Dollar Financial Group, Inc. v. Mark
Gebbia
Claim
Number: FA0509000558367
Complainant is Dollar Financial Group, Inc. (“Complainant”),
represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT 06830-3942. Respondent is Mark Gebbia (“Respondent”) P.O. Box 303, Bedford, TX 76021.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cashuntillpayday.net>, registered with Fabulous.com
Pty Ltd.
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 September
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 13, 2005.
On
September 12, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the <cashuntillpayday.net> domain name is
registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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
September 13, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 3, 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@cashuntillpayday.net by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 7, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cashuntillpayday.net>
domain name is confusingly similar to Complainant’s CASH ‘TIL PAYDAY mark.
2. Respondent does not have any rights or
legitimate interests in the <cashuntillpayday.net> domain name.
3. Respondent registered and used the <cashuntillpayday.net>
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 “payday loans” from banks and others using the CASH ‘TIL PAYDAY
mark. Complainant has registered the
CASH ‘TIL PAYDAY mark (Reg. No. 1,987,764 issued July 16, 1996) with the United
States Patent and Trademark Office (“USPTO”) in connection with these financial
services.
Respondent
registered the <cashuntillpayday.net> domain name on March 22,
2002. Respondent’s domain name resolves
to a website offering services in competition with Complainant’s business.
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 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 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 CASH ‘TIL PAYDAY mark through registration 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 [or]
have acquired secondary meaning”); 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.”).
Complainant
contends that Respondent’s <cashuntillpayday.net> domain name is
confusingly similar to Complainant’s CASH ‘TIL PAYDAY mark. Respondent’s domain name contains a similar
version of Complainant’s mark, as it fully spells out the term “until,” a term
that appears in its abbreviated form “’til” in Complainant’s mark, and adds the
letter “l.” The Panel finds that such
alterations to Complainant’s registered mark fail to sufficiently distinguish
Respondent’s domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a the respondent does not create
a distinct mark but nevertheless renders the domain name confusingly similar to
the complainant’s marks); see also Marriott Int'l,
Inc. v. Seocho, FA 149187 (Nat. Arb. Forum
Apr. 28, 2003) (finding that the respondent's <marrriott.com>
domain name was confusingly similar to the complainant's MARRIOTT 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 <cashuntillpayday.net>
domain name. 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 infers that Respondent does not have
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 a right or
legitimate interest does exist).
Respondent is
using the confusingly similar <cashuntillpayday.net> domain name
to operate a website that competes directly with the business in which
Complainant engages. The Panel finds
that such use is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); see also Coryn
Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
Furthermore, no
affirmative evidence has been set forth showing that Respondent is either
commonly known by the disputed domain name or authorized to register a domain
name that features Complainant’s mark pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s prior rights in the domain name precede the respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <cashuntillpayday.net> domain name to operate a website
that offers services in direct competition with Complainant. The Panel finds such diversionary use is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent
registered the domain name in question to disrupt the business of the
complainant, a competitor of the respondent); see also Gen. Media Commc’ns, Inc. v. Vine Ent.,
FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor
of the complainant registered and used a domain name confusingly similar to the
complainant’s PENTHOUSE mark to host a pornographic web site).
Furthermore,
Respondent’s use of the disputed domain name in competition with Complainant’s
business will likely cause confusion as to Complainant’s sponsorship of and
affiliation with the resulting website.
Such attraction for commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see also Amazon.com, Inc. v. Shafir,
FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”).
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 <cashuntillpayday.net> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 19, 2005
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