Moneytree, Inc. v. TSV Group Inc
Claim Number: FA0909001283829
Complainant is Moneytree, Inc. (“Complainant”), represented by Kathleen
T. Petrich, of Graham & Dunn PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moneytreeus.com>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 14, 2009.
On September 11, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <moneytreeus.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 September 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 5, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a leader in the financial services industry.
Complainant owns a number of mark registrations with the United States Patent and Trademark Office (“USPTO”) for the MONEY TREE family of marks (e.g., service mark Reg. 2,166,890, issued June 23, 1998).
Respondent registered the <moneytreeus.com> domain name on February 13, 2007.
The disputed domain name resolves to a commercial website offering financial services in competition with the business of Complainant.
Respondent’s <moneytreeus.com> domain name is confusingly similar to Complainant’s MONEY TREE service mark.
Respondent does not have any rights to or legitimate interests in the <moneytreeus.com> domain name.
Respondent registered and uses the <moneytreeus.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has obtained service mark registration for the
MONEY TREE mark. Complainant has thus established rights in the MONEY TREE mark
for purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Complainant argues that Respondent’s <moneytreeus.com> domain name is confusingly similar to Complainant’s MONEY TREE service mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name contains Complainant’s mark in its entirety, and merely adds the geographic abbreviation “us,” and the generic top-leve domain (“gTLD”) “.com.” A domain name that adds the geographic abbreviation “us” to a registered mark creates a confusing similarity between the disputed domain name and the registered mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004):
…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.
Likewise, the addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) confusing similarity analysis. 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.
Therefore, the Panel finds that Respondent’s <moneytreeus.com> domain name is confusingly similar to Complainant’s MONEY TREE mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <moneytreeus.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant has established a prima facie case in support of its contentions, while Respondent, for its part, has failed to submit a response to these proceedings. We are therefore free to presume that Respondent has no rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. We will nonetheless examine the record before us to determine if there is in it any basis for concluding that Respondent has such rights or interests.
We begin by noting that the pertinent WHOIS registration evidences that Respondent is not commonly known by the <moneytreeus.com> domain name, in that the registrant of the disputed domain name is listed as “TSV Group Inc.” There being no other evidence in the record to the contrary, we may safely conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We also observe that there is no dispute as to the allegation of the Complaint to the effect that Respondent’s domain name resolves to a commercial website offering financial services in competition with the business of Complainant. Respondent’s use of the disputed domain name as alleged is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003): “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.” See also DLJ Long Term Inv. Corp. v. BargainDomain
Names.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002): “Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the <moneytreeus.com> domain name to operate a website in competition with the business of Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use of the disputed domain pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that a respondent’s registration of a domain name substantially similar to a complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that that respondent registered and used the domain name to disrupt that complainant’s business under Policy ¶ 4(b)(iii)); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from a complainant to a competitor’s website within the meaning of Policy ¶ 4(b)(iii)).
Respondent’s use of the contested <moneytreeus.com> domain name with the apparent intent to attract Internet users to its website, in the process creating a strong likelihood of confusion with Complainant’s MONEY TREE mark, and in order to offer financial services in competition with the business of Complainant is further evidence of bad faith registration and use of the domain. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith use and registration of contested domain names by using them to redirect users to a website that offered services similar to those offered by a complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where a respondent registered the domain name <bigtex.net> to infringe on a complainant’s goodwill and attract Internet users to that respondent’s website).
For these reasons, the Panel finds that ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <moneytreeus.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 23, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum