Moneytree, Inc. v. Teerungkul Taveewong
Claim Number: FA1404001556483
Complainant is Moneytree, Inc. (“Complainant”), represented by Kathleen T. Petrich of MILLER NASH LLP, Washington, USA. Respondent is Teerungkul Taveewong (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moneytree-inc.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2014; the National Arbitration Forum received payment on April 29, 2014.
On April 29, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <moneytree-inc.com> 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 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2014 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@moneytree-inc.com. Also on April 30, 2014, 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 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
This Amended Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The <moneytree-inc.com> domain name registered by Respondent is substantially identical or confusingly similar to Complainant’s MONEYTREEINC.COM marks, trade names and domain names. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Complainant Moneytree, Inc. (“Moneytree”), a Washington corporation headquartered in Seattle, Washington, owns and operates more than 120 retail financial services stores throughout the Western United States, as well as stores in British Columbia, Canada. Moneytree offers consumer lending services, including payday lending, check cashing, debit and stored value card, and other financial services. These stores operate under the MONEY TREE and MONEYTREE service marks and the Moneytree trade name. Complainant first began using the service mark MONEYTREE since at least as early as October 1983, in connection with its financial services, initially, check cashing services, money orders, and wire transfers. From at least the mid 1990’s, Complainant began using MONEY TREE (or MONEYTREE) in connection with lending services (payday lending), in addition to its check cashing and other financial services. Complainant first began using the MONEY TREE (& Design) service mark since at least as early as May 31, 1997, in connection with its financial services in the field of check cashing services, short term loan services in the nature of payday loan advances, money wire transfer services, and money order services. In 2000, Moneytree launched its Website <www.moneytreeinc.com> and has operated its Website continuously since its launch. In the mid 2000’s, Moneytree’s financial services have expanded to providing debit and stored value cards the MONEY TREE brand. In 2009, Moneytree began providing online lending services under the MONEYTREEINC.COM and design service mark.
Complainant is the owner of many United States and state service mark registrations and pending service mark applications for or incorporating the MONEY TREE mark in connection with financial services. The most pertinent federal service mark registrations are listed below:
[Table removed]
Registration Numbers 2,166,890 (MONEY TREE), 2,203,612 (MONEY TREE and design), 3486,512 (MONEYTREE LENDING), 3,280,998 (MONEY TREE), 2,891,320 ((CHECK CASHING MONEY TREE PAYDAY LOANS and Design (black & white)), 2,916,515 (CHECK CASHING MONEY TREE PAYDAY LOANS and Design (color)), 2,976,195 (MONEY TREE), 3,208,396 ((MONEYTREE and logo (black & white)), and 3,211,025 ((MONEYTREE and logo (color)) all have achieved incontestability status. Further, the following registrations are renewed: 2,116,890; 2,203,612; 2,891,320; and 2,916,515. The Complainant's registered marks are distinctive of its financial services.
Complainant is also the owner of the domain name <moneytreeinc.com>, from which its <www.moneytreeinc.com> website has been a primary source of information of Complainant’s financial services. This Website has been active since at least 2000.
Complainant invests heavily in its extremely valuable marks and name. Complainant spends several millions of dollars each year in advertising and promoting its financial services under the MONEY TREE family of marks. Complainant advertises online (e.g., banner ads) and in more traditional forms such as billboards, television, and radio, in addition to its Website and print material. Furthermore, Complainant takes pride in its superlative corporate citizenship and is a large sponsor of many community and charitable events.
As stated above, Complainant owns many federal service mark registrations for the MONEY TREE mark (and variants thereof), including its main oldest federal registration (Reg. No. 2,166,890 for MONEY TREE), its oldest federal logo registration (Reg. No. 2,203,612 for MONEY TREE and design), and for MONEYTREEINC.COM and design (Reg. No. 3,799,378). These registrations alone establish Complainant’s rights in and to the MONEY TREE mark. See Innomed Technologies, Inc. v. DRP Services, FA0312000221171 Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASALAIRE mark with the USPTO establishes Complainant’s rights in the mark.”); see also Vivendi Universal Games, et al. v. XBNet Ventures Inc., FA0309000198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark”). Further, Complainant has used its registered MONEY TREE marks for many years (its oldest registered marks have been registered for more than 15 years) and heavily invests in its well-known brands through advertising, including on its website at www.moneytreeinc.com, online advertising, and on billboards, in television advertisements, and in connection with community and charitable sponsorships. Consumers recognize the Complainant as the source of the MONEY TREE marks.
Complainant had gained recognition as a leading provider of payday loan and related consumer financial services, which renown is embodied in its MONEY TREE family of marks. Complainant has actively enforced its MONEY TREE marks in various publicly known civil infringement matters and U.S. Trademark Trial and Appeal Board (“TTAB”) proceedings, as well as previous Uniform Domain Dispute Resolution proceedings ((see e.g., Moneytree Inc. v. Technical Support, FA1106001391475 (Nat. Arb. Forum July 11, 2011) (transfer of the <moneytreinc.com> domain name; Moneytree, Inc. v. somsak hnonmai, FA1212001474901 (Nat. Arb. Forum Jan. 28, 2103) (transfer of the <i-moneytreeinc.com> domain name)).
