Ace Cash Express, Inc. v. Marketing Total S.A.
Claim Number: FA0710001097327
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 <acecheckcashin.com>, registered with Capitoldomains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
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 25, 2007.
On October 22, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <acecheckcashin.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, LLC 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 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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@acecheckcashin.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 27, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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. Respondent’s <acecheckcashin.com> domain name is confusingly similar to Complainant’s ACE CASH EXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <acecheckcashin.com> domain name.
3. Respondent registered and used the <acecheckcashin.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. Complainant is also the largest owner,
operator, and franchisor of check cashing stores in the
Respondent registered the <acecheckcashin.com> domain name on September 20, 2007. Respondent’s disputed domain name resolves to a website that displays hyperlinks to various third-party websites, some of which are in direct competition with the services offered by 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."
In view of 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 draw such inferences it 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 that 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 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 asserts rights in the ACE CASH EXPRESS mark through registration of the mark with the USPTO. The Panel finds that this timely registration sufficiently establishes Complainant’s rights in the mark under the parameters of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
The <acecheckcashin.com>
domain name contains the dominant portions of Complainant’s ACE CASH EXPRESS
mark and simply modifies the “cash” portion of the mark and adds the term
“check,” which is descriptive of Complainant’s business, while deleting the
term “express.” As the disputed domain
name also includes a generic top-level domain, which is irrelevant to a Policy
¶ 4(a)(i) analysis, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must, under the requirements of Policy ¶ 4(a)(ii), present a prima facie case with regards to Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(a)(ii), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name). The Panel finds that Complainant has adequately met its burden and thus the burden has shifted to Respondent to demonstrate rights or legitimate interests in the <acecheckcashin.com> domain name. Despite Respondent’s failure to submit a response, the Panel will examine all the elements under Policy ¶ 4(c) to see if Respondent has rights or legitimate interests in the disputed domain name.
Respondent is using the <acecheckcashin.com> domain name
to host a website that displays hyperlinks to various third-party websites,
some of which are in direct competition with Complainant, a use that is
presumably for Respondent’s own commercial benefit through the earning of
click-through fees. Thus, there is no
evidence that Respondent is using the <acecheckcashin.com>
domain name for 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 Metropolitan Life Ins.
Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding
that using a confusingly similar domain name to divert Internet users to
competing websites 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by redirecting Internet users to a
commercial search engine website with links to multiple websites that may be of
interest to the complainant’s customers and presumably earning “click-through
fees” in the process).
Complainant contends that
Respondent is not commonly known by the <acecheckcashin.com>
domain name as required by Policy ¶ 4(c)(ii). As Complainant has stated that Respondent is
not authorized to use its ACE CASH EXPRESS mark, and there is no evidence in
the record, including Respondent’s WHOIS information, that Respondent is or
ever has been commonly known by the disputed domain name, the Panel finds that
Respondent is not commonly known by the disputed domain name under the
parameters of Policy ¶ 4(c)(ii). See
eLuxury.com, Inc. v. Sandulli, FA 960178 (Nat. Arb. Forum June 7, 2007)
(finding that the respondent was not commonly known by the <eluxury.mobi>
domain name where it was not known by the name at the time of registration and
the complainant had not given the respondent a license); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089
(Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The website that resolves from
the <acecheckcashin.com>
domain name displays, among other things, hyperlinks to websites in direct
competition with Complainant and the services Complainant offers under its ACE
CASH EXPRESS mark. Such use is a
disruption of Complainant’s business and indicates bad faith registration and
use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA
726010 (Nat. Arb. Forum July 24, 2006) (finding that the
respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); 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 directory website containing commercial
links to the websites of a complainant’s competitors represents bad faith
registration and use under Policy ¶ 4(b)(iii)).
Moreover, Respondent is using a domain name which is confusingly similar to Complainant’s mark to operate a website whereby Respondent accumulates click-through fees for redirecting Internet users. Such use of the <acecheckcashin.com> domain name indicates 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acecheckcashin.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 10, 2007
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