national arbitration forum

 

DECISION

 

Dollar Financial Group, Inc. v. Andrew Shorten and TMED UK

Claim Number:  FA0505000481754

 

PARTIES

 

Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT 06830-3942.  Respondent is Andrew Shorten and TMED UK (“Respondent”), 31 Eastwood Boulevard, Westcliff, Essex, SS0 0BY, GB.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <loanmart.info>, registered with Fiducia LLC Latvijas Parstavnieciba.

 

PANEL

 

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 24, 2005.

 

On May 25, 2005, Fiducia LLC Latvijas Parstavnieciba confirmed by e-mail to the National Arbitration Forum that the domain name <loanmart.info> is registered with Fiducia LLC Latvijas Parstavnieciba and that Respondent is the current registrant of the name.  Fiducia LLC Latvijas Parstavnieciba has verified that Respondent is bound by the Fiducia LLC Latvijas Parstavnieciba 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 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 15, 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@loanmart.info 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 21, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <loanmart.info> domain name is identical to Complainant’s LOAN MART mark.

 

2.      Respondent does not have any rights or legitimate interests in the <loanmart.info> domain name.

 

3.      Respondent registered and used the <loanmart.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

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 trademark registration with the United States Patent and Trademark Office (“USPTO”) for the LOAN MART mark (Reg. No. 2,192,247 issued September 29, 1998).

 

Respondent registered the <loanmart.info> domain name on March 8, 2005.  Respondent’s domain name does not resolve to an active website.

 

DISCUSSION

 

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 in the Complaint as true.  See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that, in the absence of a response, the panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); 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 complaint to be deemed true).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established in this proceeding that it holds rights in the LOAN MART mark through registration with the USPTO.  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

The Panel finds that Respondent’s <loanmart.info> domain name is identical to Complainant’s LOAN MART mark because the domain name contains Complainant’s mark in its entirety and merely adds the generic top-level domain “.info” to the mark.  The addition of a generic top-level domain to a registered mark does not counteract the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”); 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  Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent does not have rights or legitimate interests in the <loanmart.info> domain name.  When Complainant makes a prima facie case in support of its assertions, the burden shifts to Respondent to show that it does have rights or legitimate interests in the domain name.  Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the <loanmart.info> 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 the respondent does not have rights or legitimate interests with respect to the domain name it is incumbent on the 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 a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

 

Respondent has made no use of the <loanmart.info> domain name.  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 that it is being used for a bona fide use pursuant to Policy ¶ 4(c)(i) nor for 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 the 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) (“Merely 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 Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).

 

Respondent has not offered any evidence, and there is no proof in the record to suggest, that Respondent is commonly known by the <loanmart.info> domain name.  Moreover, Complainant has not authorized or licensed Respondent to use its LOAN MART mark.  Thus, Respondent has not established that it has rights or legimiate interests in the <loanmart.info> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.   

 

Registration and Use in Bad Faith

 

The Panel finds that there is no conceivable way Respondent could use the <loanmart.info> domain name such that it would not infringe on Complainant’s LOAN MART mark, and it is, therefore, illogical to await Respondent’s use of the domain name to find bad faith use.  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the 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 the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

Moreover, Respondent registered the <loanmart.info> domain name 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 a domain name that is 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) (“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.

 

DECISION

 

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <loanmart.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Louis E. Condon, Panelist

Dated:  July 1, 2005