Nominet UK Dispute Resolution Service

Nominet UK Dispute Resolution Service
DRS 04561

Cash America International Inc. v Richard Jenkins Decision of Independent Expert

1. Parties:

Complainant: Cash America International Inc.

Country: USA

Respondent: Richard Jenkins

Country: USA

2. Domain Name:

cashnetusa.co.uk ("the Domain Name")

3. Procedural Background:

The Complaint was lodged with Nominet on April 26, 2007. Nominet validated the Complaint and notified the Respondent of the Complaint on April 30, 2007 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent did not reply. On June 11, 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). On 18 June, 2007 the panellist requested further information re ownership of the trade mark CASHNETUSA. On 27, June 2007 the panellist received a copy of a trade mark assignment proving transfer of the rights in CASHNETUSA to the Complainant's Group.

Dawn Osborne, the undersigned, ("the Expert") confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further


 


confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.

4. The Facts:

The Complainant is a publicly traded US company and along with its affiliated entities including Cash America Net Holdings LIC and various subsidiaries (collectively the "Cash America Group") is the largest provider of secured non-resource loans to individuals in the United States with 894 physical locations. Through the web site cashnetusa.com Cash America Net Holdings or its predecessor in interest has used continuously since as least as early as May 2004 the trade mark CASHNETUSA in connection with financial services. Cash America Net Holdings is the owner of US registration 3,210,976 for CASHNETUSA.

On December 7, 2005 the Respondent registered the Domain Name. The web page attached to the domain name purports to offer loan services.

5. The Parties' Contentions:

Complainant:

The substance of the Complaint is as follows:

1. The Complainant is a publicly traded US company and along with its affiliated entities including Cash America Net Holdings and various subsidiaries (collectively the "Cash America Group") is the largest provider of secured non-resource loans to individuals in the United States with 894 physical locations. Through the web site cashnetusa.com Cash America net Holdings or its predecessor in interest has used continuously since as least as early as May 2004 the trade mark CASHNETUSA in connection with financial services. Cash America Net Holdings is the owner of US registration 3,210,976 for CASHNETUSA.

2. As a result of Cash America Group's extensive use and promotion of its trade marks they have become widely known and recognized amongst consumers and members of the financial industry as identifying Cash America group as the source of cash advance and other financial services. Consequently Cash America Group has acquired valuable rights and substantial goodwill in its trade marks.

3. Accordingly Cash America Group has Rights in CASHNETUSA.

4. The Domain Name is an Abusive Registration in the hands of the Respondent. The Respondent has set up a web page


 


which purports to be a site offering loan services. CASHNET USA appears when you clock on "Apply for a Payday Loan". The Domain Name and associated web site creates a false impression and confuses consumers interested in cash advance services that the Respondent's web site is somehow affiliated with Cash America Group which is not the case. When they try to obtain a loan they will not be able to do so because the site is not active. As a result customers may go to the Complainant's competitors to obtain a loan instead. The Domain Name is also a blocking registration against a name or mark in which the Complainant has Rights.

5. Respondent is not authorised to use the Complainant's trade marks and is not commonly known by CASHNETUSA.

Respondent:

The Respondent did not submit a Response.

6. Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

In this case the first limb of that task is straightforward. The Complainant's group is the proprietor of a US trade mark registration for CASHNETUSA and the accompanying goodwill in the mark. The Domain Name consists of the name or mark CASHNETUSA and the suffix <.co.uk>. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic.

The Expert finds that the Complainant has rights in respect of a name or mark, which is identical or substantially identical to the Domain Name.

Abusive Registration

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as:-


 


"a Domain Name which either:

i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations, attempted to sell the Domain Name and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant 'factors' in paragraph 3 are to be found in subparagraphs i and ii, as follows:

i "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

B.as a blocking registration against a name or mark in which the Complainant has Rights; or

ii "Circumstances indicating that the

Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the

Complainant."

The Expert is of the opinion that the Respondent's conduct and use of the Domain Names is indicative of relevant abusive conduct. The Domain Names are either identical or substantially identical to the name of the Complainant's financial services brand. The Expert agrees that the choice of the Domain Name indicates that the Respondent did indeed have the Complainant in mind when he registered the Domain Name and indicates that the names were registered as blocking registrations or to be used to ride on the Complainant's goodwill, thereby taking undue advantage. There is no obvious reason why the Respondent might be said to have been justified in registering the Domain Name and he has provided no response or explanation in this reegard. Indeed the Domain Name is being used by the Respondent to offer loan services which have no connection to the Complainant and clearly


 


attempting to create a connection between that Domain Name and the Complainant's business. In so doing, the Respondent has clearly used the Domain Name to confuse Internet users into thinking that its site are connected to the Complainant.

In the view of the Expert in its registration and use of the Domain Name the Respondent took unfair advantage of the Complainant's rights.

Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.

6. Decision:

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name cashnetusa.co.uk be transferred to the Complainant.

______________________

27 June, 2007

Dawn Osborne