Cashplus.com UDRP : Domain predates European trademark – end of story

Directnic

UDRP has been denied.

If only all UDRP decisions were as clean cut as that about Cashplus.com.

The 2009 domain registration was challenged at the National Arbitration Forum, by Advanced Payment Solutions Limited.

The British company, claimed that its 2010 trademark for CASHPLUS along with the alleged “non use” of the domain by the Respondent, should grant them ownership of it.

There was no response by the Respondent, however, sole panelist, Debrett G. Lyons, said:

The disputed domain name was registered on December 4, 2009.  The reference to 2007 is unclear.  Further, the registration date of the disputed domain name predates the March 31, 2010 filing date of the EUIPO registration of the trademark, being the earliest of Complainant’s trademark registrations.  There is no claim to common law rights or to any use of the trademark predating either the EUIPO registration, or the 2009 registration of the domain name.  On the evidence, Respondent established its registration earlier in time.  The Panel can find no evidence of registration of the disputed domain name in bad faith.

Ergo, Cashplus.com was ordered to remain with the Respondent.

Full details below:

Advanced Payment Solutions Limited v. RC Webmaster / Red Cedar Services Inc.
Claim Number: FA1707001740742

PARTIES
Complainant is Advanced Payment Solutions Limited (“Complainant”), represented by David Rodwell of Cottons Centre, London. Respondent is RC Webmaster / Red Cedar Services, Inc. (“Respondent”), represented by Tim Muir of Dykstra Gilmore Muir Llc, Kansas, USA.

REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cashplus.com>, registered with GoDaddy.com, LLC.

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.

Debrett G. Lyons as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 19, 2017; the Forum received payment on July 25, 2017.
On July 20, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cashplus.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2017 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@cashplus.com. Also on July 27, 2017, 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 August 18, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant holds national and pan-national registrations for the trademark CASHPLUS[i]. The Complaint states that “the domain name in question is confusingly similar to Complainant’s registered trademarks because they all respectively contain the same word.”

The Complaint states further that “the Complainant is not aware that the Respondent is a registered trademark holder in relation to the words used in the disputed domain name.”

Finally, the Complaint states that “the Respondent does not appear to use the domain name in question, and the domain name does not appear to have been used since 2007.”

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The factual findings pertinent to the decision in this case are that:
1. Complainant owns European Union Intellectual Property Office (“EUIPO”) Trademark Reg. No. 8995755, registered from March 31, 2010 for the trademark CASHPLUS;
2. the disputed domain name was registered on December 4, 2009; and
3. the domain name does not resolve to a webpage and there is no evidence of past use of the domain name[ii].

DISCUSSION

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.

Notwithstanding Respondent’s failure to submit a response, Complainant must still address and prove those three elements. In this case the Panel makes the preliminary observation that the Complaint consists of little more than the rudimental assertions already set out above under “Parties’ Contentions” together with details of three trademark registrations, the most relevant of which is the EUIPO registration cited above.

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[iii] Complainant therefore has rights since it provides proof, inter alia, of its registration of CASHPLUS with the EUIPO, a pan-national trademark authority.

For the purposes of comparison of the disputed domain name with the trademark the TLD, “.com”, can be disregarded. The Panel finds the domain name identical to the trademark. [iv]

Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

Paragraph 4(c) of the Policy 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 paragraph 4(a)(ii) of the Policy:

(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 trademark 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
With respect to of paragraph 4(a)(ii) of the Policy, the Complaint merely states that “the Complainant is not aware that the Respondent is a registered trademark holder in relation to the words used in the disputed domain name.”
With respect to of paragraph 4(a)(iii) of the Policy (as to which, see further below), the Complaint states that “the Respondent does not appear to use the domain name”.

Whilst there is no supporting evidence of non-use of the domain name accompanying the Complaint, the Panel has made its own enquiries and there is no indication that the domain name has been used.[vi]
Whether it could be said that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests under this aspect of the Policy is moot. However, the Panel need not make a final determination of that point since it is clear that Complainant has failed to establish the third element of the Policy (bad faith).
No finding made.

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:

‘(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.’

There is no evidence that any one of those scenarios might apply on the facts.
Further, there is no evidence, as separate matters, of registration in bad faith or of use of the domain name in bad faith.
The Complaint states that “the Respondent does not appear to use the domain name in question, and the domain name does not appear to have been used since 2007.”

The disputed domain name was registered on December 4, 2009. The reference to 2007 is unclear. Further, the registration date of the disputed domain name predates the March 31, 2010 filing date of the EUIPO registration of the trademark, being the earliest of Complainant’s trademark registrations. There is no claim to common law rights or to any use of the trademark predating either the EUIPO registration, or the 2009 registration of the domain name. On the evidence, Respondent established its registration earlier in time. The Panel can find no evidence of registration of the disputed domain name in bad faith.

There is no evidence of use of the disputed domain name and nothing that might infer an intention to use the domain name in bad faith. The Panel can find no evidence of use of the disputed domain name in bad faith.
The Panel finds that Complainant has failed to establish the third element of the Policy.

DECISION

Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <cashplus.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist

Dated: August 21, 2017

[i] The registrations represent the trademark with a small degree of stylisation and with minor a non-distinctive device which does not alter the following analysis. The Panel has treated the registrations as effectively for the word mark. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Jurisprudential Overview 3.0”) at http://www.wipo.int/amc/en/domains/search/overview3.0/#item110.
[ii] Neither matter dealt with in the Complaint itself but based on the Panel’s own limited research. See https://web.archive.org/web/*/cashplus.com.
[iii] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (FORUM Sept. 25, 2003).
[iv] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO 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 F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (FORUM July 9, 2015) holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”.
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] See fn. ii above.


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