previous panels have agreed that the use of a disputed domain name to redirect Internet users to a complainant’s competitors qualifies as bad faith disruption under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Consequently, the Panel finds that Respondent’s behavior indicates bad faith under Policy ¶ 4(b)(iii).
Next, Complainant argues that Respondent uses the disputed domain name to redirect Internet users to Complainant’s competitors, in which Respondent likely receives referral or click-through fees. The Panel recalls Complainant’s Exhibit H, in which Complainant has demonstrated this behavior. Generally, panels have held that such behavior constitutes bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Accordingly, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent’s registration of the disputed domain name is typosquatting, based on the difference between the <cashetusa.com> domain name and the CASHNETUSA mark. Complainant alleges that such a difference is based upon a common typographical error. Panels have found the use of typosquatting to constitute bad faith, in and of itself. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). As the Panel recognizes that Respondent has engaged in typosquatting, it finds Respondent’s registration and use of the disputed domain name to be further evidence of bad faith under Policy ¶ 4(a)(iii). .
Complainant also contends that Respondent used falsified or incomplete WHOIS contact information in order to avoid being held accountable in this proceeding. The Panel notes that Complainant has provided evidence of this alleged false or incomplete contact information in Exhibit I. As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii). See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cashetusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 29, 2015
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