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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Check Into Cash, Inc. v. Peter Wolfe, Microtel Ltd.

Case No. D2008-0745

1. The Parties

Complainant is Check Into Cash, Inc., of Cleveland, Tennessee, United States of America, represented by Chambliss, Bahner & Stophel, United States of America.

Respondent is Peter Wolfe, Microtel Ltd., of Vancouver, British Colombia, Canada.

2. The Domain Name and Registrar

The disputed domain name <checkintocash.info> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2008. On May 14, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 15, 2008, Moniker Online Services, LLC, transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 20, 2008 providing the underlying registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 20, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 11, 2008.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on June 23, 2008. 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 states that it provides small, unsecured, short-term loans to individuals in need of temporary financing. That financial service is offered across the United States of America (“United States”) via 1,250 licensed affiliates under the name Check Into Cash.

Complainant is the owner of United States Trademark Registration No. 2,256,904, for the word mark, CHECK INTO CASH, registered in respect of “consumer loan financing and check cashing services featuring deferred presentment and delayed deposit”.

Complainant also offers its services through a website using the domain name <checkintocash.com>, which was registered on April 1, 1997, by an entity Complainant describes as its “affiliate company”.

The disputed domain name was registered on October 15, 2004. It resolved to a website which Complainant states “contains a mishmash of information on financial transactions with advertisements for various competitors of Complainant and, upon information and belief, is generating revenue for Respondent on a “pay per click” advertising model”.

5. Parties’ Contentions

A. Complainant

Complainant asserts trade mark rights and alleges that the disputed domain name is identical or confusingly similar to the trade mark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trade mark 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.

Having considered the Complaint and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the trade mark CHECK INTO CASH by virtue of registration with the United States and Patent and Trademark Office (“USPTO”).¹

The domain name contains the whole of Complainant’s trade mark. It has been held that gTLDs, such as “.info” and “.com”, can be ignored for the purpose of comparison of the trade mark with the domain name.² The Panel therefore finds the domain name to be identical to the trademark.

Complainant has accordingly satisfied the requirements of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant must make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent.³

Policy, paragraph 4(c) states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Policy, paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Complainant alleges Respondent has no rights or legitimate interests in the domain name because:

- Respondent “has not sought or obtained a license from Complainant”;

- Respondent “cannot show he is using the Disputed Domain Name in connection with ‘a bona fide offering of goods or services” because Respondent “is earning pay per click advertising revenue”;

- Respondent “cannot show… he is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain and intent to mislead consumers” because “Respondent is using, or has authorized the use of, the Disputed Domain Name to participate in a revenue-generating program whereby it uses Complainant’s mark to direct traffic to its sites (sic.) for the purpose of competing directly with Complainant”;

- there is “no evidence that the Disputed Domain Name is the actual legal name of the Respondent or a name that is commonly used to identify the Respondent without violating Complainant’s trademark rights”.

Complainant’s submissions are a pro forma rendition of its arguments in earlier cases it has brought under the Policy⁴ but do enough to shift the onus to Respondent.

The WhoIs information does not show Respondent to be known by the domain name. Complainant has chosen to exhibit what seems to be only one isolated page from the website at, “www.checkintocash.info”, and although that page might suggest a larger site conceivably devoted to comparison of short term loan terms and conditions, Complainant’s characterization of the information, however selective, as “a mishmash” is not unjustified. There is no compelling evidence of a legitimate noncommercial or fair use under Policy, paragraph 4(c)(iii).

The webpage in evidence carries links to third party credit providers. Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors’ websites is not a bona fide offering of goods or services under Policy, paragraph 4(c)(i).⁵

Respondent does not satisfy any of the Policy ¶ 4(c) criteria. Moreover, without any evidence of Respondent’s possible rights or legitimate interests in the domain name, Respondent has not met the onus of proof which fell to it, with the result that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Policy, paragraph 4(b) sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith and so the Panel considers it logical to first compare them to the facts of the case. They are

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location

Complainant alleges bad faith pursuant to Policy, paragraph 4(b)(i), (iii) and (iv).

There is no foundation in the evidence for the claim that Respondent registered the domain name primarily for the purpose of selling it to Complainant or a competitor of Complainant. The domain name has been registered for almost four years and there is no indication that the domain name is for sale and there is no evidence of any contact between the parties. The claim that Respondent’s conduct falls under Policy, paragraph 4(b)(i) fails.

That portion of the website which has been put into evidence is, as previously noted, largely incoherent. To draw a comparison, it is not dissimilar to some forms of spam email. Policy, paragraph 4(b)(iii) requires Respondent to have registered the domain name primarily for the purpose of disrupting the business of a competitor. There is no meaningful way in which the parties could be described as competitors and so Complainant’s reliance on Policy, paragraph 4(b)(iii) also fails.

