Dollar Financial Group, Inc. v. Michelle
Jacobs
Claim
Number: FA0505000477189
Complainant is Dollar Financial Group, Inc. (“Complainant”),
represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT
06830-3942. Respondent is Michelle Jacobs (“Respondent”), 69
Mountain Apple Rd., Tajique, NM 87057.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <car-loan-mart.com>, <home-loan-mart.com>,
<auto-loans-mart.com>, <payday-loans-mart.com>, <badcreditautoloanmart.com>,
<badcredithomeloanmart.com>, and <badcreditcarloanmart.com>,
registered with Go Daddy Software, 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 electronically on May
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 17, 2005.
On
May 16, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <car-loan-mart.com>, <home-loan-mart.com>,
<auto-loans-mart.com>, <payday-loans-mart.com>, <badcreditautoloanmart.com>,
<badcredithomeloanmart.com>, and <badcreditcarloanmart.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 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 8, 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@car-loan-mart.com.com,
postmaster@home-loan-mart.com, postmaster@auto-loans-mart.com,
postmaster@payday-loans-mart.com, postmaster@badcreditautoloanmart.com,
postmaster@badcredithomeloanmart.com, and postmaster@badcreditcarloanmart.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
June 17, 2005, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <car-loan-mart.com>,
<home-loan-mart.com>, <auto-loans-mart.com>, <payday-loans-mart.com>,
<badcreditautoloanmart.com>, <badcredithomeloanmart.com>,
and <badcreditcarloanmart.com> domain names are confusingly
similar to Complainant’s LOAN MART mark.
2. Respondent does not have any rights or
legitimate interests in the <car-loan-mart.com>, <home-loan-mart.com>,
<auto-loans-mart.com>, <payday-loans-mart.com>, <badcreditautoloanmart.com>,
<badcredithomeloanmart.com>, and <badcreditcarloanmart.com>
domain names.
3. Respondent registered and used the <car-loan-mart.com>,
<home-loan-mart.com>, <auto-loans-mart.com>, <payday-loans-mart.com>,
<badcreditautoloanmart.com>, <badcredithomeloanmart.com>,
and <badcreditcarloanmart.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 holds a
registration with the United States Patent and Trademark Office for the LOAN
MART mark (Reg. No. 2,192,247 issued September 29, 1998).
Respondent
registered the <car-loan-mart.com>, <home-loan-mart.com>,
<auto-loans-mart.com>, <payday-loans-mart.com>, <badcreditautoloanmart.com>,
<badcredithomeloanmart.com>, and <badcreditcarloanmart.com>
domain names on April 27, 2005.
Respondent’s domain names do not resolve to active websites.
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 United States Patent and Trademark Office.
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).
The <car-loan-mart.com>,
<home-loan-mart.com>, <auto-loans-mart.com>, <payday-loans-mart.com>,
<badcreditautoloanmart.com>, <badcredithomeloanmart.com>,
and <badcreditcarloanmart.com> domain names are confusingly
similar to Complainant’s LOAN MART mark because the domain names incorporate
Complainant’s mark in its entirety and merely add generic or descriptive words
that describe Complainant’s business.
The mere addition of generic or descriptive words to a registered mark
does not negate the confusingly similar aspects of Respondent’s domain names pursuant
to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also L.L. Bean, Inc. v. ShopStarNetwork, FA
95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word
“shop” with the complainant’s registered mark “llbean” does not circumvent the
complainant’s rights in the mark nor avoid the confusing similarity aspect of
the ICANN Policy); see also Oki Data
Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact
that a domain name incorporates a Complainant’s registered mark is sufficient
to establish identical or confusing similarity for purposes of the Policy
despite the addition of other words to such marks.”); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18,
2000) (finding the <westfieldshopping.com> domain name confusingly
similar because the WESTFIELD mark was the dominant element).
Additionally,
the <car-loan-mart.com>, <home-loan-mart.com>, <auto-loans-mart.com>,
<payday-loans-mart.com> domain names are confusingly similar to
Complainant’s LOAN MART mark because the domain names incorporate Complainant’s
mark in its entirety, add hyphens between the words in the mark as well as
between the generic or descriptive words added to the mark, and add the letter
“s” to the word “loan” in the <auto-loans-mart.com> and <payday-loans-mart.com>
domain names. These minor additions to
Complainant’s registered mark do not negate the confusingly similar aspects of
Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See
Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000)
(finding that the domain names <teleplace.org>, <tele-place.com>,
and <theteleplace.com> are confusingly similar to the complainant’s
TELEPLACE trademark); see also Nintendo
of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000)
(finding <game-boy.com> identical and confusingly similar the
complainant’s GAME BOY mark, even though the domain name is a combination of
two descriptive words divided by a hyphen); see also Dollar Fin. Group, Inc. v. Advanced Legal
Sys., Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (finding that the
domain name <loan-mart.com> is confusingly similar to the complainant’s
mark); see also Nat’l Geographic
Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001)
(finding that the domain name <nationalgeographics.com> was confusingly
similar to the 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 the 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.”).
