Ace Cash Express, Inc. v.
Claim Number: FA0710001094542
Complainant is Ace Cash Express, Inc. (“Complainant”), represented by Kay
Lyn Schwartz, of Gardere Wynne Sewell, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <acecheckcashing.net>, registered with Belgiumdomains, LLC.
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 electronically on October 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 18, 2007.
On October 17, 2007, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <acecheckcashing.net> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 October 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 8, 2006 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@acecheckcashing.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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." 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:
1. Respondent’s <acecheckcashing.net> domain name is confusingly similar to Complainant’s ACE mark.
2. Respondent does not have any rights or legitimate interests in the <acecheckcashing.net> domain name.
3. Respondent registered and used the <acecheckcashing.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ace Cash Express, Inc. is a leading retailer of financial services, including check cashing,
short-term consumer loans, bill payment and prepaid debit card services, and
the largest owner, operator and franchisor of check cashing stores in the
Respondent registered the <acecheckcashing.net> domain name on April 8, 2007. Respondent’s disputed domain name currently resolves to a website containing various sponsored links to sites, including several of Complainant’s competitors.
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 has established rights in the ACE mark. Complainant owns a trademark registration
with the USPTO. The Panel finds that
where Complainant has submitted evidence of a valid trademark registration,
Policy ¶ 4(a)(i) has been satisfied. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum
Respondent’s <acecheckcashing.net> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name contains Complainant’s entire ACE mark and adds the generic terms “check” and “cashing”, both of which describe services offered under Complainant’s mark, along with the generic top-level domain (“gTLD”) “.net.” The Panel finds that Respondent’s additions to an otherwise unchanged mark fails to distinguish Respondent’s domain name from Complainant’s mark in any meaningful way for purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
contends that Respondent lacks rights to or legitimate interests in the <acecheckcashing.net> domain
name. Where Complainant makes a prima facie case under Policy ¶
4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that
it does possess rights to or legitimate interests in the disputed domain
name. The Panel finds that Complainant has established a prima facie case. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent has failed to submit a response to the
Complaint. Nonetheless, the Panel will
examine the record to determine if Respondent has rights or legitimate
interests in the <acecheckcashing.net>
domain name pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond
means that Respondent has not presented any circumstances that would promote
its rights or legitimate interests in the subject domain name under Policy ¶
4(a)(ii).”); see also Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the absence
of a Response, the Panel accepts as true all reasonable allegations . . .
unless clearly contradicted by the evidence.”).
The disputed domain name, <acecheckcashing.net>,
currently resolves to a website that contains various sponsored links to sites,
including several of Complainant’s competitors.
The Panel finds this to be neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s
entire mark in domain names makes it difficult to infer a legitimate use); see also TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat.
Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name
that was confusingly similar to the complainant’s mark to display links to the
complainant’s competitors did not constitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii)).
Furthermore, Complainant contends that Respondent is
neither commonly known by the <acecheckcashing.net>
domain name nor was authorized to use Complainant’s ACE family of
marks in any way. Nowhere in Respondent’s WHOIS information or elsewhere
in the record does it indicate that Respondent is or ever was commonly known by
the <acecheckcashing.net> domain
name. The Panel finds that Respondent
has not established rights to or legitimate interests in the domain name in
accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s prior rights in the domain name precede the respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent currently utilizes the disputed domain name, <acecheckcashing.net>, to resolve to
a website featuring various sponsored links to sites, including several of Complainant’s
competitors. The Panel finds such use to
establish that Respondent registered and is using the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iii).
See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs.,
FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a
confusingly similar domain name to attract Internet users to a website containing
commercial links to the websites of the complainant’s competitors represented
bad faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, Respondent is presumed to be benefiting through the use of click-through fees from these links to third-party competitors of Complainant. The Panel finds that the disputed domain name is capable of creating a likelihood of confusion with Complainant’s mark and this is thus further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees)).
The Panel concludes that Complainant has 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 <acecheckcashing.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 5, 2007
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