Ace Cash Express, Inc. v Jay Shanks c/o KWEB Mktg Services P Ltd
Claim Number: FA0711001106472
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 <acecashexpress.us>, registered with Wild West Domains, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <acecashexpress.us> domain name is identical to Complainant’s ACE CASH EXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <acecashexpress.us> domain name.
3. Respondent registered and used the <acecashexpress.us> 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 registered the <acecashexpress.us>
domain name on
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 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; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has sufficiently
established its rights in the ACE CASH EXPRESS mark through registration with
the USPTO pursuant to Policy ¶ 4(a)(i). See
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."); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <acecashexpress.us> domain name is
identical to Complainant’s ACE CASH EXPRESS mark except for the removal of
spaces and the inclusion of the country-code top-level domain (“ccTLD”)
“.us.” It is well-established that the absence
of spaces and inclusion of a ccTLD is not relevant to a Policy ¶ 4(a)(i) analysis.
Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i), Respondent’s disputed domain name is identical to
Complainants’ mark. See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name). The Panel finds that Complainant has established a prima facie case and that the burden is thus shifted to Respondent to show that it does have rights or a legitimate interest in the disputed domain name. 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”).
Respondent has failed to submit a response to the
Complaint. Therefore, the Panel is
entitled to presume that Respondent lacks all rights and legitimate interests
in the disputed domain name. See Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum
Complainant contends that Respondent does not
own any trademarks or service marks reflecting the <acecashexpress.us> domain name. Absent evidence suggesting otherwise, the
Panel finds that Respondent has no trademark or service mark rights in the ACE
CASH EXPRESS mark which would satisfy Policy ¶ 4(c)(i). See Meow
Media Inc. v. Basil, FA
113280 (Nat. Arb. Forum
Complainant contends that Respondent is not commonly known
by the <acecashexpress.us> domain
name and is not authorized to use Complainant’s ACE CASH EXPRESS mark in any
way. According to the WHOIS information page for <acecashexpress.us>, Respondent
registered the disputed domain name under the name “Jay Shanks” c/o “KWEB Mktg
Services P Ltd.” Nowhere in the record
does it indicate that Respondent is or ever was commonly known by the <acecashexpress.us> domain name. The Panel finds that Respondent has not
established rights to or legitimate interests in the domain name in accordance
with Policy ¶ 4(c)(iii). 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
UDRP ¶ 4(c)(ii) does not apply); see also Am.
Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum
Complainant also states that the disputed domain name, <acecashexpress.us>, currently
resolves to a website, which prominently and repeatedly displays Complainant’s
mark and provides links to services in direct competition with those of
Complainant. The Panel finds this to be
neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(ii) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See 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 [UDRP] Policy ¶
4(c)(i) or a legitimate noncommercial or fair use
under [UDRP] Policy ¶ 4(c)(iii).”); see also 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 concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <acecashexpress.us> disputed domain name currently resolves to a website, which prominently and repeatedly displays Complainant’s mark and provides links to services in direct competition with those of Complainant. The Panel finds such use to establish that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See 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 UDRP Policy ¶ 4(b)(iii)); 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).
Respondent is presumably commercially
benefiting from the <aecashexpress.us>
domain name for each misdirected Internet user to a third-party website through
the use of click-through fees. The Panel
finds this to be further evidence of Respondent’s bad faith registration and
use pursuant to 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 [UDRP] 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
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
the respondent profits from its diversionary use of the complainant's mark when
the domain name resolves to commercial websites and the respondent fails to
contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to UDRP ¶ 4(b)(iv)).
Complainant states that Respondent has registered and used <aecashexpress.us> with knowledge of Complainant’s ACE CASH EXPRESS mark. Complainant contends that Respondent’s website consists entirely of Complainant’s ACE CASH EXPRESS mark and repeatedly displays the ACE CASH EXPRESS mark while offering competing services. The Panel finds that Respondent has Registered the disputed domain name with full knowledge of Complainant's mark and that this conduct is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acecashexpress.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 25, 2007
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