Payday Loan Store of Illinois, Inc. v. Domain
Administrator
Claim Number: FA0510000578641
PARTIES
Complainant is Payday Loan Store
of Illinois, Inc. (“Complainant”), represented by Cynthia A. Casby, of Holland & Knight LLP, 633 W. Fifth Street, Suite 2100, Los
Angeles, CA 90071. Respondent is Domain Administrator (“Respondent”),
P.O. Box 232471, San Diego, CA 92023.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paydayloanstore.com>,
registered with Moniker Online Services,
Inc.
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.
Richard DiSalle is the Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 17, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 20, 2005.
On October 24, 2005, Moniker Online Services, Inc. confirmed by e-mail
to the National Arbitration Forum that the <paydayloanstore.com>
domain name is registered with Moniker Online Services, Inc. and that the
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, 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 October 25, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 14, 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@paydayloanstore.com by
e-mail.
A timely Response was received and determined to be complete on November
14, 2005.
On November 21, 2005 an Additional Submission received from Complainant
was considered by the panelist as it was timely filed.
On November 22, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard DiSalle as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant, Payday Loan Store of Illinois, Inc., (hereinafter
"PLS") is the owner of the well-known and famous mark PAYDAY LOAN STORE. Complainant, along with
its sister operations PLS Financial Services, PLS Check Cashers, PLS Realty,
and PLS Charities, operates more than 200 stores in seven states, filling a gap
in the lending industry by providing small, short-term loans not available from
traditional lenders. Complainant is a
third generation family-owned business founded in 1939. Complainant grew to its present size and
success through hard work and dedication, and now employs more than 1,500
people nationwide with revenues in excess of $80 million and a growth rate
exceeding 25% annually. PAYDAY LOAN
STORE, and its commonly owned sister companies in the PLS Financial family, are
well known nationwide.
Complainant owns the registered U.S. Trademark PAYDAY LOAN
STORE, as evidenced by its United States Patent and Trademark Office
registration: U.S. Trademark No. 2,474,727 PAYDAY LOAN STORE in International Class 36 for “[f]inancial services, namely, short-term
loans to be repaid on payday and secured by a post-dated personal check.” Furthermore, Complainant's parent, PLS
Financial Services, Inc., ("PLS Financial") possesses the right to
use the corporate name PAYDAY LOAN STORE in geographically designated
variations, in the following jurisdictions using the following names: The
Payday Loan Store of Arizona, Inc., Payday Loan Store of California, Inc.,
Payday Loan Store of Calumet City, Payday Loan Store of Illinois, Inc., Payday
Loan Store of Wisconsin, Inc., Payday Loan Store of Mississippi, Inc., Payday
Loan Store of Alabama, Inc., and Payday Loan Store of Indiana, Inc.
Complainant has made exclusive and continuous use of the mark PAYDAY LOAN STORE in connection with consumer lending services since at least as early as the date of first use of its trademark, August 1997. Complainant presently operates 200+ branded consumer-lending outlets throughout seven states within the United States. PLS Financial advertises its PAYDAY LOAN STORE brand using newspapers, television, cable, radio and, outdoor media. Since 2001, it has spent approximately $2 million dollars to promote its brands. In addition, PLS Payday Loan Store has bought significant Yellow Page advertising in 8 states and over 25 markets, estimating its 2005 investment in Yellow Page advertising alone to be approximately $1.3 million. In addition, Complainant uses in-store signage and flyer hand-outs to promote its mark and build awareness of its brand. Complainant also operated a website at the disputed domain name until 2003, when it let the name accidentally expire. The name was then acquired by successive third parties, ending with the Respondent. As Respondent has blocked the Internet Archive with a "robots.txt" file, evidence of Complainant's prior use of the domain name could not be obtained.
As the result of Complainant’s long use, significant advertising and promotional efforts, extensive sales, and the high and consistent quality of consumer lending and related financial services offered by Complainant under the trademark PAYDAY LOAN STORE, Complainant’s mark has become nationally known as an indicator of the source of Complainant’s consumer lending and related services and as a symbol of the goodwill and reputation of Complainant.
