national arbitration forum

 

DECISION

 

Cash America Net Holdings, LLC d/b/a CashNetUSA v. Arnab Chatterjee d/b/a Karnab Web Marketing Services

Claim Number: FA0702000924545

 

PARTIES

Complainant is Cash America Net Holdings, LLC d/b/a CashNetUSA (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601.  Respondent is Arnab Chatterjee d/b/a Karnab Web Marketing Services (“Respondent”), 303, Salarpuria Money Center, 7th Block, Koramangala, Bangalore 560095, India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cashnetusa.biz>, registered with Wild West Domains, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2007.

 

On February 27, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <cashnetusa.biz> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 February 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 2007 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@cashnetusa.biz by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 27, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <cashnetusa.biz> domain name is identical to Complainant’s CASHNETUSA mark.

 

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

 

3.      Respondent registered and used the <cashnetusa.biz> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Cash America Net Holdings, LLC d/b/a CashNetUSA, is a leading online payday loan service.  Since its inception in May 2004, Complainant has sold its services to over 250,000 customers.  In connection with its money lending financial service, Complainant has registered the CASHNETUSA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,210,976 issued February 20, 2007, filed March 21, 2006).

 

Respondent registered the <cashnetusa.biz> domain name on July 19, 2006.  Respondent is a competitor of Complainant and is using the disputed domain name to redirect users to a website that offers competing services.

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s trademark registration of the CASHNETUSA mark with the USPTO sufficiently establishes Complainant’s rights in the CASHNETUSA mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., 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.”); see also 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.").

 

Although Respondent’s registration of the <cashnetusa.biz> domain name predates Complainant’s USPTO registration, Complainant’s filing date of March 21, 2006, predates Respondent’s July 2006 domain name registration.  Therefore, the Panel finds that Complainant’s rights in the mark predate Respondent’s registration of the domain name in dispute.  See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights dates back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).  

 

Respondent’s <cashnetusa.biz> domain name is identical to Complainant’s CASHNETUSA mark.  The disputed domain name uses the CASHNETUSA mark in its entirety, adding only the generic top-level domain “.biz.”  Therefore, the Panel finds the mark and disputed domain name to be identical, pursuant to Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

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

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights or legitimate interests in the <cashnetusa.biz> domain name, and thus it has established a prima facie case.  Because Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Because Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Respondent, who is a competitor of Complainant, is using the <cashnetusa.biz> domain name, which is identical to Complainant’s CASHNETUSA mark, to divert Internet users to a website which sells money lending services that compete with Complainant.  Such use of the disputed domain name does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitmate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).

 

Complainant asserts that Respondent is not authorized to use Complainant’s CASHNETUSA mark.  Moreover, Respondent’s WHOIS information does not suggest, nor does any additional information in the record suggest, that Respondent is commonly known by the <cashnetusa.biz> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); 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.”).   

 

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

 

Registration and Use in Bad Faith

 

Because the disputed domain name redirects users to a website that sells competing services and because Complainant and Respondent are competitors in the same field, the Panel finds that Respondent registered the <cashnetusa.biz> domain name for the purpose of disrupting Complainant’s business, pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where the respondent and the complainant were in the same line of business in the same market area); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).

 

Respondent is using the <cashnetusa.biz> domain name, which is identical to Complainant’s mark, to divert Internet users seeking Complainant’s lending services to a website containing Respondent’s competing services.  Therefore, Respondent is profiting from the goodwill associated with Complainant’s mark by taking commercial advantage of the confusing similarity between the disputed domain name and the mark.  Such use of the disputed domain name illustrates bad faith registration and use under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <cashnetusa.biz> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  April 10, 2007

 

 

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