Dollar Financial Group, Inc. v. Aaron
Tomkins
Claim
Number: FA0504000469068
Complainant is Dollar Financial Group, Inc. (“Complainant”),
represented by Hilary B. Miller, Esq., 112 Parsonage Road, Greenwich, CT
06830-3942. Respondent is Aaron Tomkins (“Respondent”), 3015 S.
48th St., Tempe, AZ 85282.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <americanloanmart.com> and <speedyloanmart.com>,
registered with Go Daddy Software, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 29, 2005.
On
April 28, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <americanloanmart.com> and
<speedyloanmart.com> are registered with Go Daddy Software, Inc.
and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, 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
May 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 25, 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@americanloanmart.com and
postmaster@speedyloanmart.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
May 31, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanloanmart.com>
and <speedyloanmart.com> domain names are confusingly similar to
Complainant’s LOAN MART mark.
2. Respondent does not have any rights or
legitimate interests in the <americanloanmart.com> and <speedyloanmart.com>
domain names.
3. Respondent registered and used the <americanloanmart.com>
and <speedyloanmart.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Dollar Financial Group, Inc., has originated over $700 million dollars in
consumer loans, a substantial portion of which originated through Complainant’s
LOAN MART stores. Complainant has
registered the LOAN MART mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,192,247 issued September 29, 1998).
Respondent
registered the <americanloanmart.com> and <speedyloanmart.com>
domain names on April 13, 2005.
Respondent’s domain names do not resolve to active websites. Respondent has offered to sell the domain
name registrations to Complainant for $1,000.
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 of the mark with
the USPTO. See 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 Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <americanloanmart.com> and <speedyloanmart.com>
domain names are confusingly similar to Complainant’s LOAN MART mark, as the
domain names incorporate Complainant’s mark in its entirety and merely add the
generic or descriptive terms “american” and “speedy.” Additionally, Respondent’s domain names add the generic top-level
domain “.com” and omit the space between the terms of Complainant’s mark. Such minor alterations are insufficient to
overcome a finding of confusing similarity 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 the complainant combined with a generic word or term); see
also Parfums Christian Dior v. 1
Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain
names that added the descriptive words “fashion” or “cosmetics” after the
trademark were confusingly similar to the trademark); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding it is a “well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See 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.”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard.”).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <americanloanmart.com> and <speedyloanmart.com>
domain names pursuant to Policy ¶ 4(a)(ii). See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Bank of Am.
Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is
not using the confusingly similar disputed domain names for any active purpose;
and, as such, cannot be considered to be using the domain names in connection
with either 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). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding
no rights or legitimate interests where “the respondent registered the domain
name and did nothing with it”).
Furthermore,
Respondent’s apparent willingness to sell the domain name registrations for
$1,000 is further evidence that Respondent lacks rights and legitimate
interests in the <americanloanmart.com> and <speedyloanmart.com>
domain names pursuant to Policy ¶ 4(a)(ii).
See Am. Nat’l Red
Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003)
(“Respondent’s lack of
rights and legitimate interests in the domain name is further evidenced by
Respondent’s attempt to sell its domain name registration to Complainant, the
rightful holder of the RED CROSS mark.”); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb.
Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when
one has made no use of the websites that are located at the domain names at
issue, other than to sell the domain names for profit).
Moreover,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or authorized to register domain names featuring
Complainant’s LOAN MART mark. Thus, the
Panel finds that Respondent has not established rights or legitimate interests
in the <americanloanmart.com> and <speedyloanmart.com>
domain names pursuant to Policy ¶ 4(c)(ii).
See 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 Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interests 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
offered to sell the disputed domain names, which are confusingly similar to
Complainant’s LOAN MART mark, for $1,000, an amount in excess of any reasonable
calculation of out-of-pocket expenses.
The Panel finds that this offer is evidence that Respondent registered
and used the <americanloanmart.com> and <speedyloanmart.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26,
2000) (finding that the respondent demonstrated bad faith when he requested
monetary compensation beyond out-of-pocket costs in exchange for the registered
domain name); see also Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered
the disputed domain name registrations for sale).
Furthermore,
Respondent registered the disputed domain names with actual or constructive
knowledge of Complainant’s rights in the LOAN MART mark due to Complainant’s
registration of the mark with the USPTO.
Registration of domain names that are confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights is
tantamount to bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <americanloanmart.com> and <speedyloanmart.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
June 10, 2005
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