The disputed domain name, <paydayloanstore.com>, is identical to and completely contains Complainant's registered trademark PAYDAY LOAN STORE, leading to a likelihood of confusion for consumers seeking Complainant's business. The only difference between the domain name and Complainant’s PAYDAY LOAN STORE mark is the absence of spaces between the words of the mark and the addition of the top-level domain (gTLD) “.com.” These changes are inconsequential and therefore the disputed domain name is identical to Complainant’s Registered trademarks
Complainant has continuously used and promoted its PAYDAY LOAN STORE trademark since at least 1997. Respondent registered the disputed domain name on November 29, 2004, and has posted a click-through revenue site on the disputed domain name that is largely identical to hundreds of other sites also registered by Respondent for the purpose of reselling domain names. While holding those domain names, Respondent "parks" the names on pages containing "click-through" and “pay-per-click” revenue-generating hyperlinks to Complainant’s competitors that profit Respondent at Complainant’s expense. Under the Policy, the Respondent bears the burden of proving that it has rights or a legitimate interest in the disputed domain name in question. See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000). In the present case, Respondent cannot meet this burden because Respondent has no rights in the PAYDAY LOAN STORE trademark. Respondent is not known by the name PAYDAY LOAN STORE, nor does Respondent have any connection or affiliation whatsoever with the Complainant.
Respondent clearly has no connection to Complainant's business. Complainant's logo does not appear anywhere on the website posted at the disputed domain name. No link on Respondent's website leads to Complainant's business. Instead, Complainant's trademark is used repeatedly on the website to represent the goods and services of others. This classic "bait-and-switch" use is not a bona fide use of the disputed domain name. See Nikon, Inc. v. Technilab, D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
Complainant's PAYDAY LOAN STORE mark was well known and famous long
prior to the date upon which Respondent registered and used the disputed domain
name which incorporates Complainant's entire trademark. In continuous use for at least eight years,
Complainant's PAYDAY LOAN STORE mark,
and its geographical variations, has become well known and famous in seven
states as a symbol of the source and quality of Complainant's services and long
before the time when Respondent registered and used the confusingly similar
domain name incorporating the mark.
The WHOIS registration demonstrates that
Respondent first registered the domain name <paydayloanstore.com>
on November 29, 2004, seven years after Complainant launched its famous PAYDAY
LOAN STORE brand to consumers. Respondent's recent registration and use of
the domain name incorporating the entirety of Complainant's well-known mark in
connection with the marketing of competing services readily establishes
Respondent's bad faith.
The <paydayloanstore.com> domain name, or "Payday Loan Store," is a generic common keyword that is used extensively by numerous companies and people not affiliated with Complainant. Respondent is clearly not using the domain name for the purpose of tarnishing the Complainant's alleged mark, and it has not registered the domain name as part of a pattern to prevent the Complainant from reflecting its alleged trademark in a domain name. The fact is that other domain variations of "paydayloanstore" are currently unregistered and freely available to the Complainant to purchase (<paydayloanstore.biz>, <paydayloanstore.us>, <paydayloanstore.web>, etc.).
Respondent did not register the <paydayloanstore.com> domain name because it incorporated Complainant’s mark – or any other mark. Respondent registered the disputed domain because it had been deleted and made available for anyone to register. The term “payday loan store” is subject to substantial third party use on thousands of Internet web pages, so it is certainly not a term exclusively associated with Complainant. Complainant does not have exclusive rights to the generic and widely used term “payday loan store,” which is subject to this substantial third party use.
ICANN has instituted certain procedures specifically to enable registrants to renew expired domain names and thus to prevent the registration of the newly expired domain name by another party. When a domain name expires, the Registrar requests that the Registry delete the domain name. This request triggers a 30-day Redemption Grace Period, during which the original registrant can still renew the soon-to-be-deleted domain name. During this 30-day redemption grace period, any web sites or Internet services linked to the domain name in question are disabled.
The <paydayloanstore.com> domain name was therefore inactive and disabled for more than 30 days, during which time Claimant had the ability to renew at anytime. If the <paydayloanstore.com> domain name was such an important web site (as Claimant has alleged), it is counter intuitive to believe that he was unaware of that domain name’s disablement and inactivity during the 30 day ICANN Redemption Grace Period.
Respondent's business operations include, in part, registering a portfolio of domain names that incorporate common and generic terms, short terms and useful phrases. Respondent seeks to obtain such domain names by attempting to register presumptively abandoned and expired domain names, which have dropped from registration. When it acquires a domain name, Respondent "parks" the domain by pointing it to a page of general interest links. Then the Respondent creates a search page with corresponding search terms that are connected to the domain name's content. The domain name is then used in conjunction with a third-party advertising subscription database operated by an advertising consolidator, which is based on the nexus between terms in the domain name and those search terms for which advertisers have paid subscriptions on a performance basis. Respondent derives substantial revenue from its targeted web traffic business, and does not register domain names only for resale.
However, it is well established that the sale of generic domain names constitutes a bona fide offering of goods and services where a respondent is unaware of a party’s rights in a mark. Complainant has failed to provide even a shred of evidence of bad faith on Respondent's part. Complainant has offered no evidence of any kind demonstrating that Respondent had any knowledge of its mark or business operations at the time the disputed domain was registered, or that it registered the <paydayloanstore.com> domain name to sell to Complainant to disrupt its business, or to prevent it from acquiring a domain name incorporating its trademark, or to confuse users. The truth is that Respondent neither knew nor should have known of the existence of Complainant or its alleged trademark when it registered the disputed domain. There is no proof of bad faith.
