Dollar Financial Group, Inc. v. jimmy
Claim Number: FA0205000113310
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@cashtopayday.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
FINDINGS
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.
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 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.
DECISION
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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