MEM Consumer Finance Limited v. Stuart Weston / Van Finance
Claim Number: FA1204001439289
Complainant is MEM Consumer Finance Limited (“Complainant”), represented by Hilary B. Miller, Connecticut, USA. Respondent is Stuart Weston / Van Finance (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <payday-uk.co>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2012; the National Arbitration Forum received payment on April 13, 2012.
On April 13, 2012, GoDaddy.com, LLC. confirmed by e-mail to the National Arbitration Forum that the <payday-uk.co> domain name is registered with GoDaddy.com, LLC. and that Respondent is the current registrant of the name. GoDaddy.com, LLC. has verified that Respondent is bound by the GoDaddy.com, LLC. 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 April 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@payday-uk.co. Also on April 16, 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 May 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is the owner of a trademark registration with the United Kingdom Intellectual Property Office (“UKIPO”) for its PAYDAYUK mark (Reg. No. 2,423,523 registered May 30, 2008).
Respondent’s <payday-uk.co> domain name is confusingly similar to Complainant’s PAYDAYUK mark, differing only by the addition of the hyphen.
Respondent only recently registered the <payday-uk.co> domain name and does not own any trademarks that reflect the disputed domain name.
Respondent’s website resolving from the disputed domain name is nearly identical to Complainant’s website, which Respondent uses to sell competing consumer services.
Respondent uses the disputed domain name to phish for personal and financial information.
Respondent’s registration and use of the <payday-uk.co> domain name disrupts Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
At all times relevant to this proceeding Complainant had trademark rights in the trademark PAYDAY UK®. Respondent’s at-issue domain name is confusingly similar to Complainant’s trademark.
Respondent registered the at-issue domain name on January 17, 2012.
Respondent has not trademark rights in the at-issue domain name and has, no authority to use Complainant’s trademark in any manner whatsoever.
The website referenced by the at-issue domain name resolves to an unauthorized website which is confusingly similar to the look and feel of Complainant’s website. Respondent uses the domain name to trade on Complainant’s PAYDAY UK mark.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows evidence that is has registered PAYDAY UK with the UKIPO (Reg. No. 2,423, 523). A registration with UKIPO is sufficient to prove that Complainant owns rights in a mark for the purposes of Policy ¶4(a)(i). See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also DatingDirect.com Limited v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (finding that the panel recognizes the distinctive nature of the complainant’s DATINGDIRECT.COM mark through registration with the United Kingdom Patent Office).
Respondent’s <payday-uk.co> domain name is confusingly similar to Complainant’s PAYDAYUK mark. The only difference between the mark and the at-issue domain name is the addition of the hyphen between “PAYDAY” and “UK”. The addition of a hyphen does not distinguish the domain name from Complainant’s mark since the domain name and Complainant’s mark are identical in sound and near identical in appearance. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The fact that the at-issue domain name also contains the country-code top-level domain (“ccTLD”) “.co,” is also irrelevant for the purposes of Policy ¶ 4(a)(i) since all domain names require a top-level domain. 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 concludes that Respondent’s <payday-uk.co> domain name is confusingly similar to Complainant’s PAYDAYUK mark under Policy ¶ 4(a)(i).
Respondent lacks rights or interests in respect of the <payday-uk.co> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since there was no response to the Complaint, Complainant’s prima facie case will be conclusive.
Respondent does not own a trademark reflecting the disputed domain name. Further, Respondent has no rights or legitimate interests in the disputed domain name because Respondent only recently registered the <payday-uk.co> domain name and did not use the domain name for any business purpose prior to the domain’s registration. The record shows that WHOIS information identifies “Stuart Weston / Van Finance” as the registrant of the disputed domain name. Therefore, the registrant name does not reflect the <payday-uk.co> domain name. It is thus clear that Respondent is not commonly known by a the at-issue domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s <payday-uk.co> domain name references a website that is nearly identical to Complainant’s website. There, Respondent sells competing consumer services. Importantly, it is more likely than not that Respondent uses the disputed domain name to phish for the personal and financial information of website visitors. Respondent’s competing use and phishing scheme are each evidence that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <payday-uk.co> domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent registered and uses the at-issue domain name in bad faith.
Respondent is using the disputed domain name in a manner that likely confuses Internet users into believing Respondent’s website is affiliated with Complainant. The <payday-uk.co> domain name is used to sell consumer credit in direct competition with Complainant’s like services. Offering competing services at a website resolving from a confusingly similar domain name is disruptive to Complainant’s business and therefore is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Moreover, Respondent’s intention is to create confusion as to Complainant’s affiliation with the <payday-uk.co> domain name in order to convince Internet users to purchase services and/or to give up private financial data to Respondent. As mentioned elsewhere, the <payday-uk.co> domain name resolves to a website that is nearly identical to Complainant’s official website. The website thereby exacerbates the confusion already instilled by Respondent’s use of a domain name that is near identical to Complainant’s registered trademark. It is clear from the foregoing that Respondent has registered and is using the at-issue domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
As also as mentioned above, Respondent “phishes” for the personal and financial information of visitors to its website. Respondent’s foul scheme indicates bad faith registration and use. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Therefore, the Panel finds that Respondent registered and uses the <payday-uk.co> domain name in bad faith under 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 <payday-uk.co> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 11, 2012
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