Ace Cash Express, Inc. v. Douglas Petrie
Claim Number: FA0801001139098
Complainant is Ace Cash Express, Inc. (“Complainant”), represented by Kay
Lyn Schwartz, of Gardere Wynne
Sewell, LLP,
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <aceamericacashadvance.com>, <acecashadvances.com> and <aceypaydayadvance.com>, registered with Godaddy.com, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 22, 2008.
On January 21, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aceamericacashadvance.com>, <acecashadvances.com> and <aceypaydayadvance.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 January 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2008 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@aceamericacashadvance.com, postmaster@acecashadvances.com and postmaster@aceypaydayadvance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aceamericacashadvance.com>, <acecashadvances.com> and <aceypaydayadvance.com> domain names are confusingly similar to Complainant’s ACE CASH ADVANCE mark.
2. Respondent does not have any rights or legitimate interests in the <aceamericacashadvance.com>, <acecashadvances.com> and <aceypaydayadvance.com> domain names.
3. Respondent registered and used the <aceamericacashadvance.com>, <acecashadvances.com> and <aceypaydayadvance.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ace Cash Express, Inc., is the owner of check cashing stores and a leading retailer of financial services including: check cashing, short-term consumer loans, bill payment services and prepaid debit card services. Complainant registered its ACE CASH ADVANCE mark with the United States Patent and Trademark Office (“USPTO”) on March 1, 2005 (Reg. No. 2,929,489).
Respondent registered the <aceamericacashadvance.com>, <acecashadvances.com> and <aceypaydayadvance.com> domain names on August 26, 2005, August 26, 2005 and August 16, 2005, respectively. Respondent is using the disputed domain names to operate websites which reference Complainant’s business and offer links to applications for “payday” or “cash advance” loan services offered by Complainant’s competitor.
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 registered its ACE CASH ADVANCE mark with the USPTO on March 1, 2005. The Panel finds this registration is sufficient to establish Complainant’s rights in its ACE CASH ADVANCE mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office. This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel finds Respondent’s <aceamericacashadvance.com>, <acecashadvances.com> and <aceypaydayadvance.com> domain names are confusingly similar to Complainant’s ACE CASH ADVANCE mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <aceamericacashadvance.com> domain name is confusingly similar to Complainant’s
ACE CASH ADVANCE mark pursuant to Policy ¶ 4(a)(i) because it fully
incorporates Complainant’s mark with the addition of the geographical term “
Respondent’s <acecashadvances.com> domain name is confusingly similar to Complainant’s ACE CASH ADVANCE mark for the purposes Policy ¶ 4(a)(i) because it merely adds the letter “s” to Complainant’s mark. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).
Respondent’s <aceypaydayadvance.com> domain name is also confusingly similar to Complainant’s ACE CASH ADVANCE mark under Policy ¶ 4(a)(i) because it merely adds the letter “y” and substitutes the descriptive term “payday” for the term “cash.” See 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 the domain name confusingly similar to the complainant’s marks); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).
In addition, all of the disputed domain names contain the generic top-level domain (“gTLD”) “.com,” which is considered irrelevant for the purposes of determining whether a disputed domain name is confusingly similar to Complainant’s mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant presents a prima facie case in support of these assertions, the burden shifts to Respondent to establish that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case to support its assertions and Respondent has failed to submit a response to the case. Therefore, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. The Panel, however, will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s disputed domain names resolve to websites which
contain Complainant’s mark and offer Internet users an opportunity to apply for
loan services that directly compete with Complainant’s loan services. The Panel finds this diversionary practice is
not a use in connection with a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(finding that the respondent’s use of the disputed domain name to redirect Internet
users to a financial services website, which competed with the complainant, was
not a bona fide offering of goods or
services); see also Coryn Group, Inc.
v. Media Insight, FA 198959 (Nat. Arb.
Forum Dec. 5, 2003) (finding that the respondent was not using the domain names
for a bona fide offering of goods or
services nor a legitimate noncommercial or fair use because the respondent used
the names to divert Internet users to a website that offered services that
competed with those offered by the complainant under its marks).
Additionally, there is nothing in the WHOIS information or record that indicates Respondent is commonly known by the disputed domain names. The WHOIS information reflects that Respondent is known as “Douglas Petrie.” Complainant has not authorized Respondent to use its ACE CASH ADVANCE mark in any fashion. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names resolve to websites which display Complainant’s mark and offers loan services that directly compete with Complainant’s business. The Panel finds that this use constitutes disruption and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Also, Respondent is using the confusingly similar domain
names to provide links to loan applications, which directly compete with
Complainant, from which Respondent presumably receives a click-through
fee. The Panel finds this is an attempt
by Respondent to profit from the goodwill associated with Complainant’s ACE
CASH ADVANCE mark and constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith 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 finds 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 <aceamericacashadvance.com>, <acecashadvances.com> and <aceypaydayadvance.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 28, 2008
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