Furthermore,
Respondent’s <home-loan-mart.com>, <auto-loans-mart.com>, <payday-loans-mart.com>,
<badcreditautoloanmart.com>, <badcredithomeloanmart.com>,
and <badcreditcarloanmart.com> domain names are confusingly
similar to Complainant’s LOAN MART mark because the domain names incorporate
Complainant’s mark in its entirety and deviate with the addition of the generic
top-level domain “.com.” The addition
of generic top-level domains does not negate the confusingly similar aspects of
Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See
Fed’n
of Gay Games, Inc. v. Hodgson,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> was identical to the complainant's registered trademark
GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> was
plainly identical to the complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <car-loan-mart.com>,
<home-loan-mart.com>, <auto-loans-mart.com>, <payday-loans-mart.com>,
<badcreditautoloanmart.com>, <badcredithomeloanmart.com>,
and <badcreditcarloanmart.com> domain names. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to prove
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent has not
established rights or 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 the complainant has asserted that respondent does not have
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 the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the 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 the respondents’ failure to respond can be
construed as an admission that they do not have rights or legitimate interests
in the domain names).
Moreover, where
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. 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
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 complainant
to be deemed true).
Respondent has made no use of the disputed domain names. Simply registering a domain name is not
sufficient to establish rights or legitimate interests. When Respondent makes no use of a disputed
domain name, it can neither be said as being used for a bona fide use under
Policy ¶ 4(c)(i) nor as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB
v. Romero, D2000-1273
(WIPO Nov. 13, 2000) (finding no rights or legitimate interests where
respondent failed to submit a response to the complaint and had made no use of
the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (“[M]erely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy.”); see also BMW AG v.
Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain
name where respondent claimed to be using the domain name for a non-commercial
purpose but had made no actual use of the domain name).
Furthermore,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <car-loan-mart.com>,
<home-loan-mart.com>, <auto-loans-mart.com>, <payday-loans-mart.com>,
<badcreditautoloanmart.com>, <badcredithomeloanmart.com>,
or <badcreditcarloanmart.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See 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); see also Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent was not commonly known by the disputed domain
name nor was the responondent using the domain name in connection with a
legitimate or fair use).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds
that there is no conceivable way Respondent could use the disputed domain names
such that they would not infringe on Complainant’s LOAN MART mark, and
therefore it is illogical to await Respondent’s use of the domain names to find
bad faith use. See Phat Fashions v.
Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under
Policy ¶ 4(a)(iii) even though respondent has not used the domain name because
“[i]t makes no sense whatever to wait until it actually ‘uses’ the name, when
inevitably, when there is such use, it will create the confusion described in
the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
respondent made no use of the domain name in question and there are no other
indications that respondent could have registered and used the domain name in
question for any non-infringing purpose); see
also Red Bull GmbH v. Gutch,
D2000-0766 (WIPO Sept. 21, 2000) (finding that respondent’s expected use of the
domain name <redbull.org> would lead people to believe that the domain
name was connected with complainant, and thus is the equivalent to bad faith
use); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith
registration and use where it is “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the complainant”).
Furthermore,
Respondent registered the <car-loan-mart.com>, <home-loan-mart.com>,
<auto-loans-mart.com>, <payday-loans-mart.com>, <badcreditautoloanmart.com>,
<badcredithomeloanmart.com>, and <badcreditcarloanmart.com>
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
United States Patent and Trademark Office.
Registration of domain names that are confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights in
the mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when the respondent
reasonably should have been aware of the complainant’s trademarks, actually or
constructively.”); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he
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.”) see also 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).
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 <car-loan-mart.com>, <home-loan-mart.com>,
<auto-loans-mart.com>, <payday-loans-mart.com>, <badcreditautoloanmart.com>,
<badcredithomeloanmart.com>, and <badcreditcarloanmart.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 29, 2005
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