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,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ace.net>, 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
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 email@example.com 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
Each of the parties timely filed an Additional Submission which was considered by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <ace.net> 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.
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
Respondent does not contest Complainant’s assertions that <ace.net> 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 <uspto.gov> 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 <ace.net> 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.
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
Further, Complainant asserts that the <ace.net> 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
The Panel finds that the Complainant has satisfied Policy ¶ 4(a)(i).
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
Accordingly, the Panel finds that the Complainant has failed to satisfy Policy ¶ 4(a)(ii).
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
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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