Ace Cash Express, Inc. v.
Portfolio Brains
Claim Number: FA0710001093846
PARTIES
Complainant is Ace Cash Express, Inc. (“Complainant”), represented by Kay
Lyn Schwartz, of Gardere Wynne Sewell LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <acechecking.com> and
<acecashloans.com>, registered with Nameking.com, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and, to the best of their knowledge have no known conflict in
serving as Panelist in this proceeding.
Sandra J. Franklin, David E. Sorkin, and the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 11, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 15, 2007.
On October 12, 2007, Nameking.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <acechecking.com> and
<acecashloans.com> domain names are registered with Nameking.com, Inc. and that the Respondent is
the current registrant of the names. Nameking.com, Inc. has verified that Respondent
is bound by the Nameking.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On October 23, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 13, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts, and
to postmaster@acechecking.com and
postmaster@acecashloans.com by e-mail.
Respondent submitted a timely Response on November 13, 2007. On
November 19, 2007, Complainant submitted a timely Additional Submission. On
November 26, 2007, Respondent submitted a timely Additional
Submission. A majority of the Panel
found the Additional Submissions acceptable, as within the National Arbitration
Forum’s Supplemental published Rules, and not prejudicial to one party or the
other. Both Additional Submissions were
considered by the Panel.
On November 21, 2007, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin, David E. Sorkin, and the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant, Ace Cash Express, Inc., makes the following assertions:
The <acechecking.com> and <acecashloans.com> domain names of Respondent, Portfolio Brains, are confusingly similar to Complainant’s ACE mark.
Respondent
does not have any rights or legitimate interests in the <acechecking.com> and
<acecashloans.com> domain names. Respondent has not been authorized to use the
ACE Marks, and Respondent has no trade or service mark rights in “ACE” or any
derivatives of “ACE” including <acechecking.com> and/or <acecashloans.com>. Respondent’s sole business is to acquire
domain names using automated technology and programs.
Respondent’s
domain name <acechecking.com> redirects unsuspecting internet users
to a site entitled “Acechecking.com –
What you need, when you need it.”
The website provides various “sponsored links” to third party competitor
sites, as well as a link to Complainant and Complainant’s website at
“acecashexpress.com.” The <acecashloans.com>
domain resolves to a website of a company by the name of Low.com, Inc., which
appears to be offering some type of on-line loan service. Respondent itself is not offering any type of
“service”, but rather is using each of the domain names at issue solely to
obtain “click through” fees through web advertising programs. The practice of misdirecting internet traffic
for commercial gain (which would include deriving affiliate commissions) is not
a bona fide offering of goods or
services under the Policy, and also is not a legitimate non-commercial or fair
use of a domain name under the Policy.
Respondent has no rights or legitimate interests in the domain names at
issue.
Respondent
registered and used the <acechecking.com> and
<acecashloans.com> domain names in bad faith. Respondent’s conduct of intentionally trying
to divert Internet users to alternative sites is evidence of bad faith.
Respondent
was on notice as to the existence of Complainant and at least its “ACE” mark
when it registered the <acechecking.com> (on September 22,
2003) and the <acecashloans.com> (on August 24, 2005). Actual or constructive knowledge of a
commonly known mark at the time of registration is evidence of bad faith. Complainant submits that, if Respondent had
performed a rudimentary trademark investigation at the time of registration of
either the <acechecking.com> and <acecashloans.com> domain
names, Respondent would have been alerted as to Complainant and to the
existence of Complainant’s portfolio of marks.
Complainant has been in existence since at least as early as 1982 –
years before Respondent registered the domain names at issue in 2003 and 2005
respectively.
B. Respondent, Portfolio Brains, makes the following assertions:
Complainant has no rights in ACE CHECKING or ACE CASH LOANS. Complainant does not have a trademark for either ACE CHECKING or ACE CASH LOANS. A review of the relevant trademarks to the Complaint reveals that Complainant has: (i) a trademark for ACE CASH ADVANCE, in which Complainant explicitly disclaims any rights to CASH ADVANCE apart from the mark as shown, (ii) ACE CASH EXPRESS, in which Complainant explicitly disclaims any rights to CASH apart from the mark as shown, and (iii) ACE CHECK DIRECT, in which Complainant explicitly disclaims any rights to CHECK DIRECT apart from the mark. None of these are identical to the domain names at issue here.