The Complainant MONEY TREE marks and the Respondent's <moneytree-inc.com> domain name are confusingly similar. The domain name wholly incorporates Complainant’s well-known MONEY TREE marks, including MONEYTREEINC.COM, and Complainant's trade name. “Moneytree” is the primary, distinctive element of the <moneytree-inc.com> domain name. The addition of a hyphen is insufficient to distinguish the domain name from Complainant’s well-known family of MONEY TREE marks, including its MONEYTREEINC.COM & Design registered service mark. See 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)."). See also Reuters Ltd. V. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Complainant has established its strong rights in the MONEY TREE and MONEYTREE family of service marks, including MONEYTREEINC.COM through its long use the these services marks, extensive brand promotion, ten cited federal registrations, and ongoing active enforcement of its valuable service marks. Thus, this prong of the UDRP policy is met.
[b.] Respondent has no rights or legitimate interests in respect of the <moneytree‑inc.com> domain name. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
The Respondent registered the domain name <moneytree-inc.com> on October 29, 2013, more than 15 years after the Complainant registered its <moneytreeinc.com> domain, 13 years after the Complainant began using its www.moneytreeinc.com website in connection with the offering of Complainant's financial services, and more than 15 years from the Complainant's first United States service mark registration for the its MONEY TREE marks in connection with, among other services, short term lending services. As discussed above, the Respondent's domain name wholly incorporates Complainant’s well-known MONEY TREE marks, including MONEYTREEINC.COM, and its trade name. The mere addition of a hyphen is insufficient to distinguish the domain name from Complainant’s well-known family of MONEY TREE marks, including its MONEYTREEINC.COM & Design registered service mark. See 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 Respondent is wrongfully using its <moneytree-inc.com> domain name (and designation MONEYTREEINC.COM) in connection with online lending services, the same services offered by the Complainant under a near identical service mark (MONEYTREEINC.COM and design) and through the use of its Website < www.moneytree-inc.com>. Further, Respondent's website found at www.moneytree-inc.com took information from the Complainant's website and particularly took related keywords from Complainant [From Respondent's front page of its website: "Relate keyword [sic] : MoneytreeInc.com,MoneyTree.Com login, MoneyTree payday Loans, MoneyTree.com my account, MoneyTree Cash, MoneyTree Loan, MoneyTree official site, MoneyTree login, MoneyTree Cash advance, MoneyTree sign in, MoneyTree complaints, MoneyTree reviews, MoneyTree scam, MoneyTree ink, Money Tree Services Inc., Money Tree Locations, Money Tree Northgate, Money Tree Corporate Office, Moneytreeinc. Promotion"[sic]]. The Complainant has a store called "Northgate" given its proximity to Northgate Mall in north Seattle, Washington. The Respondent has no such location. These uses are intended to fraudulently divert online traffic from Complainant's website to Respondent's website.
Complainant did not license or provide permission to the respondent to use Complainant’s valuable service mark, nor would Complainant granted the Respondent such license or permission had it been requested.
Financial lending is a highly regulated business, both at the state and federal levels. Complainant takes its regulatory status very seriously and devotes considerable time and effort to continue being in regulatory compliance in each state that it transacts business. The Respondent’s website is not a regulated site, nor does it appear to be a legitimate provider of online loans. Respondent has no legitimate rights in the “moneytree-inc.com” name, nor has it ever been known by the MONEYTREEINC.COM mark or trade name.
Further, the Respondent is using the <moneytree-inc.com> domain name in conjunction with its website designed to fraudulently provide unregulated financial services to unsuspecting consumers passing itself off as Complainant. This is evidenced by the service mark use of "MoneyTree-Inc.com" prominently across the top of the Respondent's website.
Respondent has no federal registration(s) and is using this domain solely to trade on the goodwill that Complainant has painstakingly created and managed over these many years.
Altogether, Complainant has proven that it has legitimate rights in the MONEY TREE marks in connection with the offering of financial services and that the Respondent does not have any legitimate rights in the MONEYTREEINC.COM mark (or any colorable imitation such as “moneytree-inc.com”) and is not a legitimate registrant of the <moneytree-inc.com> domain name.
[c.] The domain name <moneytree-inc.com> was registered and is being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
By entering the financial services arena through appropriation of Complainant’s service mark in the <moneytree-inc.com> domain, the Respondent has exhibited bad faith registration and use of a domain name pursuant to Policy ¶4(b)(iii) because the Respondent likely registered the disputed domain name primarily for the purpose of disrupting the business of a competitor and soliciting visitors’ personal and financial information under the guise of providing online lending services. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant’s business and create user confusion); see also S. Exposure v. S. Exposure, Inc.,. FA0005000094864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).