C. Complainant’s Additional
Submissions
Respondent formerly listed the disputed domain name as "for sale" on its face. Since receiving this Complaint, Respondent has altered the content of the website, removing this blatant offer for sale from this site. The prior version of the site included a banner with an "Interested In This Website?" link leading to a form for contact information of those interested in purchasing the domain name. Respondent admits in its Response that it is in the business of domain name speculation, what is often termed "warehousing." In addition to the advertisement on the site at the disputed domain name, Respondent offered the name for sale, along with thousands of others, on Respondent's website "VirtualClicks.com." Respondent's site offers "premium" domain names for sale at prices of "at least $1000 or more than $25,000," through lists of registered names sorted by industry, alphabetically, and as "showcase" domain names.
Respondent is a very sophisticated net citizen, who for many years has held himself out to be an expert in online marketing, teaching others through his writings. Mr. Farris has been identified through his name, companies, addresses, cross posting, and online publications as being the owner, co-founder, or otherwise affiliated with a number of on line businesses owned and/or operated by The JacLind Corporation which appears to own and/or operate many websites and companies.
Respondent states that Complainant has not produced even a "shred of evidence of bad faith on Respondent's part." Respondent clearly has its own idea of what constitutes bad faith. Admittedly, there is a split in authority in ICANN decisions, and the Internet community, as to what constitutes bad faith under the Policy. ICANN decisions seem split between those cited by Respondent that require malicious intent and foreknowledge of a trademark, and those cited by Complainant that infer bad faith from the totality of the circumstances of the use the disputed domain name is put to after registration.
Here, contrary to Respondent's statements, Complainant has provided evidence to make out a prima facie case of bad faith under the standards described above. Even if Respondent didn’t know of Complainant’s mark at the time it was registered, as it claims in its Response, it was notified of Complainant’s valid trademark in July 2005. So discounting constructive knowledge as discussed above, since that time Respondent has had actual knowledge of Complainant's trademark, yet it continues to use the disputed domain name to sell the services of Complaint’s competitors to its admittedly significant profit. This is clearly “bad faith” use under the UDRP, even under cases otherwise friendly to Respondent's position.
FINDINGS
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that
the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 asserts that it has established rights in the PAYDAY LOAN
STORE mark by registering it with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,474,727 issued August 7, 2001). 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.”).
Complainant argues that the <paydayloanstore.com> domain name is identical to
Complainant’s PAYDAY LOAN
STORE mark because
the only difference between the mark and the domain name is the addition of the
generic top-level domain “.com.” The
Panel finds that such a minor addition to Complainant’s registered mark is
insufficient to negate the identical aspects of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See
Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov.
15, 2000) (stating that the panel should resolve whether a mark is identical or
confusingly similar “by comparing the trademark and the disputed domain name,
without regard to the circumstances under which either may be used”); 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”); see also Daedong-USA, Inc. 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).”).
Once Complainant makes a prima facie case regarding Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the 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 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); 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).
Respondent’s use of a domain name identical
to Complainant’s PAYDAY LOAN STORE mark to redirect Internet users interested
in Complainant’s products and services to Respondent’s website, containing
links to products and services in direct competition with Complainant’s
business, is not a use in connection with 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 Disney Enters., Inc. v. Dot Stop, FA 145227
(Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use
of the complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
disputed domain names); see also
Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat.
Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is
blank but for links to other websites, is not a legitimate use of the domain
names); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002)
(finding that, because the respondent's sole purpose in selecting the domain names
was to cause confusion with the complainant's website and marks, its use of the
names was not in connection with the offering of goods or services or any other
fair use).
Respondent is not commonly known by the <paydayloanstore.com> domain name and has not been licensed or
otherwise authorized by Complainant to use the PAYDAY LOAN STORE mark. Respondent has not established rights or
legitimate interests in the domain name 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 interest 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).
Respondent registered the identical <paydayloanstore.com> domain name in order to promote goods and services that compete with Complainant’s goods and services. Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competed with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Gorstew Ltd. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from the respondent travel agency to the complainants, who operated Sandals hotels and resorts).
Respondent commercially benefits when Internet users searching under Complainant’s mark are diverted to Respondent’s website, and is capitalizing on the confusing similarity of its domain name to benefit from the valuable goodwill that Complainant has established in its mark. Thus, Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used an infringing domain name to attract users to a website sponsored by the respondent).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paydayloanstore.com>
domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: December 6, 2005
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