{
    "case_number": "CAC-ADREU-006458",
    "time_of_filling": null,
    "domain_names": [
        "ekash.eu"
    ],
    "case_administrator": "Lada Válková (Case admin)",
    "complainant": [
        "Mr. Jamie King (Smart Voucher Ltd t\/a Ukash)"
    ],
    "complainant_representative": null,
    "respondent": [
        "Wendy Kessie (eKash International)"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant, Smart Voucher Ltd t\/a Ukash, Mr. Jamie King (formerly known through its subsidiary as Universal e-Cash Limited) is a UK based company founded in 2001 and trading under the name Ukash. The Complainant is an online company that provides alternative online cash payment services under the brand UKASH since 2005. The Complainant’s UKASH brand is regulated by the UK Financial Services Authority (FSA). The technology behind UKASH is protected by patents. The Complainant has a noticeable international presence and in particular, its e-commerce brand, UKASH is available globally in 420,000 outlets in 50 different countries. The Complainant’s logo is prominently featured in payment terminals and retail outlets wherever it is available.\r\n\r\nThe Complainant’s UKASH brand has been awarded with different honours, like the Queens Award for Enterprise in the International Trade category (in 2011 and 2012), inclusion in the Sunday Times Microsoft Tech Track 100 (in 2011 and 2012), the Payments Company of Year in 2012 at the B2B eGaming Review Awards, the Paybefore Awards Europe winner in the Most Innovative Prepaid Programme category in March 2013.\r\n\r\nThe Complainant has registered and has been using the domain name “ukash.com”. The Complainant is the owner of several Community Trademarks containing the element “Ukash” or “U kash (fig.)”, the first one filed on December 19, 2006.\r\n\r\nThe Respondent, Cyprian company eKash International, Wendy Kessie, has registered the domain name “ekash.eu” on August 16, 2011. The Respondent has set up the website www.ekash.eu.\r\n\r\nOn March 12, 2012 the Complainant forwarded the formal Cease and Desist Letter to the Respondent informing the Respondent about the infringing use of the disputed domain name and requesting the transfer of the domain name. As a result of the letter, the Respondent made slight modifications on the website excluding the references to the Complainant, but the content still remained without further actions.\r\n\r\nOn March 25, 2013 the Complainant filed the present Complaint.\r\n\r\nIn accordance with the ADR Rules, Paragraph B2(a), the Czech Arbitration Court formally notified the Respondent of the Complaint, the proceedings commenced on April 9, 2013. Neither the written notice of the Complaint nor the advice of delivery by postal mail (on April 16, 2013) thereof was returned to the Czech Arbitration Court by the Respondent. In accordance with Paragraph A2(e)(3) of the ADR Rules the CAC considered the written notice delivered to the Respondent on April 29, 2013, requesting the Respondent to file the Response by June 17, 2013. \r\n\r\nThe Respondent did not submit any Response, and accordingly, the CAC notified the Respondent’s default on June 18, 2013.\r\n\r\nThe Panel was appointed on June 27, 2013.",
    "other_legal_proceedings": "No legal proceedings are known to the Panel in connection with the disputed domain name.",
    "discussion_and_findings": "Article 21(1) of Regulation (EC) No. 874\/2004 (hereinafter “Regulation”) states:\r\n“A registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognized or established by national an\/or Community law, such as the rights mentioned in Article 10(1), and where it:\r\n(a) has been registered by its holder without rights or legitimate interest in the name; or\r\n(b) has been registered or is being used in bad faith.”\r\n\r\nParagraph B11(a) of ADR Rules states:\r\n“A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Procedural Rules.”\r\n\r\nFurther, according to ADR Rules, Paragraph B10(a), in the event that a Party does not comply with any of the time periods established by these ADR Rules or the Panel, the Panel shall proceed to a decision on the Complaint and may consider this failure to comply as grounds to accept the claims of the other Party. The Respondent and the Complainant were informed by the case administrator of the Respondent’s default. The Respondent did not react even within the following five days after receiving this notification (ie did not challenge the notice of Respondent’s Default according to Paragraph B3(g) of the ADR Rules). In this case the Panel decides that there is a reason to accept the claims of the Complainant.\r\n\r\nAt the same, the Panel has checked the existence of the Community trademark rights on which the Complainant has based its Complaint and confirms the existence of these rights which were also in full effect at the time of the Complaint (see CAC Case No. 06049, topreality.eu)\r\n\r\nIdentical or Confusingly Similar\r\n\r\nThe Complainant owns the Community trademark registrations, inter alia, for the wordmark “Ukash” and for the combined marks “U kash (fig.)” where the letter ‘U’ is placed separately above or in left from the word “kash”. By the Panel’s view, the element “kash” in these combined marks can be clearly separated and distinguished from the letter ‘U’ in these marks (see CAC Case No. 05208, haug.eu), where the word “kash” may be considered decisive in these combined marks.