QC Holdings, Inc. v. NetIncome Ventures Inc
Claim Number: FA1208001459705
Complainant is QC Holdings, Inc. (“Complainant”), represented by Bradley P. Hartman of Hartman Titus PLC, Arizona, USA. Respondent is NetIncome Ventures Inc (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quikcash.com>, registered with Tucows, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Jeffrey M. Samuels, Hon. Bruce E. Meyerson (Ret.), and Sir Ian Barker, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2012; the National Arbitration Forum received payment on August 24, 2012.
On August 27, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <quikcash.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 August 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@quikcash.com. Also on August 27, 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.
A timely Response was received and determined to be complete on September 17, 2012.
Complainant’s Additional Submission was received on September 24, 2012 and deemed compliant with Supplemental Rule 7.
Respondent’s Additional Submission was received on October 1, 2010 and deemed compliant with Supplemental Rule 7.
On September 27, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, Hon. Bruce E. Meyerson (Ret.), and Sir Ian Barker as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant QC Holdings has been providing financial and loan services under the QUIK CASH and NATIONAL QUIK CASH trademarks since at least as early as February 9, 2002. Complainant’s services under the marks include payday loans, automobile title loans, check cashing, and related financial services.
Complainant owns U.S. Trademark Registration No. 3,885,872 for the mark QUIK CASH (the term CASH disclaimed) and DESIGN (consisting of a dollar sign within a shaded diamond shape within another un-shaded diamond shape) and U.S. Trademark Registration No. 3,885,874 for the mark NATIONAL QUIK CASH (the terms NATIONAL and CASH disclaimed) and DESIGN (consisting of a dollar sign within a shaded diamond shape within another un-shaded diamond shape). Both registrations indicate that the date of first use of the marks is February 9, 2002. See Complaint, Exhibit 2.
Complainant contends that the disputed domain name, <quikcash.com>, is confusingly similar to its QUIK CASH and NATIONAL QUIK CASH marks insofar as the domain name comprises in its entirety the QUIK CASH mark and comprises the primary component of the NATIONAL QUIK CASH mark.
Complainant asserts that Respondent is using the disputed domain name in bad faith by offering the domain name for sale and by using the domain name as a referral site to companies offering financial services identical, related or competitive to Complainant’s financial services. See Complaint, Exhibit 5. Complainant indicates that Respondent is linking and redirecting web traffic to sites owned by a number of companies, including Cash Time Loan Centers, My Finances, 90 Day Advances, and Auto Title Factory. See Complaint, Exhibit 6.
Complainant further alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of any goods or services. “Instead, it appears that Respondent uses the Domain Name to draw traffic to a Web site that provides links to various merchants (that pay a link fee to Respondent) that offer services related or competitive to Complainant’s services identified by its federal trademark registrations.”
Moreover, to the best of Complainant’s knowledge, Respondent is not commonly known by the domain name. Complainant also argues that Respondent is making no legitimate noncommercial or fair use of the disputed domain name and “is using the Complainant’s unique business name and registered trademarks without permission, authorization or license.” According to Complainant, “[Respondent’s] intent is clearly for commercial gain by both offering the Domain Name for sale and diverting consumers to competitor websites for a fee.”
Complainant points out that, on August 21, 2012, it submitted an online inquiry form to Respondent informing Respondent of Complainant’s trademark rights and requesting Respondent to voluntarily transfer the domain name to Complainant. Respondent indicated that Complainant would be contacted by Respondent with a request that Complainant submit an “unsolicited offer” for the domain name. See Complaint, Exhibit 7.
According to Complainant, the domain name should be considered as having been registered and being used in bad faith because it incorporates the QUIK CASH marks in their entirety; the domain name is identical to the registered mark used by Complainant for financial services; the domain name is being offered for sale; and the domain name is being used as a paid link/referral site to Complainant’s competitors.
Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, or those of others, by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s web site; that Respondent is using the domain name primarily for the purpose of generating revenue through link fees and diverting Complainant’s customers to other businesses; that Respondent’s registration of the domain name in dispute deprives Complainant of the ability to use the domain name for its own services and offerings; that the websites to which the domain name redirects internet traffic promote and offer services that compete with those offered by Complainant; and that Respondent is disturbing the business of Complainant by attracting to its own website customers of Complainant looking for Complainant or its services.
Respondent
Respondent Netincome Ventures Inc. points out that it acquired the disputed domain name in February 2000, two years before the date of first use asserted by Complainant with respect to its trademark registrations. According to Respondent, “[t]he singular fact of the Respondent’s seniority and priority in relation to the Complainant is sufficient for the Panel to dispense with the first two elements [of the Policy] and decide the matter on the third criterion of `bad faith registration and use’.”
Respondent contends that the textual portion of Complainant’s registered marks “is a minor part of their overall commercial impression as a whole” and that after the graphic components of the marks are peeled away all that is left are the words “Quik,” which is the phonetic equivalent of “Quick,” and the commonly understood term “Cash.”
