Jaeson Birnbaum v. SDH GROUP LLC
Claim Number: FA1112001420315
Complainant is Jaeson Birnbaum (“Complainant”), represented by Natalie Levy, Pennsylvania, USA. Respondent is SDH Group LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cash4case.com> and <cashforcase.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2011; the National Arbitration Forum received payment on December 16, 2011.
On December 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cash4case.com> and <cashforcase.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2012 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@cash4case.com and postmaster@cashforcase.com. Also on January 19, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cash4case.com> and <cashforcase.com> domain names are identical to Complainant’s CASH4CASES, INC. mark.
2. Respondent does not have any rights or legitimate interests in the <cash4case.com> and <cashforcase.com> domain names.
3. Respondent registered and used the <cash4case.com> and <cashforcase.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its CASH4CASES, INC. mark in connection of its business of arranging loans for lawsuits. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CASH4CASES, INC. mark (Reg. No. 3,826,804 registered August 3, 2010).
Respondent registered the <cash4case.com> and <cashforcase.com> domain names on January 12, 2011, and February 11, 2011, respectively. The disputed domain names resolve to Respondent’s website that offers loans for lawsuits, which directly compete with Complainant’s business.
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 asserts that its owns rights in its CASH4CASES, INC. mark under Policy ¶ 4(a)(i). As support for this assertion, Complainant has provided the Panel with a copy of its USPTO trademark certificate for its CASH4CASES, INC. mark (Reg. No. 3,826,804 registered August 3, 2010). In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panels found that a trademark registration sufficiently demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i). Accordingly, the Panel holds that Complainant owns rights in its CASH4CASES, INC. mark under Policy ¶ 4(a)(i).
Complainant avers that Respondent’s <cash4case.com> and <cashforcase.com> domain names are confusingly similar to Complainant’s CASH4CASES, INC. mark under Policy ¶ 4(a)(i). Complainant contends that the <cash4case.com> domain name only differs from Complainant’s CASH4CASES, INC. mark by adding the generic top-level domain (“gTLD”) “.com” to Complainant’s mark and by removing the letter “s,” the comma, and the term “INC.” from the mark. Complainant argues that Respondent makes the same alterations to Complainant’s mark in the <cashforcase.com> domain name, but Complainant asserts that Respondent also replaces the “4” in Complainant’s mark with the generic term “for.” In Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), and Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), the panels found the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. In Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000), and Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004), the panels concluded that the removal of the letter “s” did not remove a disputed domain name from the realm of confusing similarity. In Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000), and Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000), the panels determined that the removal of punctuation, such as a comma, did not sufficiently distinguish a disputed domain name from a complainant’s mark. In Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005), and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panels held that the removal of a term of a complainant’s mark failed to adequately distinguish between the complainant’s mark and the domain name. The Panel agrees with this UDRP precedent and concludes that Respondent’s <cash4case.com> and <cashforcase.com> domain names are confusingly similar to Complainant’s CASH4CASES, INC. mark under Policy ¶ 4(a)(i).
The Panel finds Complainant satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <cash4case.com> and <cashforcase.com> domain names. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <cash4case.com> and <cashforcase.com> domain names under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <cash4case.com> and <cashforcase.com> domain names. Complainant argues that Respondent does not use the disputed domain names as business names. The Panel notes that the WHOIS information lists “SDH GROUP LLC” as the registrant of the disputed domain names. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels used the evidence and the record, specifically the WHOIS information, to determine if the respondents were commonly known by the respective disputed domain names. As Respondent did not respond to this case and did not provide any evidence that it is commonly known by the disputed domain names, the Panel uses the WHOIS information to determine that Respondent is not commonly known by the <cash4case.com> and <cashforcase.com> domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent lacks rights and legitimate interests in the <cash4case.com> and <cashforcase.com> domain names because Respondent uses the disputed domain names to resolve to Respondent’s website which offers competing loan services. Complainant does not provide the Panel with screenshots of the resolving website, but the Panel chooses to accept Complainant’s allegations because of Respondent’s failure to respond and contradict them. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panels concluded that a respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name if the respondent used the domain name to offer competing services. Consequently, the Panel finds that Respondent makes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <cash4case.com> and <cashforcase.com> domain names under Policy ¶ 4(c)(iii).
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <cash4case.com> and <cashforcase.com> domain names in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s sponsorship, affiliation, or endorsement of Respondent’s website. The Panel presumes that Respondent commercially benefits from the sale of its competing loan services at the resolving website. As the Panel previously determined that the <cash4case.com> and <cashforcase.com> domain names are confusingly similar to Complainant’s CASH4CASES, INC. mark, the Panel finds that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain names. In Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001), and Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panels determined that a respondent registered and uses a disputed domain name in bad faith if the respondent offers competing services at the resolving website. Thus, the Panel holds that Respondent registered and uses the <cash4case.com> and <cashforcase.com> domain names in bad faith under Policy ¶ 4(b)(iv).
The Panel finds Complainant 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 <cash4case.com> and <cashforcase.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 22, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page