Dollar Financial Group, Inc. v. Bae Jun Mo
Claim Number: FA0511000590804
Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT, 06830-3942. Respondent is Bae Jun Mo (“Respondent”), 632-152 Geumam2-dong, Deokjin-gu, Jeonju-si, Jeollabuk-do, 561182, Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <eloanmart.net>, registered with Gabia,Inc.
The undersigned certifies that she 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 November 1, 2005; the National Arbitration Forum received a hard copy of the Complaint November 3, 2005. The Complaint was submitted in both Korean and English.
On November 7, 2005, Gabia,Inc. confirmed by e-mail to the National Arbitration Forum that the <eloanmart.net> domain name is registered with Gabia,Inc. and that Respondent is the current registrant of the name. Gabia,Inc. verified that Respondent is bound by the Gabia,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 November 15, 2005, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 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@eloanmart.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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, <eloanmart.net>, is confusingly similar to Complainant’s LOAN MART mark.
2. Respondent has no rights to or legitimate interests in the <eloanmart.net> domain name.
3. Respondent registered and used the <eloanmart.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dollar Financial Group, Inc., 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 <eloanmart.net>
domain name June 20, 2005. Respondent
is using the disputed domain name to redirect Internet users to Respondent’s
commercial website featuring links to various third-party 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 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 established by extrinsic evidence in this proceeding that it has rights in the LOAN MART 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 contended that the disputed domain name, <eloanmart.net>, is confusingly
similar to Complainant’s LOAN MART mark.
Respondent’s disputed domain name incorporates Complainant’s mark in its
entirety and adds the letter “e” and the generic top-level domain “.net.” The Panel finds that these additions to
Complainant’s registered mark fail to sufficiently distinguish Respondent’s <eloanmart.net>
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 respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Int’l Data Group, Inc. v. Maruyama
& Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain
name <ecomputerworld.com> is confusingly similar to the complainant’s
mark, COMPUTERWORLD); see also Nev. State Bank v. Modern Ltd. – Cayman Web
Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established
that the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name. Complainant alleged that Respondent does not have rights or legitimate interests in the <eloanmart.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 finds 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 <eloanmart.net> domain name, which is confusingly similar to Complainant’s mark, to operate a website that provides links to various third-party websites from which Respondent presumably receives referral fees. Previous panels have held that such diversionary use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Furthermore, no evidence has been set forth showing that
Respondent is either commonly known by the <eloanmart.net> domain
name or that Respondent was authorized to register a domain name that features
Complainant’s mark, 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 Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding respondent does not have rights
in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith. Respondent is using the <eloanmart.net>
domain name to divert Internet users to Respondent’s commercial website
featuring links to various third-party websites for Respondent’s commercial
gain. Panels have held that such use
causes confusion among Internet users as to a complainant’s sponsorship of or
affiliation with the resultant website.
The Panel finds that such conduct 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 Identigene,
Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site).
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 <eloanmart.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 22, 2005
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