Dollar Financial Group, Inc. v. Marc
Bertola and Abbeyway Contracts Ltd
Claim
Number: FA0506000489397
Complainant is Dollar Financial Group, Inc. (“Complainant”),
represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT
06830-3942. Respondent is Marc Bertola and Abbeyway Contracts Ltd (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <money-mart.com>, registered with Registration
Technologies, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically May 31,
2005; the National Arbitration Forum received a hard copy of the Complaint June
2, 2005.
On
June 2, 2005, Registration Technologies, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <money-mart.com>
is registered with Registration Technologies, Inc. and that Respondent is the
current registrant of the name. Registration
Technologies, Inc. verified that Respondent is bound by the Registration
Technologies, Inc. registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
June 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 29, 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@money-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
July 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <money-mart.com>, is confusingly similar to
Complainant’s MONEY MART mark.
2. Respondent has no rights to or legitimate
interests in the <money-mart.com> domain name.
3. Respondent registered and used the <money-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
international vendors of sub-prime consumer financial services. Complainant uses its MONEY MART mark to
advertise its business by various forms of media in the United States, Canada
and Australia. Since 1982, Complainant
and its predecessors have spent millions of dollars in advertising
Complainant’s services. To date,
Complainant has achieved more than one billion dollars in sales using its MONEY
MART mark.
Complainant holds a registration with the United States Patent and
Trademark Office (“USPTO”) for its MONEY MART mark (Reg. No. 2,244,158 issued
May 11, 1999). Additionally, through
its wholly-owned Canadian subsidiary, National Money Mart Company, Complainant
owns a registration for the MONEY MART mark with the Canadian Intellectual
Property Office (“CIPO”), which was registered on December 7, 1984.
In addition, Complainant offers its services online at numerous websites,
including websites at the <moneymart.com> and <moneymart.ca> domain
names.
Respondent registered the <money-mart.com> domain name October 15, 2002. The domain name is not being used for any
purpose and merely resolves to a placeholder website.
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
will draw such inferences as the Panel 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.”).
Paragraph 4(a)
of the Policy requires Complainant to 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
provided evidence that it registered the MONEY MART mark with the USPTO and
CIPO. Complainant’s registration of its
mark with multiple federal authorities establishes a prima facie case of
Complainant’s rights in the mark, which Respondent is entitled to contest. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”). Since Respondent has not filed a response,
Complainant’s prima facie case of rights in the mark has gone
uncontested, and the Panel determines that Complainant has established rights
in the MONEY MART mark for the purposes of Policy ¶ 4(a)(i).
In General Elec. Co. v. Bakhit,
D2000-0386 (WIPO June 22, 2000), the panel found that the use of the lowercase
format and the addition of a hyphen between the words of Complainant’s
registered GENERAL ELECTRIC mark rendered the <general-electric.com>
domain name to be “without doubt confusingly similar” to Complainant’s
mark. See also Pep Boys Manny, Moe, & Jack v. E-Commerce Today,
Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen
between words of the complainant’s registered mark is confusingly
similar). Furthermore, the panel held
that “the addition of the generic top-level domain (gTLD) name ".com"
is likewise without legal significance since use of a gTLD is required of domain
name registrants.” See General Elec.
Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000). In the instant case, the <money-mart.com> domain
name differs from Complainant’s MONEY MART mark only with the additions of a
hypen and a gTLD, which have been held to be “differences
without legal significance from the standpoint of comparing” a domain name to a
trademark. Id.; see also CBS
Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)
(finding that putting a hyphen between words of the complainant’s mark is
identical to and confusingly similar to the complainant’s mark). The Panel finds
that the disputed domain name is confusingly similar to Complainant’s
registered mark pursuant to Policy ¶ 4(a)(i).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
It has been
established under the Policy that Complainant has the initial burden of proving
that Respondent lacks rights and legitimate interests in the disputed domain
name. In Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001),
the panel held:
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
See also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has
asserted that the respondent has no 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”). Having found that Complainant has met its
initial burden in establishing a prima facie case, the Panel will now
conduct an analysis of whether Respondent has met its burden to indicate why it
should be considered to have rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c).
