national arbitration forum

 

DECISION

 

Dollar Financial Group, Inc. v. Karnab Web Marketing Services Pvt. Ltd.

Claim Number: FA0711001111756

 

PARTIES

Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Hilary B. Miller, 72 Zaccheus Mead Lane, Greenwich, CT 06831-3752.  Respondent is Karnab Web Marketing Services Pvt. Ltd. (“Respondent”), 303, Salarpuria Money Center, 7th Block, Koramangala, Bangalore, Karnataka 560095 India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <moneymarthome.com>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 20, 2007.

 

On November 19, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <moneymarthome.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 17, 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@moneymarthome.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <moneymarthome.com> domain name is confusingly similar to Complainant’s MONEY MART mark.

 

2.      Respondent does not have any rights or legitimate interests in the <moneymarthome.com> domain name.

 

3.      Respondent registered and used the <moneymarthome.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Dollar Financial Group, Inc., is one of the largest international vendors of subprime consumer loans.  Since 1982, Complainant has earned over one billion dollars in sales using the MONEY MART mark in connection with its consumer financial services.  Complainant holds a trademark registration for the MONEY MART mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,244,158 issued May 11, 1999).  Complainant also owns registrations for several domain names incorporating its MONEY MART mark, including the <moneymart.com> and <moneymart.ca> domain names.

 

Respondent registered the <moneymarthome.com> domain name on August 31, 2006.  The disputed domain name resolves to Respondent’s website, which markets short-term consumer loans in direct competition with Complainant’s services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the MONEY MART mark by virtue of its registration of the mark with the USPTO.  The Panel finds that this registration sufficiently establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i).  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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

Respondent’s <moneymarthome.com> domain name incorporates Complainant’s entire MONEY MART mark and merely adds the generic term “home” onto the mark.  The Panel finds that the addition of such a generic term does not sufficiently distinguish the disputed domain name from the MONEY MART mark.  In addition, the inclusion of the generic top-level domain “.com” in the disputed domain name is not relevant, as a top-level domain is required of all domain names.  Therefore, the Panel finds that the <moneymarthome.com> domain name is confusingly similar to Complainant’s MONEY MART mark under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).

 

The Panel concludes that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) places the initial burden on Complainant to show that Respondent lacks rights and legitimate interests in the <moneymarthome.com> domain name.  Once Complainant has established a prima facie case, however, the burden shifts to Respondent to refute that showing.  In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Respondent failed to submit an answer to the Complaint in this proceeding.  Respondent’s default thus allows the Panel to presume that Respondent lacks rights and 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).  However, the Panel will still examine the record to determine if Respondent has rights or legitimate interests in the <moneymarthome.com> domain name pursuant to Policy ¶ 4(c).

 

Respondent’s <moneymarthome.com> domain name resolves to a website offering short-term loans in direct competition with Complainant, and the Panel presumes that Respondent profits when Internet users elect to take advantage of Respondent’s services.  The Panel concludes that such use does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), which indicates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).

 

Complainant also asserts that Respondent is not commonly known by the <moneymarthome.com> domain name, which also indicates a lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The Panel agrees with this assertion, as Respondent’s WHOIS information does not indicate that Respondent, “Karnab Web Marketing Pvt. Ltd.,” is known by the <moneymarthome.com> domain name, and there is no additional evidence in the record to suggest otherwise.  In addition, Complainant has not permitted Respondent to use its MONEY MART mark for any purpose.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).

 

The Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the <moneymarthome.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  The disputed domain name resolves to Respondent’s website offering consumer loans in direct competition with Complainant’s business.  The Panel finds that this constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii).  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).

 

Furthermore, the Panel presumes that Respondent benefits commercially when Internet users take advantage of the loan services offered on the website that resolves from the <moneymarthome.com> domain name, which is confusingly similar to Complainant’s MONEY MART mark.  Respondent is thus capitalizing on the likelihood of confusion created when users believe that Respondent’s website is somehow affiliated with Complainant.  The Panel finds that this is further evidence that Respondent registered and is using the <moneymarthome.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See 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).”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

The Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <moneymarthome.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  January 2, 2008

 

 

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