The scenario envisioned by Policy, paragraph 4(b)(iv), although in all other ways demanding attention, requires commercial gain, or at least the likelihood thereof. Complainant’s assertion that Respondent is deriving “pay-per-click” revenue is, on the evidence, only speculative. Whilst the Policy does not require proof of actual financial gain, there is no evidence that Internet traffic to the website is more likely than not resulting in a commercial gain for Respondent. Whilst the Panel is keenly aware of the many decisions under the Policy which have readily inferred a commercial gain in similar fact cases, the Panel finds it more appropriate in this case to analyse bad faith use and registration without further reliance on Policy, paragraph 4(b).

There is ample evidence that the domain name is being used in bad faith. It includes the whole of Complainant’s trade mark. The corresponding website is likely to confuse and attract Internet visitors who are Complainant’s potential customers. There is no evidence as to what confronts those people when they land at “www.checkintocash.info”, nor for that matter how far they must drill down in order to reach the webpage exhibited in the Complaint. Nevertheless, what can be said is that, once there, they are faced with numerous links to so-called “pay day” and cash advance service providers – businesses which are clear competitors to Complainant. Countless decisions under the Policy have held that use of a complainant’s trade mark to mislead Internet users to a respondent’s website which then provides links to third party competitors of the complainant is bad faith use of the domain name. The Panel finds bad faith use of the disputed domain name on that same reasoning.

The residual issue is whether or not the domain name was registered in bad faith. Had a response been filed, an argument that the words “check into cash” are purely descriptive of the website content might have been anticipated. That argument would then have raised issues of possible legitimate interests under Policy, paragraph 4(c), or registration in good faith under this aspect of the Policy.

This Panel would have had little time for such a submission. If the “.info” site was truly informational, numerous other, more intuitively descriptive, names might have been chosen. The evidence, for example, suggests that at least in the United States, the short term loans in which Complainant specializes are commonly known as “payday loans” or “payday advances”. Again, the links included on Respondent’s website include a range of other obvious names. The Panel finds that Respondent had no imperative cause to use the trade mark.

Alternatively, it might have been argued that Respondent had no knowledge of Complainant’s trade mark or business at the time it registered the domain name.

The Policy does not require actual evidence of registration in bad faith. If it did, the Policy would be largely unworkable. Instead, the Panel must make a decision based on the civil standard of the balance of probabilities, taking into account all the evidence.

The evidence is that by the time the domain name was registered, Complainant’s business under the trade mark had been active for over ten years. The Complaint does not provide the type of evidence that might support common law rights in the trade mark garnered through use and reputation, however, the existence of Complainant’s 1250 licensed affiliates across the United States, together with its long established website, are evidence of Complainant’s public visibility. The meaning of the words “check into cash” is not directly descriptive of short term loan services. Most obvious is the fact that very few workers are still paid by cheque. Respondent adopted those same words and has used them for a website which features short term loan information and providers. On those facts, the weight of the evidence is that Respondent registered the disputed domain name in bad faith in the knowledge of Complainant’s trade mark and business.

Therefore, the Panel finds that Complainant has satisfied the third and final element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <checkintocash.info> be transferred to Complainant.

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Debrett G. Lyons

Sole Panelist

Dated: July 7, 2008

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¹ See The Men’s Wearhouse, Inc. v. Brian Wick d/b/aDefaultdata.com, FA 117861 (Nat. Arb. Forum September 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum December 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy, paragraph 4(a)(i)).

² See Rollerblade, Inc. v.Chris McCrady, WIPO Case No. D2000-0429 (June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

³ See Hanna-Barbera Productions Inc. v. Entertainment Commentaries, FA741828 (Nat. Arb. Forum August 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 paragraph 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. Jordan Gerberg, FA780200 (Nat. Arb. Forum September 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.”).

⁴ Check Into Cash, Inc. v. Alan Questar Alan Questar c/o Khmer Enet, FA1024235 ( Nat. Arb. Forum August 13, 2007); Check Into Cash, Inc. v. Rico Marquez, D2007-0942 (August 17, 2007).

⁵ See Coryn Group, Inc. and AM Resorts, LLC v. Media Insight, FA198959 (Nat. Arb. Forum December 5, 2003) (finding that respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because respondent used the names to divert Internet users to a website that offered services that competed with those offered by complainant under its marks); see also Glaxo Group Limited. v. WWW Zban c/o David Glenmore, FA203164 (Nat. Arb. Forum December 1, 2003) (finding that respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because respondent used the domain name to take advantage of complainant’s mark by diverting Internet users to a competing commercial site); see also WeddingChannel.com Inc. v. Andrey Vasiliev aka NA and Free Domains Parking, FA156716 (Nat. Arb. Forum June 12, 2003) finding that respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to complainant’s mark, websites where respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy; see also Deutsche Telekom AG v. SKK, D2003-0744 (November 17, 2003).