Ace Cash Express, Inc. v. None
Claim Number: FA0711001106480
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-finances.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 7, 2007.
On November 6, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ace-finances.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 3, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant 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
Complainant has used continuously, from May of 1998, the service mark ACE, as well as various other “ACE” and “ACE CASH” derivative marks in connection with its various financial services.
Complainant holds a registration for the ACE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 2,155,964, issued May 12, 1998).
Complainant also maintains a website at <acecashexpress.com>.
Respondent is neither commonly known by the <ace-finances.com> domain name nor is it authorized to use Complainant’s ACE mark in any way.
Respondent registered the domain name, <ace-finances.com>, on June 28, 2007.
Respondent uses the disputed domain name to resolve to a website entitled “ACE-FINANCES.COM,” which displays links to financial sites competing with the business of Complainant.
Respondent’s <ace-finances.com> domain name is confusingly similar to Complainant’s ACE mark.
Respondent does not have any rights to or legitimate interests in the <ace-finances.com> domain name.
Respondent registered and used the <ace-finances.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the ACE mark pursuant to Policy ¶ 4(a)(i) by means of its registration with the USPTO. 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent’s domain name, <ace-finances.com>, is confusingly
similar to Complainant’s ACE mark pursuant to Policy ¶ 4(a)(i). We agree.
The disputed domain name includes the entirety of Complainant’s mark,
merely adding a hyphen, the generic term “finances,” which directly relates to
Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb.
Forum Mar. 5, 2001) (finding the <hoylecasino.net> domain name
confusingly similar to a complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the business in which that complainant
engaged, does not take the disputed domain name out of the realm of confusing
similarity); see also Health Devices Corp. v.
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
See further Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Where Complainant makes out a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it possesses rights to or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant has established a prima facie case in the matter at hand. Respondent, for its part, has failed to submit a response to the Complaint. Therefore we are entitled to presume that Respondent has no rights to or legitimate interests in the disputed 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 Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003):
It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.
Nonetheless, we will examine the record to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the <ace-finances.com> domain name pursuant to Policy ¶ 4(c).
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <ace-finances.com> domain name nor is it authorized to use Complainant’s ACE mark. Moreover, nowhere in the pertinent WHOIS information or elsewhere in the record is there any indication that Respondent is or ever was commonly known by the <ace-finances.com> domain name. We therefore conclude that Respondent has not established rights to or legitimate interests in the domain name in accordance with Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”
We also observe that there is no dispute that the <ace-finances.com> domain name resolves to a website entitled “ACE-FINANCES.COM,” which displays links to financial sites competing with the business of Complainant. This use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that a respondent’s use of a complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s use of a domain name that was confusingly similar to a complainant’s mark to display links to that complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to that complainant’s competitors, not a bona fide offering of goods or services).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We have already concluded that Respondent uses the disputed domain name to resolve to a website featuring links to competitors of Complainant. Such use is evidence that Respondent registered and uses 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 a complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competes with a complainant’s business).
Moreover, Respondent is presumed to benefit from receipt of click-through fees from its links to third-party competitors of Complainant. Internet users searching for Complainant’s ACE mark may easily confused by the disputed domain name, which results in additional traffic to Respondent’s websites. In these circumstances we believe that Respondent has attempted to use Complainant’s mark to confuse and attract Internet users to the disputed domain name for commercial gain within the meaning of Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.
See also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website and likely profited from click-through fees)).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ace-finances.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 20, 2007
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