\r\n\r\nIn contrary, the disputed domain name “ekash.eu” incorporates the word element “kash” of the Complainant’s trademarks. Although, the English term “cash” may be regarded descriptive and could raise the questions concerning the confusing similarity issue, still, the contained element “kash” in the disputed domain name shall be regarded as coined word. The inclusion of the ccTLD denomination “.eu” shall be disregarded for the purposes of these proceedings. \r\n\r\nIn the same way, the presence of the prefix “e“ does not elude the risk of collision between these two names, since the Panel considers that the prefix “e” is descriptive in reference to the electronic services, the concept of which is that the consumer can buy products or services online, and that the only dominant and distinctive element in the expression “ekash” is “kash” (see CAC Case No. 04318, e-airfrance.eu). Moreover, the content of the Respondent’s website www.ekash.eu show the Respondent’s intentions to provide the electronic services online, at the same using the element also in form \"eKash\".\r\n\r\nTherefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. \r\n\r\nThe identity or confusing similarity requirement in the Regulation, Article 21(1), is therefore fulfilled.\r\n\r\nRights or Legitimate Interest\r\n\r\nUnder Article 21(2) of the Regulation (corresponding Paragraph B11(e) of ADR Rules), the legitimate interest condition is considered to be fulfilled in particular but without limitation when:\r\n(a) prior to any notice of an alternative dispute resolution (ADR) procedure, the holder of a domain name has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;\r\n(b) the holder of a domain name, being an undertaking, organisation or natural person, has been commonly known by the domain name, even in the absence of a right recognised or established by national and\/or Community law;\r\n(c) the holder of a domain name is making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name on which a right is recognised or established by national and\/or Community law.\r\n\r\nThe Complainant alleges that the Respondent has no right or legitimate interest in the disputed domain name. Once the Complainant makes a prima facie showing of the Respondent’s lack of rights or legitimate interests to the disputed domain name, the burden of proof shifts to the Respondent to come forward with the evidence of rights or legitimate interests in this respect. However, the Respondent has not rebutted this allegation. The Respondent has failed to file the Response in which the right or legitimate interest could be asserted and proved.\r\n\r\nThe Panel finds that the Respondent was using the contested domain name before receiving any notice of the dispute. However, the Panel notes that the wording of Art 21(2)(a) fails to state whether the ‘use’ should be in connection with a ‘bona fide’ offering of goods or services in order to demonstrate a legitimate interest, notwithstanding the absence of the words 'bona fide'. In the previous ADR cases, the Panel has hold that the logical conclusion is that such use should be ‘bona fide’ for there to be a legitimate interest (see CAC Case No. 04213, enterpriserentals.eu; CAC Case No. 04296, alterian.eu). As a result, the Panel finds that the Respondent’s such use shall not be regarded as bona fide offering of services in accordance with Article 21(2)(a) of the Regulation, neither such use may be viewed as a legitimate noncommercial or fair use under Article 21(2)(c) of the Regulation. Such a conclusion may be made based on the arguments and evidences made available to the Panel.\r\n\r\nAt the same, to the knowledge of the Panel, the Respondent is not commonly known by the disputed domain name as regulated under Article 21(2)(b) of the Regulation, while the Respondent has not presented any arguments and evidences that could prove the contrary.\r\n\r\nTherefore, on the evidence made available to the Panel, and in the absence of any formal Response from the Respondent, it appears to the Panel that the Respondent does not have any rights or legitimate interest in the Domain Name.\r\n\r\nThe requirement of the Regulation, Article 21(1)(a), is also considered fulfilled.\r\n\r\nRegistered or Used in Bad Faith\r\n\r\nLastly, the Panel evaluates the alternative ground as regulated under Article 21(1)(b) of the Regulation, ie whether the disputed domain name has been registered or is being used in bad faith. Article 21(3) of the Regulation (corresponding Paragraph B11(f) of ADR Rules) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith. \r\n\r\nTo establish registration in bad faith ordinarily requires the Complainant to show that the Respondent had actual knowledge of the Complainant and its marks when the disputed domain name was registered, and that the disputed domain name was selected expressly to target the Complainant to take advantage of its marks (see WIPO Case No. DAM2010-0001, ieee.am; WIPO Case No. D2007-1902, goldmedal.com).\r\n\r\nOne of the factors showing the bad faith as contained in Article 21(3)(d) of the Regulation may be demonstrated where “the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and\/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent“.