Cottonwood Financial Ltd. v. Dean Stephen
Claim Number: FA0901001243764
Complainant is Cottonwood Financial Ltd. (“Complainant”), represented by Duffy Dillon, of Brennan, Steil & Basting, S.C., Wisconsin, USA. Respondent is Dean Stephen (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nofaxcashstore.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 Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 23, 2009.
On January 21, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nofaxcashstore.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 17, 2009 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@nofaxcashstore.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 20, 2009, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nofaxcashstore.com> domain name is confusingly similar to Complainant’s CASH STORE mark.
2. Respondent does not have any rights or legitimate interests in the <nofaxcashstore.com> domain name.
3. Respondent registered and used the <nofaxcashstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cottonwood Financial Ltd., holds a registration of the CASH STORE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,969,462 issued July 19, 2005) in connection with its short-term loan business.
Respondent registered the <nofaxcashstore.com> domain name on May 30, 2008. The disputed domain name resolves to a website that displays articles about short-term loans and advertisements for Complainant’s direct competitors.
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.
The Panel finds that Complainant, by registering its CASH STORE mark with the USPTO, has established rights in the CASH STORE mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
The <nofaxcashstore.com> domain name consists of Complainant’s CASH STORE mark preceded by the generic terms “no” and “fax” and appended by the generic top-level domain (gTLD) “.com.” The additions of a generic term and a gTLD are insufficient to overcome the confusing similarity that results from using Complainant’s mark. Therefore, the Panel finds that the <nofaxcashstore.com> domain name is confusingly similar to Complainant’s CASH STORE mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
name. If the Panel finds that
Complainant’s allegations establish such a prima facie case, the burden
shifts to Respondent to show that it does indeed have rights or legitimate
interests in the disputed domain name pursuant to the guidelines in Policy ¶
4(c). The Panel finds that
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate
interests in the <nofaxcashstore.com> domain name pursuant to
Policy ¶ 4(a)(ii). Since no response was submitted in this
case, the Panel may presume that Respondent has no rights or legitimate interests
in the disputed domain name. However,
the Panel will still examine the record in consideration of the factors listed
in Policy ¶ 4(c). See Domtar, Inc. v.
Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also 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).”).
Under Policy ¶ 4(c)(ii), if Respondent demonstrates it is commonly known by the disputed domain name, then it will have demonstrated rights or legitimate interests in said name. The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <nofaxcashstore.com> domain name. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the CASH STORE mark, and the WHOIS information identifies Respondent as “Dean Stephen.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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.”).
Respondent may also prove it has rights or legitimate
interests in the disputed domain name by showing it is being used in connection
with a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). The disputed domain
name is being used to advertise for short-term loan providers in direct
competition with Complainant, and to post news stories about the short-term
loan industry. Using a domain name that
is confusingly similar to Complainant’s mark to direct Internet users to a
website containing links to competitors is neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use. Therefore,
the Panel finds Respondent does not have any rights or legitimate interests in
the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). 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 Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum
July 29, 2005) (holding that the respondent’s use of disputed domain names to
market competing limousine services was not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating
the complainant’s CAREY mark in order to profit from the mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <nofaxcashstore.com>
domain name to resolve to a website containing news articles and advertisements
for the short-term loan industry. Some
of the advertisements are for Complainant’s direct competitors. The Panel finds Respondent is using the <nofaxcashstore.com>
domain name to divert Internet users to Complainant’s competitors. This is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See 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)); see also 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).
The website that resolves from the <nofaxcashstore.com>
domain name displays advertisements to sites that are related to and in direct
competition with Complainant’s business.
The Panel infers that Respondent receives either pay-per-click fees or
advertising fees for these advertisements.
Since the disputed domain name is confusingly similar to Complainant’s
mark, Internet users are likely to become confused as to Complainant’s
affiliation or sponsorship of the disputed domain name and resolving
website. Respondent is seeking to profit
from this confusion by hosting advertisements on the resolving website. The Panel finds this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see
also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28,
2003) (finding that the respondent’s registration of an infringing domain name
to redirect Internet users to banner advertisements constituted bad faith use
of the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nofaxcashstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 4, 2009
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