Complainant’s trademark portfolio consists of trademarks containing common words used in a descriptive or generic manner. For that reason, the United States Patent and Trademark Office (“USPTO”), when considering Complainant’s applications, has habitually required Complainant to disclaim any right to these common words separate and apart from the specific combination in which they are used. Now, however, Complainant seeks to obtain domain names which incorporate the common words it has previously disclaimed. Since Complainant does not have registrations for ACE CHECKING and ACE CASH LOANS, it has no right to these domain names nor does it have a presumption of secondary meaning upon which it can rely.
Respondent contends that the domain names are not identical or confusingly similar. Mere registration of a generic word, such as “ace,” does not entitle Complainant to rights in every domain name which incorporates the word “ace” and does not mean that domain names which incorporate these generic words are confusingly similar. When the mark upon which the Complainant’s request is based is generic or descriptive, the mere addition of other common terms is sufficient to avoid a finding of confusing similarity. ACE is a descriptive mark; CHECKING and CASH LOANS are generic terms for the services at issue. The combination of these terms in a domain name should not be held to be confusingly similar to the ACE mark. Furthermore, Respondent contends that confusion is less likely because the ACE mark is in a crowded field.
Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent contends that its <acechecking.com> and <acecashloans.com> domain names are made up entirely of generic terms. Respondent further contends that Respondent’s use of the disputed domain names to resolve to websites which generate click-through fees is a bona fide offering of goods or services and establishes rights or legitimate interests in a domain name. The use of domain names in the PPC or Direct Navigation industry is legitimate and establishes rights or legitimate interests in a domain name. When the domain name at issue is a generic or descriptive domain name, a registrant can obtain rights or legitimate interests in the domain name by being the first to register it and/or by providing PPC advertising services. Here, the two descriptive domain names were registered before Complainant could register them.
Respondent contends that it had no bad faith
intent in registering the <acechecking.com> and <acecashloans.com> domain names because of their generic nature.
Respondent was not aware of Complainant’s marks until this dispute arose. Instead, Respondent is merely using domain names comprised entirely of common words in a descriptive manner with respect to perfectly legitimate PPC advertising services. Respondent is not using its web sites to intentionally redirect Internet users to competitors by creating a likelihood of confusion. It is simply using descriptive domain names to offer Internet users hyperlinks to various different service providers. In these circumstances, the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest.
C. Additional Submissions[1]
Complainant
Regardless,
Complainant’s U.S. Registration for “ACE” is now incontestable and is not open
to challenge on the basis of descriptiveness.
Notwithstanding, by virtue of its extensive use and promotion of its
“ACE” marks in commerce over the last 25 years, Complainant’s “ACE” mark has
acquired distinctiveness and secondary meaning, and has become well-known. Since its inception, Complainant has
extensively promoted its financial services under its “ACE” family of marks to
consumers throughout the
Respondent’s Additional Submission
The word “ACE” is descriptive when
used in connection with financial services.
Complainant does not establish secondary meaning in the ACE mark. The
addition of generic terms is sufficient to avoid a finding of likelihood of
confusion. Respondent has rights in the
domain name. Respondent did not act in
bad faith.
FINDINGS
Complainant, Ace Cash Express, Inc.
is a leading retailer of financial
services, including check cashing, short-term consumer loans, bill payment and
prepaid debit card services, and the largest owner, operator and franchisor of
check cashing stores in the
As
of September, 2007, Complainant had a network of 1,718 stores in 38 states and
the
As
a result of Complainant’s extensive use and promotion of the ACE marks, the ACE
marks have become widely known and recognized among consumers throughout the
The domain name <acechecking.com> was registered on September 22, 2003. The domain name <acecashloans.com> was registered on August 24, 2005. Respondent acquired <acecashloans.com> in November 2006 and <acechecking.com> in August 2007 and has been offering Direct Navigation and Pay-Per-Click (“PPC”) advertising on these sites ever since. The hyperlinks to third parties which appear on these sites are selected by a completely automated program which determines which hyperlinks should appear, and in which order, based, primarily, on the amount of the third party’s PPC bids.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant has established rights in the ACE family of marks through registration with the United States Patent and Trademark Office (ACE Reg. No. 2,155,964, May 12, 1998; ACE CASH EXPRESS Reg. No. 3,051,382, January 24, 2006; and ACE CASH ADVANCE Reg. No. 2,929,489, March 1, 2005). As a result, Complainant’s registration of the ACE family of marks with the USPTO establishes its rights in the mark for the purposes of satisfying Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The Complainant’s mark “ACE” is not descriptive or generic. The Panel finds that the word “ACE” is arbitrary.
