National Arbitration Forum




Ace Cash Express, Inc. v. R9 DomainGuard Proxy Service

Claim Number: FA0710001095275



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 R9 DomainGuard Proxy Service (“Respondent”), represented by Michael Pezzulli, of Pezzulli Kinser, L.L.P., 17304 Preston Road, Suite 700, Dallas, TX 75252-5697.




The domain name at issue is <>, registered with Enom, Inc.



The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.


Hon. R. Glen Ayers (Ret.), Sandra J. Franklin, Esq., and James A. Carmody, Esq. (Chair), as Panelists.



Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2007.


On October 19, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 28, 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 by e-mail.


On November 28, Respondent filed a request to seek a ten-day extension to file a Response to the Complaint with the National Arbitration Forum.  The National Arbitration Forum granted Respondent’s request on November 29, 2007 extending the deadline to submit a response to December 7, 2007. 


A timely Response was received and determined to be complete on December 7, 2007.


Each of the parties timely filed an Additional Submission which was considered by the Panel.


On December 14, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. R. Glen Ayers (Ret.), Sandra J. Franklin, Esq., and James A. Carmody, Esq. (Chair), as Panelists.




Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant

            1.  Respondent’s <> domain, the domain name at issue, is confusingly similar to Complainant’s ACE mark.


2.      Respondent does not have any rights or legitimate interests in the domain name at issue.


            3.   Respondent registered and has used the domain name at issue in bad faith.


B. Respondent

1.     Respondent does not dispute that the domain name at issue is identical or confusingly similar to Complainant’s ACE mark but claims that such mark is generic and not solely the property of Complainant.


2.        Respondent claims that it has had rights and legitimate interests in the domain name at issue since registration in 2000.


3.  Respondent denies that the domain name at issue was registered or has been used in bad faith.


C.  Additional Submissions

The parties filed timely Additional Submissions which were considered by the Panel and found to essentially restate the arguments of the initial pleadings.





Complainant is a leading retailer of financial services, including check cashing, short-term consumer loans, bill payment and prepaid debit card services, and is the largest owner, operator and franchisor of check cashing stores in the United States.  As of September, 2007, Complainant had a network of 1,718 stores in 38 states and the District of Columbia and estimates that it serves over 38 million customers each year.  Complainant has used continuously, since at least as early as 1989, and is currently using,         the service mark “ACE,” as well as various other “ACE” and “ACE CASH”-derivative marks in connection with its various financial services (collectively the “ACE Marks”).  As a result of this extensive use and promotion of the ACE Marks, the Complainant alleges a common law trademark in the ACE mark.  In addition, Complainant holds USPTO Registration No. 2,155,964 for ACE which was registered on May 12, 1998 with a date of first use and first use in commerce of March, 1989.  Complainant asserts, and there is no evidence to the contrary, that it has not licensed or otherwise authorized the Respondent to use the ACE mark for any purpose and that Respondent is not commonly known by the name ACE or by a name similar to the domain name at issue.


Respondent does not contest Complainant’s assertions that <>  is identical or confusingly similar to the ACE Marks, rather it points out that there are 97.5 million third party uses of ACE according to a Goggle search and that a <> search for ACE yielded 1,837 records, the top 50 of which made no reference to Complainant’s registration of ACE.  Respondent registered the domain name at issue in April of 2000 in connection with a web site which offers advertising, a generic directory and e-mail hosting under the <> domain which does not compete with or divert customers from Complainant.  By virtue of the ubiquitous nature of the word “ace” and Respondent’s seven year use of the domain name at issue without a cry of foul by Complainant until late 2007, Respondent denies bad faith registration and use of the domain name at issue.


            The Panel finds that there is no proof that Respondent has registered or used the domain name at issue in bad faith.




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.


Identical and/or Confusingly Similar


Complainant has registered the ACE mark with the United States Patent and Trademark Office (“USPTO”) in connection with the retailing of financial services (Reg. No. 2,155,964 issued May 12, 1998).  This establishes Complainant’s rights in the ACE 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 Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place).


Further, Complainant asserts that the <> domain name is identical to Complainant’s ACE mark.  The disputed domain name contains Complainant’s mark in its entirety and includes the generic top-level domain (“gTLD”) “.net.”  The inclusion of          a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis.  Therefore, pursuant to Policy ¶ 4(a)(i) Respondent’s disputed domain name is identical to Complainant’s mark.  See 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.”); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <> is identical to the complainant’s famous NIKE mark).


            The Panel finds that the Complainant has satisfied Policy ¶ 4(a)(i).


Rights or Legitimate Interests


Because the disputed domain name uses a common term, the fact that it redirects Internet users to other third-party websites is not a per se illegitimate use by Respondent.  The Respondent, in offering a directory service, is using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest); see also Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (“[G]iven the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark.”).


Accordingly, the Panel finds that the Complainant has failed to satisfy Policy ¶ 4(a)(ii).


Registration and Use in Bad Faith


Complainant waited seven years to file a Complaint against Complainant, and Respondent claims that this bars the Complaint on the grounds of “laches.”  Further, this considerable delay is some evidence that Complainant does not actually believe Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).  Taking the record as a whole into consideration, the Panel          finds that the Complainant has failed to prove bad faith registration or use of <> by Respondent.


Accordingly, the Panel finds that the Complainant has failed to satisfy Policy ¶ 4(a)(iii).




Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.




James A. Carmody, Esq. (Chair)

Hon. R. Glen Ayers (Ret.)

Sandra J. Franklin, Esq.

Dated: February 21, 2008




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