One Hour Funding and Plaintiff Funding Holding, Inc. d/b/a Law Cash and The Allied Esquire Group d/b/a Esquire Capital v. Case Cash Now, Inc.
Claim Number: FA0805001195141
Complainant is One Hour Funding and Plaintiff Funding
Holding, Inc. d/b/a Law Cash and The Allied Esquire Group d/b/a Esquire Capital (“Complainants”), represented by Julia
S. Shields, Virginia, USA.
Respondent is Case Cash Now, Inc. (“Respondent”), represented by Jonathan
Moskin, of White & Case LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onehourfunding.com> and <1hourfunding.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.
Sandra J. Franklin as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on May 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2008.
On May 28, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <onehourfunding.com> and <1hourfunding.com> domain names are registered with Godaddy.com, Inc. and that the 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 June 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on July 1, 2008.
Complainants filed a “Supplemental Response” on July 11, 2008, which was late and therefore not considered by the Panel.
On July 16, 2008, Respondent filed a timely “Response to Complainants’ Request for an Extension of Time to file Additional Submission in Response to the Respondent’s Response to the First Amended Complaint and to Complainants’ Supplemental Response.”
Both parties filed a second Additional Submission, both of which were rejected, as the Policy and the Rules do not allow for more than one Additional Submission by each party.
On August 5, 2008, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Complainants request that the domain names be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
1. Respondent’s <onehourfunding.com> and <1hourfunding.com> domain names are confusingly similar to Complainants’ ONE HOUR FUNDING mark.
2. Respondent does not have any rights or legitimate interests in the <onehourfunding.com> and <1hourfunding.com> domain names.
3. Respondent registered and used the <onehourfunding.com> and <1hourfunding.com> domain names in bad faith.
B. Respondent makes the following assertions:
1. The phrase ONE HOUR FUNDING is descriptive.
2. Respondent offers expedited funding services under the <onehourfunding.com> and <1hourfunding.com> domain names, and Respondent is making a fair use of the phrase ONE HOUR FUNDING.
3. Respondent’s offer to sell the <onehourfunding.com> and <1hourfunding.com> domain names was not in bad faith; it was a settlement strategy.
C. Additional Submissions
1. Complainants’ Additional Submission was late and was therefore not considered.
2. Respondent’s Additional Submission was timely and was read by the Panel. However, other than objecting to Complainant’s late Additional Submission, the remainder was entitled “RESPONSE TO COMPLAINANTS’ SUPPLEMENTAL RESPONSE.” Since the Panel did not consider the Complainant’s Supplemental Response, it was not necessary to consider the arguments against it.
3. Both parties filed a second Additional Submission, both of which were rejected, as the Policy and the Rules do not allow for more than one Additional Submission by each party.
Complainants hold a U.S. Trademark Registration on the Supplemental Register for ONE HOUR FUNDING for loan financing services, registered on February 27, 2007, showing a first use date of December 1, 2004. Respondent registered the <onehourfunding.com> and <1hourfunding.com> domain names in January 2008.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
First, this Panel acknowledges that, for UDRP purposes, Complainants need not establish rights in a mark through registration; a complainant may also show common law rights through commercial use and a showing of secondary meaning. Here, Complainants hold a registration on the Supplemental Register for ONE HOUR FUNDING, issued in December, 2007, showing a first use of December 2004. The registration on the Supplemental Register is an indication that the mark ONE HOUR FUNDING has not achieved distinctiveness. Complainants’ mark is not yet deemed incontestable through five years of substantially exclusive and continuous use. Therefore, it is incumbent upon Complainants to prove common law rights, and to establish secondary meaning, by providing evidence of, for example, consumer recognition, advertising efforts, media coverage, and/or the length and exclusivity of the mark’s use.
In this case, Complainants simply stated that they spent “hundreds of thousands of dollars promoting the mark and services together for use by affiliates LawCash and Esquire Capital over the past four and a half years.” However, they did not provide any evidence to support this statement, nor did they provide any other evidence supporting secondary meaning. They merely provided a one-page screenshot from their <LawCash.net> website and a one-page screenshot from their Esquire Capital website.
Therefore, this Panel determines that Complainants’ registration on the Supplemental Register with the USPTO is insufficient to establish rights for the purposes of Policy ¶ 4(a)(i). See Chiappetta v. Morales, D2002-1103 (WIPO Jan. 20, 2003) (holding that the complainant’s registration of the DISCOUNT HYDROPONICS mark on the Supplemental Register did not confer any rights under the UDRP); see also Am.’s Cmty. Bankers Corp. v. Wing., D2000-1780 (WIPO Mar. 5, 2001) (“Relying solely upon Complainant's registrations on the Supplemental Register, the Panel must conclude that Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS are descriptive terms that have not acquired distinctiveness. Accordingly, the Panel finds that Complainant has not proven the first prong of the UDRP, which provides that the complainant must have rights in the mark upon which the complaint is based.”).
Further, Complainant has failed to establish common law rights in the ONE HOUR FUNDING mark sufficient to convey rights under the requirements of Policy ¶ 4(a)(i) based on the evidence presented to the Panel. See Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).
Since Complainants have not satisfied the very first element, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist
Dated: August 19, 2008
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