Dollar
Financial Group, Inc. v. Ming Hing Kwok
Claim
Number: FA0302000146225
Complainant is
Dollar Financial Group, Inc., Berwyn, PA (“Complainant”) represented
by Hilary B. Miller. Respondent is Ming Hing Kwok, San Jose, CA
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <loanmarts.com>, registered with Network
Solutions, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 19, 2003; the Forum received a hard copy of the
Complaint on February 20, 2003.
On
February 24, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <loanmarts.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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
February 24, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 17, 2003 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 postmaster@loanmarts.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 25, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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:
1. Respondent’s <loanmarts.com>
domain name is confusingly similar to Complainant’s LOAN MART mark.
2. Respondent does not have any rights or
legitimate interests in the <loanmarts.com> domain name.
3. Respondent registered and used the <loanmarts.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Dollar Financial Group, Inc., is a New York corporation that offers small
consumer loans. Complainant originates
these loans either through its stores, on-line or through its toll free
telephone number, all of which reflect Complainant’s service mark.
Complainant
has been using the LOAN MART mark in interstate commerce continuously since
1997. Complainant filed its
registration application on an intent-to-use basis on August 18, 1997, for
consumer lending services, and was granted its registration on September 29,
1998 (U.S. Reg. No. 2,192,247).
Complainant
has spent millions of dollars in advertising its consumer financial services
and has, to date, originated over $400 million in consumer loans.
Respondent, Ming
Hing Kwok, registered the <loanmarts.com> domain name on December
16, 2002, and is not licensed or authorized to use Complainant’s LOAN MART mark
for any purpose. Respondent is in the
business of arranging third-party credit for consumer borrowers over the
Internet. Respondent has titled its
primary webpage “LoanMarts,” with the word “LoanMart” displayed in a black font
while the plural “s” is displayed in a red font.
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.
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 has
established rights in the LOAN MART mark through registration with the U.S.
Patent and Trademark Office, as well as through continuous use of the mark in
commerce.
Respondent’s <loanmarts.com> domain
name is confusingly similar to Complainant’s LOAN MART mark. Other
than the addition of the plural “s” to Complainant’s mark, the domain name is
identical to Complainant’s mark.
Pluralizing Complainant’s mark is insignificant for the purposes of
Policy ¶ 4(a)(i). See Nat’l
Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11,
2001) (finding that the domain name <nationalgeographics.com> was
confusingly similar to Complainant’s “National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235
(Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the
end of Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of
confusion caused by the use of the remaining identical mark. The domain name
<creampies.com> is similar in sound, appearance, and connotation”).
Accordingly, the
Panel finds that the <loanmarts.com> domain name is confusingly similar to Complainant’s LOAN MART mark under
Policy ¶ 4(a)(i).
Complainant
carries the initial burden of demonstrating that Respondent has no rights or
legitimate interests in the <loanmarts.com> domain name.
Complainant can satisfy this burden with a showing that Respondent is
not capable of relying upon any of the three enumerated safe harbors for domain
name Registrants in Policy ¶ 4(c)(i)-(iii). See Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has
no rights or legitimate interests with respect to the domain name it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”).
Respondent is using the disputed domain name to operate an Internet
loan business that directly competes with Complainant’s services. Respondent’s appropriation of Complainant’s
LOAN MART mark in order to compete with Complainant is not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), nor can it be a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See
Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods); see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t
would be unconscionable to find a bona fide offering of services in a respondent’s
operation of [a] web-site using a domain name which is confusingly similar to
the Complainant’s mark and for the same business”).
Respondent’s WHOIS contact information lists its name as “Ming Hing
Kwok,” not LOANMARTS or <loanmarts.com>.
After an extensive business name and trademark search performed by
Complainant, no evidence was uncovered supporting the proposition that
Respondent is “commonly known by” the name LOANMARTS or <loanmarts.com> pursuant to Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<loanmarts.com> domain
name under Policy ¶ 4(a)(ii).
Respondent’s <loanmarts.com> domain
name differs from Complainant’s LOAN MART mark only in its pluralization of
that mark. Moreover, upon reaching
Respondent’s website, its “LoanMarts” logo (with the words LOAN MART in black,
followed by a red “s”) makes it apparent that Respondent is attempting to
commercially capitalize off of the goodwill surrounding Complainant’s LOAN MART
mark. This is evidence of bad faith use
and registration pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug.
29, 2000) (finding bad faith where the domain name in question is obviously connected
with Complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Kmart v. Kahn, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
The Panel thus
finds that Respondent registered and used the <loanmarts.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <loanmarts.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 31, 2003
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