Dollar Financial Group, Inc. v. jimmy
Claim Number: FA0205000113310
Complainant is Dollar Financial Group, Inc., Berwyn, PA (“Complainant”). Respondent is jimmy, St. Louis, MO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cashtopayday.com>, registered with InnerWise, Inc. d/b/a Itsyourdomain.com.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 9, 2002; the Forum received a hard copy of the Complaint on May 10, 2002.
On May 13, 2002, InnerWise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the Forum that the domain name <cashtopayday.com> is registered with InnerWise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name. InnerWise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the InnerWise, Inc. d/b/a Itsyourdomain.com 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 May 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.
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 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 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.
1. Respondent’s <cashtopayday.com> domain name is confusingly similar to Complainant’s registered CASH ‘TIL PAYDAY mark.
2. Respondent has no rights or legitimate interests in the <cashtopayday.com> domain name.
3. Respondent registered and used the disputed domain name in bad faith.
B. Respondent did not submit a Response.
Complainant is the owner of U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1987764 for the CASH ‘TIL PAYDAY mark registered July 16, 1996. Complainant’s mark is displayed at over 400 retail locations in the U.S. and Canada. Since 1995, Complainant has spent millions of dollars advertising its consumer financial services and has originated over $400,000,000 in consumer loans nationwide using the CASH ‘TIL PAYDAY mark and corresponding logo. Complainant has also operated a website advertising its services at <cashtilpayday.com> since June 27, 1997.
Respondent registered the contested <cashtopayday.com> domain name on March 13, 2002 and has yet to demonstrate a purpose for the domain name or create a corresponding website.
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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established its rights in the CASH ‘TIL PAYDAY mark through registration with the USPTO and subsequent continuous use.
Respondent’s <cashtopayday> domain name is confusingly similar to Complainant’s CASH ‘TIL PAYDAY mark. The insertion of “to” instead of “til” fails to detract from the overall impression of the domain name. Furthermore, Respondent’s misspelling of Complainant’s mark involves keys that are conspicuously placed adjacent to the correct keys comprising Complainant’s mark. Respondent’s domain name reflects Internet users’ tendencies to insert a common typographical error when entering Complainant’s <cashtilpayday.com> domain name. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change the Respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders it confusingly similar to Complainant’s marks).
Additionally, Respondent’s removal of the spaces in Complainant’s mark is inconsequential when conducting a confusingly similar analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Because Respondent has not submitted a Response in this matter, the Panel may presume it has no rights or legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
It can be inferred that Respondent’s planned use of a domain name confusingly similar to Complainant’s mark will be to divert Internet users interested in Complainant’s services to Respondent’s website. Respondent has not offered any justification for its choice of the <cashtopayday.com> domain name, and none is apparent, which implies that it was registered for an opportunistic purpose. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the <cashtopayday.com> domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated).
Respondent is not commonly known as “cashtopayday” or <cashtopayday.com> pursuant to Policy ¶ 4(c)(ii). Respondent is only known to this Panel as “jimmy.” Respondent is not a licensee or authorized agent of Complainant. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Because of Complainant’s listing on the Principal Register of the USPTO, Respondent is thought to have had constructive notice as to the existence of Complainant’s CASH ‘TIL PAYDAY mark. Thus, Respondent’s registration despite notice of Complainant’s prior rights in the mark evidences bad faith registration. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
There are uncontested circumstances indicating that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration. The disputed domain name is currently for sale through its annotation on the WHOIS entry, which states, “This domain is for sale.” Respondent’s general offer to sell the domain name evidences bad faith registration and use under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
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 the requested relief should be hereby GRANTED.
Accordingly, it is Ordered that the <cashtopayday.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: June 27, 2002
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