The Panel finds
no evidence in the record indicating that Respondent is commonly known by the <money-mart.com>
domain name. The only evidence of
Respondent’s identity is the WHOIS registration information, which identifies
Respondent as “Marc Bertola” of “Abbeyway Contracts Ltd.” without any mention
of a potential relationship to the disputed domain name. Furthermore, due to Respondent’s failure to
provide any evidence to assert that it is commonly known by the disputed domain
name, the Panel finds that Respondent is essentially admitting that it has not
established rights or legitimate interests pursuant to the Policy ¶ 4(c)(ii)
safe harbor provision. 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 Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); 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.”).
Complainant
argues that Respondent should be found to have established no rights or
legitimate interests in the <money-mart.com> domain name, because
Respondent has not made any use of the domain name. Numerous panels have held under the Policy that passively holding
a domain name that includes the mark of another is not sufficient to establish
a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TMP
Int’l, Inc. v. Baker Enters., FA 204112
(Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's
passive holding of the domain name does not establish rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Online, Inc.
v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's
passive holding of the <aolfact.com> domain name for over six months is
evidence that Respondent lacks rights and legitimate interests in the domain
name.”). Furthermore, in Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000), the complainant submitted evidence that the
respondent was not using the disputed domain name and had not demonstrated any
preparations to use it. The Pharmacia
& Upjohn AB panel found that, in such
circumstances, a respondent’s failure to respond allows the panel to infer “that any
evidence of the Respondent would not have been in his favor.”
Id. Thus, where the
disputed domain name is not in use and Respondent has failed to respond to the
Complaint, the Panel finds that Respondent has not met its burden to establish
rights or legitimate interests pursuant to Policy ¶ ¶ 4(c)(i) and (iii).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
The Policy
provides that Complainant may satisfy the bad faith registration and use
requirement of Policy ¶ 4(a)(iii) by providing evidence of one of the listed
circumstances found under Policy ¶ 4(b).
However, the Policy states explicitly that the panel is not limited to
the provided list in making a determination of bad faith registration and
use. See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”); see also Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000):
The
requirement in the ICANN Policy that a complainant prove that domain names are
being used in bad faith does not require that it prove in every instance that a
respondent is taking positive action. Use in bad faith can be inferred from the
totality of the circumstances even when the registrant has done nothing more
than register the names.
Id.
Complainant
asserts that Respondent’s failure to use the <money-mart.com>
domain name for any purpose within a period of more than two years constitutes
passive holding and is evidence of bad faith registration and use. In Mondich
v. Brown, D2000-0004 (WIPO Feb. 16, 2000), the respondent had not made any
use of the disputed domain name for a period of over two years. The panel held that while the respondent’s
failure to respond to the complaint allowed an inference in the complainant’s
favor, the respondent’s failure to use the disputed domain name for “a substantial
period of time” supported an inference that the domain name had been
“registered without a bona fide intent to make good faith use.” Id.; see also Caravan
Club v. Mrgsale, FA
95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use
of the domain name or website that connects with the domain name, and that
passive holding of a domain name permits an inference of registration and use
in bad faith). Thus, the Panel finds that
the circumstances of the instant case allow an inference that the disputed
domain name was registered and used in bad faith pursuant to Policy ¶
4(a)(iii).
Furthermore, a
respondent’s registration of a domain name that contains the mark of another
with actual or constructive knowledge of the mark holder’s rights is evidence
of bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); 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). In this case,
Complainant’s registration of its MONEY MART mark on the Principal Register of
the USPTO before Respondent’s registration of the domain name confers upon
Respondent constructive knowledge of Complainant’s rights in the mark at the
time of the domain name registration. See
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.”); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072). Thus, Respondent had constructive knowledge of Complainant’s
rights in the MONEY MART mark when it registered the <money-mart.com>
domain name and, therefore, registered and used the disputed domain name in bad
faith under Policy ¶ 4(a)(iii).
The Panel finds
that Complainant satisfied 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 <money-mart.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 20, 2005
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