\r\n\r\nIt is the Panel’s view that the Respondent had the Complainant and the Complainant’s trademarks in mind when registering the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in order to exploit the Complainant’s right in the marks through the creation of initial interest confusion. Considering the confusing similarity of the disputed domain name to the Complainant’s trademarks, the Respondent’s connections to the UK where specifically the Complainant and its trademarks have obtained recognition, the prominent display of the Respondent’s logo on its website that in design and in color is similar to the Complainant’s logo, the identical business model to the Complainant, all the misleading information included in the Respondent’s website creating impression to have connections with the Complainant, while no such connections with the Complainant exist in fact, leads the Panel to conclude that the disputed domain name has been registered and has been used by the Respondent in bad faith (see CAC Case No. 04296, alterian.eu). The disputed domain name and the Respondent’s website appear to be internationally registered and designed to capture the impression with the Complainant, for the purposes of capitalizing or otherwise taking advantage of the Complainant’s trademark rights, through the creation of Internet user confusion.\r\n\r\nIt is therefore evident to the Panel that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks.\r\n\r\nTherefore, the Panel finds that the disputed domain name was registered or is being used in bad faith.\r\n\r\nConsidering all the facts, the Panel therefore finds that the requirement of the Regulation, Article 21(1)(b), is also fulfilled in this case.\r\n\r\n\r\nThe Complainant has asked the transfer of the disputed domain name to the Complainant. The Complainant is the company entered into the UK Companies House Register and having its principal place of business in the United Kingdom, therefore, the Complainant satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No. 733\/2002.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\nthe domain name EKASH.eu be transferred to the Complainant.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2013-07-24 00:00:00",
    "informal_english_translation": "I.      Disputed domain name: ekash.eu\r\n\r\nII.     Country of the Complainant: Great Britain, country of the Respondent: Cyprus\r\n\r\nIII.    Date of registration of the domain name: 16 August 2011\r\n\r\nIV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874\/2004) on which the Panel based its decision:\r\n\r\n        1.   European Community Trademark \"Ukash\" CTM No. 005598297\r\nfiled on 19 December 2006, registered on 30 January 2008\r\nin respect of goods and services in classes 9, 16, 36.\r\n\r\n        2.   European Community Trademark \"U kash (fig.)\" CTM No. 005623814\r\nfiled on 02 January 2007, registered on 30 November 2007\r\nin respect of goods and services in classes 9, 16, 36.\r\n\r\n        3.   European Community Trademark \"U kash (fig.)\" CTM No. 005619556\r\nfiled on 27 December 2006, registered on 19 November 2007\r\nin respect of goods and services in classes 9, 16, 36.\r\n\r\nV.    Response submitted: No.\r\n\r\nVI.   Domain name is confusingly similar to the protected rights of the Complainant.\r\n\r\nVII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874\/2004):\r\n        1. No\r\n        2. Why: Although the Respondent has set up the website www.ekash.eu, and as evidences submitted by the Complainant show the setting up of the named website prior before the notice of the current dispute, the Panel still holds that such use performed by the Respondent shall be bona fide  offering of goods or services in order to demonstrate a legitimate interest. Since the Panel has found the Respondent lacking of any such bona fide use, and as no other factors exist that could show or prove the Respondent’s rights or legitimate interests to the disputed domain name, therefore, the Panel has considered the second requirement fulfilled.\r\n\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n        1. Yes\r\n        2. Why: Based on the arguments and evidences made available to the Panel, the Panel has concluded that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website www.ekash.eu by creating a likelihood of confusion with the Complainant’s marks and with the Complainant. Therefore, the Panel has found the disputed domain name being registered or  being used in bad faith.\r\n\r\nIX.   Other substantial facts the Panel considers relevant: \r\nConsidering the confusing similarity of the disputed domain name to the Complainant’s trademarks, the Respondent’s connections to the UK where specifically the Complainant and its trademarks have obtained recognition, the prominent display of the Respondent’s logo on its website that in design and in color is similar to the Complainant’s logo, the identical business model to the Complainant, all the misleading information included in the Respondent’s website creating impression to have connections with the Complainant although no such connections exist in fact, has led the Panel to conclude that the disputed domain name has been registered and has been used by the Respondent in bad faith.\r\n\r\nX.    Dispute Result: Transfer of the disputed domain name.\r\n\r\nXI.   Procedural factors the Panel considers relevant: \r\nAbsence of the Respondent’s response, while neither the written notice of the Complaint nor the advice of delivery thereof was returned to CAC. In accordance with par. 2(e)(3) of the ADR Rules the CAC has considered the written notice delivered to the Respondent. \r\n \r\nXII.  Is Complainant eligible? Yes.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}