Respondent indicates that “there is no question” that it has been using the disputed domain name in connection with pay-per-click advertising of financial services since 2000, which long predates the date of first use of Complainant’s marks. Respondent further points out that it owns the domain name quickcash.com and that Complainant has not challenged such registration and use.
With respect to the issue of “bad faith” registration use, Respondent contends that “it is . . . chronologically impossible for Respondent to have registered the domain name in bad faith.” Respondent cites to a number of previous ICANN panel decisions to the effect that “the existence of a mark against which to cybersquat at the time the domain name was registered is a basic requirement of a finding of bad faith registration and use.”[1]
C. Additional Submissions
In its “Additional Submission,” Complainant asserts that the fact it only registered a stylized version of the QUIK CASH mark does not mean it does not have enforceable rights in a non-stylized version of the QUIK CASH mark. Complainant contends that its QUIK CASH mark is not, as alleged by Respondent, generic or descriptive and that, even if its mark is descriptive, it has acquired secondary meaning as a result of over ten years of continuous and substantially exclusive use.
Complainant further contends that the use of the disputed domain name to redirect users to the sites of Complainant’s competitors is not a use in connection with a bona fide offering of goods or services under the Policy and is “compelling evidence” of Respondent’s bad faith use of the domain name.
Addressing the issue of whether the registration (as opposed to the use) of the domain name was in bad faith, Complainant traces the history of use of the subject domain name and contends that such history establishes that “[t]o the extent Respondent initially registered the domain name and parked it in 2000 without any bad faith intent, Respondent’s intent changed in 2004 [when] Respondent decided to transition the domain name from use as a Canadian drug company referral site to a pay-per-click referral site featuring payday and title lending companies competitive with Complainant. This is precisely the type of bad-faith domain name use the UDRP is intended to remedy.” Complainant refers to the decision of the ICANN panel in Octogen Pharmacal Co., Inc. v. Domains By Proxy, Inc., D2009-0786 (WIPO Aug. 19, 2009), where it was held that “[u]nder paragraph 4(b)(iv) of the Policy a respondent that uses the domain name to attract Internet users to its website or online location by creating a likelihood of confusion with the complainant’s mark and its sponsorship of the website is acting in bad faith, without reference to the respondent’s state of mind at the time that the registrant registered the domain name.”
In its Additional Submission, Respondent asserts that Complainant’s reliance on the “Octogen” doctrine is misplaced. Respondent indicates that Complainant’s “Octogen” argument is based upon the allegation that the Respondent’s use of the domain name changed in 2004. However, Respondent points out, Complainant’s trademark applications were not filed until April 15, 2010, the registrations did not issue until December 10, 2010[2], and Complainant has produced no evidence of common law rights that predate either the filing or issuance dates. More fundamentally, Respondent maintains that Octogen and its progeny “remain a distinct minority doctrine.”
The Panel finds that the disputed domain name was not registered 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."
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 the Panel’s determination on the issue of bad faith registration, it finds no need to address this element of the policy.
In view of the Panel’s determination on the issue of bad faith registration, it finds no need to address this element of the policy.
The Panel concludes that the disputed domain name was not registered in bad faith. The uncontroverted evidence indicates that the domain name was registered two years prior to the earliest date of first use of Complainant’s trademarks. In the view of the Panel, this fact compels a determination that the domain name in issue was not registered in bad faith.
As contended by Respondent, Octogen and its progeny represent a minority view.[3] See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining that respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark.) As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶3.1, the consensus view of such panels is that while a trademark can form a basis for a UDRP action under the first element irrespective of its date, “when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.” While the WIPO Overview notes that the consensus view may not be applicable where the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, there is no evidence that such is the case here.
Inasmuch as the Panel interprets the applicable Policy to require evidence of both bad faith registration and[4] use, it concludes that Complainant has not established this element of the Policy.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <quikcash.com> domain REMAIN WITH RESPONDENT.
Jeffrey M. Samuels, Hon. Bruce E. Meyerson (Ret.), and Sir Ian Barker, Panelists
Dated: October 4, 2012
[1] See, e.g., Success Bank v. ZootGraphics, FA 1259918 (Nat. Arb. Forum June 29, 2009).
[2] The registration certificates indicate that they were issued on December 7, 2010.
[3] See Editions Milan v. Secureplus, Inc., D2010-0606 (WIPO June 10, 2010) (“Furthermore, this Panel does not accept the Octogen line of cases which it sees as misinterpreting the Policy wording.”); Mile, Inc. v. Burg, D2010-2011 (WIPO Feb. 7, 2011) (finding that a number of decisions have expressly considered and rejected the Mummygold/Octogen reasoning).
[4] The Panel notes that the Anticybersquatting Consumer Protection Act, which is codified in Section 43(d) of the Lanham Act, 15 U.S.C. 1125(d), provides for a cause of action where “one has a bad faith intent to profit from a mark and registers, traffics in, or uses a domain name. . . .” Such disjunctive language, however, is not found in the UDRP.
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