Dollar Financial Group, Inc. v. America's
Cash Express, LLC
Claim
Number: FA0502000418592
Complainant is Dollar Financial Group, Inc. (“Complainant”),
represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT
06830-3942. Respondent is America's Cash Express, LLC (“Respondent”),
12208 North 32nd Street, Phoenix, AZ 85032.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <payday-loan-mart.com>, registered with Network
Solutions, Inc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 11, 2005.
On
February 11, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <payday-loan-mart.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 15, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 7, 2005 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@payday-loan-mart.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 11, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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 <payday-loan-mart.com>
domain name is confusingly similar to Complainant’s LOAN MART mark.
2. Respondent does not have any rights or
legitimate interests in the <payday-loan-mart.com> domain name.
3. Respondent registered and used the <payday-loan-mart.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Dollar Financial Group, Inc., is one of the largest national originators of
small consumer loans, using the LOAN MART name and mark. To date, Complainant has originated over
$700,000,000 in consumer loans.
Complainant
holds a trademark registration for the LOAN MART mark with the United States
Patent and Trademark Office (Reg. No. 2,192,247 issued September 29, 1998) and
has used the mark in commerce since at least September 1997.
Complainant also
originates loans online at various websites whose domain names incorporate
their mark, e.g. <loanmart.net>.
Respondent
registered the <payday-loan-mart.com> domain name on February 8,
2005. Respondent is using the disputed
domain name to direct Internet users to a website with the content title,
“Payday Loan Fast and Easy!” The website
offers payday and short-term consumer loans in direct competition with
Complainant.
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 that it has rights in the LOAN MART mark through registration with
the United States Patent and Trademark Office and through continued use of its
mark in commerce over the last eight years.
See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.; see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000)
finding that the failure of complainant to register all possible domain names
that surround its substantive mark does not hinder complainant’s rights in the
mark, ntoing “Trademark owners are not required to create ‘libraries’ of domain
names in order to protect themselves”.
Respondent’s <payday-loan-mart.com>
domain name is confusingly similar to Complainant’s mark because the domain
name wholly incorporates Complainant’s LOAN MART mark and simply adds a generic
or descriptive term “payday,” hyphens to separate the words and the generic
top-level domain (“gTLD”) “.com.” The
addition of the generic or descriptive term “payday,” hyphens and a gTLD do not
distinguish Respondent’s domain name from Complainant’s mark. Thus, the Panel concludes that Respondent’s
minor alterations to Complainant’s mark are not sufficient to differentiate
Respondent’s domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Arthur Guinness
Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
finding confusing similarity where the domain name in dispute contains the
identical mark of complainant combined with a generic word or term; see also Sony Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000)
finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied; see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) finding confusing
similarity where respondent’s domain name combines complainant’s mark with a
generic term that has an obvious relationship to complainant’s business; see also InfoSpace.com, Inc. v. Ofer, D2000-0075
(WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s
INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing
features”).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Respondent has
not submitted a response in this proceeding.
Thus, the Panel chooses to view the Complaint in the light most
favorable to Complainant and accepts as true all reasonable assertions made by
Complainant. Complainant has asserted
that Respondent lacks rights and legitimate interests in the domain name. Respondent has not refuted this
assertion. Accordingly, the Panel
presumes that Respondent lacks rights and legitimate interests in the disputed
domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that 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”; see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) finding that under certain circumstances the mere assertion by
complainant that respondent has no rights or legitimate interests is sufficient
to shift the burden of proof to respondent to demonstrate that such rights or
legitimate interests do exist; see
also Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that
respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names.
In the WHOIS
contact information, Respondent lists its name and administrative contact as
“America’s Cash Express LLC.” However,
since Respondent failed to respond to the Complaint, there has not been any
affirmative evidence provided to the Panel showing that Respondent was ever
commonly known by the disputed domain name.
Moreover, Complainant’s first use of the LOAN MART mark in commerce and
its registration of the mark predates Respondent’s registration of the domain
name. Furthermore, Respondent has not
been authorized by Complainant to use the LOAN MART mark in its domain name. Thus, the Panel finds that Respondent has
not been commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“[N]othing 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"; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding no
rights or legitimate interests where (1) respondent is not a licensee of
complainant; (2) complainant’s rights in the mark precede respondent’s
registration; (3) respondent is not commonly known by the domain name in
question.
Respondent’s use
of the infringing <payday-loan-mart.com> domain name to offer and
advertise payday loans and related services, which are similar to services that
Complainant offers at its website, is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). Thus,
the Panel finds that Respondent lacks rights and legitimate interests in the
domain name under Policy ¶ 4(a)(ii).
See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum
June 12, 2002) finding respondent’s use of the disputed domain name to solicit
pharmaceutical orders without a license or authorization from complainant does
not constitute a bona fide offering of goods or services under Policy ¶
4(c)(i); see also Clear Channel
Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum
Jan. 2, 2003) finding that respondent, as a competitor of complainant, had no
rights or legitimate interests in a domain name that utilized complainant’s
mark for its competing website; see
also 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.
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent is
using Complainant’s mark in a domain name to attract Internet users to its
competing website. Since both
Respondent and Complainant operate in the same line of business and market
similar products via the Internet, Respondent knew or should have known of
Complainant’s business under its registered mark. Based on the foregoing, the Panel presumes that Respondent
registered the domain name primarily for the purpose of disrupting
Complainant’s business. Thus, the Panel
finds that Respondent registered the domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). See Surface Prot. 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., FA 94864 (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; see
also EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) finding that respondent registered
and used the domain name <eebay.com> in bad faith where respondent has
used the domain name to promote competing auction sites.
It is
likely that Internet users will be confused about Complainant’s affiliation
with the domain name because the loan services offered at Respondent’s website
are similar to the loan services offered by Complainant, and the domain name hosting
Respondent’s website wholly incorporates Complainant’s mark. Thus, the Panel finds that since Respondent
is commercially benefiting from using a confusingly similar domain name,
Respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, 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); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) finding bad faith where respondent
directed Internet users seeking complainant’s site to its own website for
commercial gain; see also State Farm Mut. Auto. Ins. Co. v. Northway,
FA 95464 (Nat. Arb. Forum Oct. 11, 2000) finding that respondent registered the
domain name <statefarmnews.com> in bad faith because respondent intended
to use complainant’s marks to attract the public to the website without
permission from complainant.
The Panel finds
that Complainant fulfilled 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-loan-mart.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 25, 2005
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