Ace Cash Express, Inc. v. MSA, Inc.
Claim Number: FA0711001106759
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 <acecheckcashings.com>, registered with Moniker Online Services, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 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@acecheckcashings.com by e-mail.
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 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 <acecheckcashings.com> domain name is confusingly similar to Complainant’s ACE mark.
2. Respondent does not have any rights or legitimate interests in the <acecheckcashings.com> domain name.
3. Respondent registered and used the <acecheckcashings.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ace Cash Express, is a company that provides a
variety of financial services under its ACE and ACE CASH-derivative marks
including: check cashing, short-term consumer loans, bill payment and prepaid
debit card services. The ACE mark was
registered by Complainant with the United States Patent and Trademark Office
(“USPTO”) on
Respondent registered the <acecheckcashings.com>
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 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 has established rights in the ACE mark pursuant
to Policy ¶ 4(a)(i) through registration of the mark
with USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Respondent’s <acecheckcashings.com>
domain name is confusingly similar to Complainant’s ACE mark pursuant to ¶
4(a)(i) because Respondent’s disputed domain name incorporates the ACE mark with
a generic term describing the goods and services offered under the mark. See
Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <acecheckcashings.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove that it does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii).
The Panel finds that Complainant has established a prima facie case. Due to
Respondent’s failure to respond to the Complaint, the Panel assumes that
Respondent does not have rights or legitimate interests in the disputed domain
name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
Respondent is using the <acecheckcashings.com>
domain name on a website that contains links and advertisements for goods and
services in direct competition with Complainant. Respondent’s use of a domain name that is
confusingly similar to Complainant’s mark to divert users interested in
Complainant’s products to a website that offers competing goods and services is
not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use of the disputed domain name pursuant
to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to
Policy Paragraph 4(a)(ii).”).
Additionally, the record and WHOIS information indicates no
evidence suggesting Respondent is commonly known by the <acecheckcashings.com> domain
name. There is also no evidence in the
record that Respondent is authorized to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the <acecheckcashings.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <acecheckcashings.com>
domain name, which is confusingly similar to Complainant’s ACE mark, to direct
Internet users to Respondent’s commercial website that advertises good and
services that compete with Complainant’s business. The Panel finds that such use constitutes
disruption of Complainant’s business and is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See
S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
In
addition, Respondent is using the <acecheckcashings.com>
domain name in bad faith pursuant to Policy ¶
4(b)(iv) because Respondent is using Complainant’s ACE mark to attract Internet
users to a website that has links with the phrase “Ace Cash Express” which
advertises for the goods and services of Complainant’s competitors. This conduct is evidence that Respondent is
attempting to profit by giving the impression of being affiliated with
Complainant. 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 Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov.
10, 2003) (“As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”)
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 <acecheckcashings.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 27, 2007
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