Ace Cash Express, Inc. v. Demiurgic Services c/o Robert Carr
Claim Number: FA0710001094574
Complainant is Ace Cash Express, Inc. (“Complainant”), represented by Kay
Lyn Schwartz of Gardere Wynne Sewell, LLP, 1601 Elm
Street, Suite 3000, Dallas, TX, 75201.
Respondent is Demiurgic Services c/o Robert Carr (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <acefinancing.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 16, 2007; the National Arbitration Forum received a hard copy of the Complaint October 18, 2007.
On October 17, 2007, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <acefinancing.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and thereby has 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 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 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@acefinancing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <acefinancing.com>, is confusingly similar to Complainant’s ACE mark.
2. Respondent has no rights to or legitimate interests in the <acefinancing.com> domain name.
3. Respondent registered and used the <acefinancing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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
Respondent, Demiurgic Services c/o Robert Carr, registered the <acefinancing.com> domain name July 22, 2005. Respondent’s <acefinancing.com> domain name resolves to a website providing links to third-party websites, some of which seek to compete directly with Complainant.
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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant provided service mark registration information with
the USPTO for the ACE mark. The Panel
finds that this registration establishes Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive.").
The disputed domain name that Respondent registered, <acefinancing.com>, is confusingly similar to Complainant’s ACE mark pursuant to Policy ¶ 4(a)(i) as it includes the entire mark along with a word descriptive of Complainant’s business. Addition of this word does not negate the confusion over the connection of the disputed domain name with Complainant’s business. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); 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).
Respondent’s disputed <acefinancing.com> domain name also adds the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is not relevant in a Policy ¶ 4(a)(i) analysis.
The Panel finds that the <acefinancing.com> domain name is confusingly similar to the Complainant’s mark under Policy ¶ 4(a)(i). See 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . .").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <acefinancing.com> domain name. Complainant has the burden of proof for this allegation, pursuant to Policy ¶ 4(a)(ii). The burden of proof shifts to Respondent once Complainant makes a prima facie showing. The Panel finds Complainant met its burden. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the Complaint permits the Panel to assume that Respondent has no rights or legitimate interests in the <acefinancing.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nonetheless, the Panel examines the record to determine if evidence before the Panel suggests that Respondent has rights or legitimate interests under Policy ¶ 4(c).
Pursuant to Policy ¶ 4(c)(ii), the
record contains nothing to suggest Respondent is commonly known by the disputed
domain name. The WHOIS information
identifies Respondent as “Demiurgic Services c/o
Robert Carr.” Respondent is not
licensed or authorized to use the ACE mark.
The Panel finds that Respondent has no rights or legitimate interests to
the <acefinancing.com>
domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb.
10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
In addition, Respondent is using
the <acefinancing.com>
domain name to redirect Internet users to third-party websites offering
services that are similar to those offered by Complainant’s business. The Panel
presumes that Respondent is using the domain name for monetary gain by
capitalizing on the good reputation of Complainant’s mark. The Panel finds this use is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and that it is not a legitimate
non-commercial or fair use under Policy ¶ 4(c)(iii). See Or. State Bar
v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001)
(“Respondent's advertising of legal services and sale of law-related books
under Complainant's name is not a bona fide offering of goods and services
because Respondent is using a mark confusingly similar to the Complainant's to
sell competing goods.”); see also Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding
that the respondent’s use of the disputed domain name to redirect Internet
users to a financial services website, which competed with the complainant, was
not a bona fide offering of goods or services).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and is using
the <acefinancing.com> domain name in bad faith pursuant to
Policy ¶ 4(a)(iii).
Respondent is using the disputed domain name to redirect Internet users
to third-party websites in direct competition with Complainant. The Panel finds that such use constitutes a
disruption of Complainant’s business and qualifies as bad faith registration
and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
The Panel also finds that an inference may be made from the
record that the <acefinancing.com>
domain name is being used for monetary gain by Respondent’s receiving
click-through fees as a result of this opportunistic capitalizing on
Complainant’s reputation. Such use is
evidence of bad faith registration and use under Policy ¶ 4(b)(iv). 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 TM Acquisition Corp. v. Warren,
FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s
principal website is <century21.com>, many Internet users are likely to
use search engines to find Complainant’s website, only to be mislead to
Respondent’s website at the <century21realty.biz> domain name, which
features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acefinancing.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 28, 2007.
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