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Kip Cashmore v. URLPro [2005] GENDND 247 (14 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kip Cashmore v. URLPro

Case No. D2004-1023

1. The Parties

The Complainant is Kip Cashmore, C/O Quick Cash, LLC, d/b/a USA Cash Services, South Ogden, Utah, United States of America, represented by Renee L. Mitchell of Ryley Carlock and Applewhite, PA, United States of America.

The Respondent is URLPro, George Town, Grand Cayman, United Kingdom of Great Britain and Northern Ireland, represented by Ari Goldberger of the ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <usacashservice.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2004. On December 8, 2004, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 16, 2004, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 5, 2005. 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 the Respondent of the Complaint, and the proceedings commenced January 10, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 30, 2005. The Response was filed with the Center January 30, 2005.

The Center appointed Nels T. Lippert, Paul E. Mason and David E. Sorkin as panelists in this matter on February 23, 2005. The Panel finds that it was properly constituted. Each member of 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

The mark USA CASH SERVICES was registered as a service mark on the Supplemental Register of the United States Patent and Trademark Office on June 12, 2001, under Registration No. 2,460,582 for “insurance and financial services, namely check cashing and short-term financing and tax preparation in Class 36.” The Registration contains a disclaimer of the words “Cash Services” apart from the mark as shown.

Complainant is an individual residing in South Ogden, Utah.

The domain name <usacashservices.com> was register by USA CASH SERVICES, Ogden, Utah, on November 1, 1999.

Respondent is an organization operating out of the Grand Cayman Islands.

Respondent registered the disputed domain name on October 27, 2003.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns a United States registration for USA CASH SERVICES as a trademark for use in connection with insurance and financial services and has used such trademark in commerce in connection with insurance and financial services namely check cashing and short-term financing and tax preparation since 1999.

Complainant further contends that it uses the USA CASH SERVICES trademark in connection with brick and mortar locations located throughout the States of Washington, Idaho, Nevada, Wyoming, Wisconsin, Utah, California and Arizona and promotes its business across the United States via the Internet at “www.usacashservices.com”. In support of this contention, Complainant has provided a copy of a 2004 telephone directory listing USA CASH SERVICES in Phoenix, Arizona.

Complainant has submitted an affidavit stating that Complainant has spent approximately $3,400,000 between 1999 to 2004, to advertise the USA CASH SERVICES mark and spends approximately $600,000 per year on advertising.

In addition, Complainant states that he has generated approximately $42,139,344 US dollars from sales of products and services offered under the USA CASH SERVICES mark.

Complainant asserts that the disputed domain name is confusingly similar to its registered trademark USA CASH SERVICES and that Respondent uses the disputed domain name in connection with a website that offers competing services.

Because Respondent was not commonly known by the disputed domain name prior to Complainant’s adoption and use of the USA CASH SERVICES mark and is not using the disputed domain name in connection with a bona fide offering of goods or services, Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant also argues that the disputed domain name was registered and is being used in bad faith because Respondent uses the domain name to provide links to websites that sell products and services that compete with Complainant’s products and services including check cashing, tax preparation and short-term financial services. Complainant contends that Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business by diverting Complainant’s customers to Respondent’s website. Moreover, by using the disputed domain name Complainant asserts that Respondent is intentionally attracting or attempting to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant’s’ mark.

B. Respondent

Respondent contends that the Complaint should be dismissed because the Complainant has no enforceable trademark rights to the term USA CASH SERVICE. Respondent notes that Complainant’s U.S. trademark registration is on the Supplemental Register because it was denied registration on the Principal Register as merely descriptive of Complainant’s services; and registration on the Supplemental Register due to descriptiveness does not grant the Complainant exclusive rights to the registered term. Furthermore, as noted by Respondent, the “cash services” component of Complainant’s mark has been disclaimed and the other component, “USA” is geographically descriptive.

Furthermore, Respondent contends that it has a legitimate interest in the disputed domain name because the domain name incorporates mere common descriptive terms and prior to initiation of this dispute, Respondent used the disputed domain name in connection with pay-per-click advertising links related to the descriptive meaning of the domain name. In short, Respondent asserts that it has the right to use the disputed domain name to present advertisements related to the descriptive words of the domain name.

With respect to the bad faith requirements of the Policy, Respondent contends that there is no evidence that it registered the disputed domain name to sell to Complainant or that Respondent knew of Complainant or its alleged trademark when Respondent registered the disputed domain name. Moreover, where a Complainant’s mark is descriptive, Respondent contends that the Complainant must offer evidence demonstrating that Respondent had specifically intended to confuse consumers in order to prevail; and there is no such evidence here. As such, Respondent contends that none of the elements of Paragraph 4(b) of the Policy have been established by Complainant and therefore the Complaint must fail.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, all three of the following elements:

(i) The domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) The 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.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondent’s rights or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii).

A. Identical or Confusingly Similar

The Panel must conclude that the Complaint fails because the Complainant has not demonstrated that it has rights in a protectable trademark. Complainant’s mark USA CASH SERVICES is admittedly highly descriptive of the services provided by Complainant. Complainant’s mark was refused registration on the Principal Register of the United States Patent and Trademark Office as being descriptive and is now registered only on the Supplemental Register with a disclaimer of the component “cash services”. The remaining component “USA” is clearly geographically descriptive.

Instructive is the Panel decision in Bryant v. Yerke, Case No. AF-0315 (eResolution October 15, 2000):

[I]n the case of either a common law mark or a mark registered on the Supplemental Register, a Complainant must show that the mark is used as a trademark or service mark and in such use, the mark has acquired distinctiveness for the Complainant’s goods or services. ... Registration on the Supplemental Register is an indication that the mark has not acquired distinctiveness, at least at the time of the registration. Although registration on the Supplemental Register is not a deemed admission of a lack of acquired distinctiveness, 15 U.S.C. sec. 1095, the applicant (Complainant in this case), in order to press its rights, if any, in the mark against others must establish through record evidence that the mark has acquired distinctiveness.

Here, Complainant has not presented any credible evidence establishing acquired distinctiveness. The record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin of services. Complainant’s record consists merely of a declaration of Complainant with unsupported facts and a copy of a page from a 2004 telephone directory. This evidence does not rise to the level necessary for establishing acquired distinctiveness in the view of the Panel.

Because the Complainant has failed to establish that it has rights in the trademark, the requirement of Paragraph 4(a)(i) of the Policy has not been met. As such, the Complaint must be dismissed. Having reached this conclusion, the Panel does not believe it necessary to address any of the other elements of Paragraph 4(a).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Nels T. Lippert Presiding Panelist
Paul E. Mason Panelist	David E. Sorkin Panelist

Dated: March 14, 2005