Further, it is well settled that websites used to divert traffic from a legitimate site to a site for commercial gain is an act of bad faith, even where the site is now passively held. See Countrywide Financial Corporation v. Web Domain Names, FA0605000708909 (Nat. Arb. Forum July 7, 2006)(respondent’s passive holding of the <coutrywide.com> domain name and as a means to receive click-through fees for diverting Internet users to third-party Websites was held to be bad faith). Here, the Respondent is operating a presumably bogus site using the MONEYTREEINC.COM mark not only to drive consumers to its site and away from legitimate MONEY TREE Websites, but also to represent that it is a reputable online lending service and seeking to obtain consumers’ personal and financial information for questionable purposes. Respondent’s site harms the MONEY TREE marks by confusing consumers as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, and any questionable activities the Respondent may be engaging in will directly reflect on Complainant and may come to be associated with the MONEY TREE marks. Thus, the arbitrator is warranted to order the transfer of the <moneytree-inc.com> domain name to Complainant.
Complainant alleges that the sole purpose of Respondent's website is to disrupt Complainant’s business and causing confusion as to the source of the MONEY TREE and MONEYTREEINC.COM marks. Respondent clearly knew what it was doing (see again using of Moneytree Northgate it its keywords) to trade on the goodwill and valuable service marks of the Complainant prior to the registering of the dispute domain name, which constitutes bad faith. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
In view of the totality of the circumstances, transfer is warranted based on Complainant’s established and strong rights in and to the MONEYTREEINC.COM mark, the Respondent’s lack of legitimate rights in the MONEY TREE mark, and the Respondent’s bad faith in selecting the <moneytree-inc.com> domain name for the purpose of disrupting Complainant’s business and attempting to obtain consumers’ personal and financial information under the guise of providing online lending services.
B. Respondent
Respondent failed to submit a Response in this proceeding, except for an email which read:
Hello,
I apologize for the mistake i make on <moneytree-inc.com>, I didn't realized that it is the Trademark.
To show you my sincerity, i completely stopped using such the domain name and deleted everything in regard to this domain name on my host already. If you prefer, I am willing to transfer the domain name to you as soon as possible. Please be confident that I will be in the highest careful in the future not to pick any of your trademarks as my domain name.
Please advise whether my above mentioned offer is acceptable and fit your requirement.
Looking forward to hearing from you.
(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.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant uses the MONEY TREE mark in connection with financial services. Complainant has obtained a United States Patent & Trademark Office (“USPTO”) trademark registration for the MONEY TREE mark (e.g., Reg. No. 2,166,890 registered June 23, 1998). Complainant also has trademark rights with the USPTO to the MONEYTREEINC.COM mark (Reg. No. 3,799,378 registered June 8, 2010). Generally speaking, trademark registrations with a governmental authority sufficiently illustrate Policy ¶4(a)(i) rights in a mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims Respondent’s <moneytree-inc.com> domain name is confusingly similar to the MONEYTREEINC.COM mark. The additional hyphen does not adequately distinguish the disputed domain name from Complainant’s mark. Therefore, the <moneytree-inc.com> domain name is confusingly similar to the MONEYTREEINC.COM mark under Policy ¶4(a)(i). See 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 Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not known by any of Complainant’s marks. Complainant has not authorized Respondent’s use of its mark. The WHOIS information lists “Teerungkul Taveewong” as the registrant of the domain name, which bears no similarity to the disputed domain name. Respondent has failed to submit a response in the matter. Based upon the available evidence, there are no grounds for finding Respondent is commonly known by this domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is obviously using the <moneytree-inc.com> domain name to host a website offering similar services to those Complainant offers. The financial lending business is a highly regulated business, and there is no evidence to suggest Respondent is actually authorized to provide the services it purports to offer. Respondent’s domain name resolves to a website offering applications for loans. The web site uses Complainant’s mark along with the superscripted ®. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) the panel found nothing bona fide about the use of a domain name to promote competing services. Respondent has made no Policy ¶4(c)(i) bona fide offering, or Policy ¶4(c)(iii) legitimate noncommercial or fair use with respect to this domain name.
Complainant claims Respondent is trying to pass itself off as Complainant and frequently gains sales from consumers. There are similarities between Complainant’s website and Respondent’s website. The web site uses Complainant’s mark along with the superscripted ®, which suggests Respondent engages in a phishing scheme. Based upon these facts, Respondent is attempting to pass itself off as Complainant. Respondent has no Policy ¶4(a)(ii) rights or legitimate interests with respect to the domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s competing business is disrupting Complainant’s ability to reach consumers through its own trademarks. Respondent’s business seems to be competing with Complainant’s business (and that’s being charitable in light of Respondent’s use of Complainant’s mark along with the superscripted ®) which indicates Policy ¶4(b)(iii) bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims Consumers are likely to be confused as to Complainant’s approval or association with Respondent’s bogus financial services operations. The disputed domain name’s website is likely to create confusion as to Complainant’s association with the domain name and Respondent benefits from the resulting confusion. This justifies finding bad faith registration and use under Policy ¶4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Complainant claims Respondent clearly knew it was infringing on the MONEYTREEINC.COM and MONEY TREE marks prior to registering this <moneytree-inc.com> domain name. That certainly seems evident considering Respondent’s use of Complainant’s mark along with the superscripted ®. Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <moneytree-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, June 5, 2014
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