The Panel finds that Respondent’s <acechecking.com> and <acecashloans.com> domain names are confusingly similar to Complainant’s mark. Respondent’s <acechecking.com> domain name includes the Complainant’s ACE mark in its entirety, adds the generic term “checking,” which describes services offered under Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.” Likewise, Respondent’s <acecashloans.com > domain name includes the Complainant’s ACE mark in its entirety, adds the generic terms “cash,” and “loans,” which describe services offered under Complainant’s mark, and adds the gTLD “.com.” The Panel finds that the addition of the generic terms “checking,” “cash,” and “loans,” fail to distinguish Respondent’s domain names from Complainant’s mark in any meaningful way for purposes of Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”): see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Further, the addition of the gTLD “.com” is irrelevant in determining whether a domain name is confusingly similar to an established mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent is using the disputed domain
names, which are confusingly similar to Complainant’s ACE mark, to operate
websites that feature links to competing financial and loan services. Respondent is not offering any type of
service, but rather is using each of the domain names at issue to obtain
referral fees in connection with an affiliate type of advertising program. The Panel finds that where Complainant’s mark
is an arbitrary mark, such use does not constitute a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate,
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho,
FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services).
Moreover, Respondent is not commonly known
by either the <acechecking.com> or <acecashloans.com>
domain name, as Respondent registered both domain names under the name
Portfolio Brains, LLC. Further, nothing
on Respondent’s websites suggests that Respondent is commonly known by
Complainant’s ACE mark. The Panel finds
that Respondent does not have rights or legitimate interests pursuant to Policy
¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Am.
Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding
that the respondent was not commonly known by <aolcamera.com> or
<aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video &
Imaging Corp.”).
The Panel concludes
that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that
Respondent is using the disputed domain names <acechecking.com>
and <acecashloans.com> solely
as a device to draw Complainant’s customers to Respondent’s websites. The Panel finds that Respondent’s use of the
disputed domain names <acechecking.com> and <acecashloans.com>,
which are confusingly similar to Complainant’s ACE mark, to resolve to websites
containing links to Complainant’s competitors is evidence of bad faith pursuant
to Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EBAY, Inc. v.
MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites); see also St. Lawrence Univ. v. Nextnet Tech,
FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (finding that by redirecting
Internet users seeking information on Complainant’s educational institution to
competing websites, Respondent had engaged in bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).); see also Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (concluding that the use of a confusingly similar domain name to attract
Internet users to a website containing commercial links to the websites of the
complainant’s competitors represented bad faith registration and use under
Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent is using the disputed domain names <acechecking.com> and <acecashloans.com> to operate websites that feature links to competing financial and loan services for the purpose of collecting click-through fees for each Internet user clicking through Respondent’s website to visit a third-party website. The Panel finds that Respondent’s use is likely to lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. Such use is found to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees)).
As to Respondent’s claim that it was unaware of Complainant and Complainant’s marks until the present dispute arose (and therefore could not have registered the disputed domain names in bad faith), the Panel considers this unsubstantiated and self-serving claim to be implausible in light of the circumstantial evidence to the contrary.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acechecking.com> and <acecashloans.com>
domain names be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Sandra J. Franklin, Panelist
___________________________________________________
David E. Sorkin, Panelist
The
Honorable Charles K. McCotter, Jr. (Ret.), Panel Chair
Dated: December 5, 2007
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National
Arbitration Forum
1Panelist Sorkin is of the view that the Parties’
Additional Submissions should be wholly disregarded, as neither party has
identified any exceptional circumstances that would warrant consideration of
additional material, such as newly discovered evidence not reasonably available
to the submitting party at the time of its original submission or a need to
rebut arguments made by the opposing party that could not reasonably have been
anticipated. See, e.g., Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum
May 24, 2006); Trustees of