Ace Cash Express, Inc. v. Cyberwire, LLC.
Claim Number: FA1105001387559
Complainant is Ace Cash Express, Inc. (“Complainant”), represented by Kay Lyn Schwartz of Gardere Wynne Sewell LLP, Texas, USA. Respondent is Cyberwire, LLC. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acecheckcashexpress.net>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2011; the National Arbitration Forum received payment on May 6, 2011.
On May 9, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <acecheckcashexpress.net> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@acecheckcashexpress.net. Also on May 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 operates a business which provides a variety of financial services, including consumer loans, to Internet users under the ACE CASH EXPRESS service mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,051,382, issued January 24, 2006).
Respondent registered the disputed <acecheckcashexpress.net> domain name on July 7, 2008.
The disputed domain name presently resolves to a website that is inactive.
The website formerly resolved to a website that directed Internet users to a business competitor of Complainant.
Respondent’s <acecheckcashexpress.net> domain name is confusingly similar to Complainant’s ACE CASH EXPRESS mark.
Respondent is not commonly known by the disputed domain name.
Complainant has never authorized Respondent to use the ACE CASH EXPRESS service mark.
Respondent does not have any rights to or legitimate interests in the domain name <acecheckcashexpress.net>.
Respondent registered and uses the <acecheckcashexpress.net> 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 a 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 rights in the ACE CASH EXPRESS service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
See also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its federal trademark registration).
Respondent’s <acecheckcashexpress.net> domain name is confusingly similar to the ACE CASH EXPRESS service mark. In forming the contested domain name, Respondent has removed the spaces between the terms of Complainant’s mark and inserted the descriptive term “check.” Respondent has also added the generic top-level domain (“gTLD”) “.net.” These alterations of the mark to form the domain name are insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (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”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); further see Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005):
[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the burden of making a prima facie showing in support of its allegation that Respondent lacks rights to or legitimate interests in the disputed domain name. The burden thereupon shifts to Respondent to prove that it has such rights or interests. 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.
Complainant has met its burden under this head of the Policy. Therefore, and because has Respondent failed to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the contested domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first observe that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Complainant has never authorized Respondent to use the ACE CASH EXPRESS service mark. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Cyberwire, LLC, “ which does not resemble the <acecheckcashexpress.net> domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERS-ONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had failed to show that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
We also note that Complainant alleges, without objection from Respondent, that the disputed domain name formerly resolved to a website that redirected Internet users to the website of a commercial competitor of Complainant through carried hyperlinks. Using a domain name which is confusingly similar to the mark of another to redirect Internet users to a competitor’s website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s mark to send Internet users to a website which displayed a series of links, some of which linked to the websites of that complainant’s business competitors, was not a bona fide offering of goods or services); see also 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).
Complainant further alleges, again without objection from Respondent, that the disputed domain name presently resolves to a website that is inactive. Such inactivity is further proof of Respondent’s lack of rights to or legitimate interests in the disputed domain name in that it is inactive is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that a respondent’s failure to use a disputed domain name did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
The disputed domain name, which is confusingly similar to Complainant’s ACE CASH EXPRESS service mark, formerly resolved to a website containing hyperlinks to the website of a competitor of Complainant in the loan services business. This behavior on the part of Respondent is disruptive to Complainant’s business and evidences Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant’s … institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that, where a respondent’s website featured hyperlinks to websites competing with the business of a complainant, that respondent’s use of the <redeemaamiles.com> domain name constituted disruption of that complainant’s business, and, therefore, evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)).
Because Respondent previously used the disputed domain name to resolve to a website that redirected Internet users to the website of a commercial competitor of Complainant, and because, and because Respondent’s domain name is confusingly similar to Complainant’s ACE CASH EXPRESS service mark, Internet users looking for Complainant’s website were likely confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the hyperlinks posted on the resolving website. In the circumstances here presented, we may comfortably presume that this was done for Respondent’s financial gain, whether in the form of the receipt of click-through fees or otherwise. This behavior on the part of Respondent is evidence that Respondent engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iv) by, among other things, using them to operate a commercial search engine with links to the websites of a complainant’s commercial competitors); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Respondent’s present, inactive use of the disputed domain name is also evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that non-use of a disputed domain name may constitute evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that holding a contested domain name without active use can constitute use in bad faith).
For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) have been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <acecheckcashexpress.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 14, 2011
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