DECISION

 

Dollar Financial Group, Inc. v. LoansMart

Claim Number: FA0108000099133

 

PARTIES

Complainant is Dollar Financial Group, Inc., Berwyn, PA (“Complainant”) represented by Hilary B. Miller.  Respondent is LoansMart, Yorba Linda, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <loansmart.com>, registered with Network Solutions.

 

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.

 

Honorable Paul A. Dorf, (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 20, 2001; the Forum received a hard copy of the Complaint on August 21, 2001.

 

On August 21, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <loansmart.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 August 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 2001 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@loansmart.com by e-mail.

 

A timely response was received and determined to be complete on September 10, 2001.

 

On October 12, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf, (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain name at issue is confusingly similar to its registered service mark, as well as its registered domain name, which incorporates its service mark; that the Respondent has no rights or legitimate interests in the domain name; and that the domain name at issue was registered in bad faith.

 

B. Respondent

The Respondent contends that the domain name at issue is not confusingly similar to Complainant’s registered service mark and corresponding domain name as Respondent presents its logo in a different color and style than the Complainant’s; that he has rights and a legitimate interest in the domain name as it describes his business; and that he did not register the domain name in bad faith.

 

FINDINGS

The Complainant is a New York corporation, offering small consumer loans.  The Complainant originates these loans either through its stores, on-line or through its toll free telephone number, all of which reflect Complainant’s service mark.

 

Complainant has been using the LOAN MART® mark in interstate commerce continuously since 1997.  The Complainant filed its registration application on an intent-to-use basis on August 18, 1997, for consumer lending services.

 

The Complainant spends a considerable sum of money in advertising its consumer financial services.  

 

The Respondent is engaged in the business of arranging third-party credit for consumer borrowers using the Internet.  The Respondent claims he is only in the business of doing home loans of $20,000 or more for California homeowners.

 

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.

 

Identical and/or Confusingly Similar

The domain name at issue incorporates the Complainant’s famous mark in its entirety. Merely adding the letter "s" between the words "loan" and "mart" does not make a distinct mark.  See Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).

 

In fact, the domain name at issue is so confusingly similar to Complainant’s mark that a reasonable Internet user may assume that the domain name is somehow affiliated with Complainant.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

 

The Respondent states that the Webmaster incorrectly registered the URL; however no attempts were made to correct the error.

 

Rights or Legitimate Interests

The Respondent has not presented any evidence to substantiate his claim, other than stating he has a California Real Estate issued license and that he registered the domain name at issue.  It appears that there are no trademark registrations for "loansmart" and the California Secretary of State (the Respondent’s home state) lists no corporation, limited liability company or limited partnership name which incorporates the domain name at issue.  

 

As both the Complainant and Respondent offer similar services, there may be confusion as to the source of the goods and services offered by the Respondent.  See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark.  Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).

 

Registration and Use in Bad Faith

As the Respondent and Complainant are engaged in similar business activities, the Respondent should have been aware of complainant’s registered service mark and could have ascertained the status of such mark from a trademark search.  See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (holding that the Respondent should have known of the Complainant’s marks at the time of registration given the widespread use and fame of the Complainant’s “Deutsche Bank” mark).

 

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.   Accordingly, for all of the foregoing reasons, it is ordered that the domain name <loansmart.com> be transferred from the Respondent to the Complainant.

 

 

Honorable Paul A. Dorf, (Ret.) Panelist

 

Dated:  October 11, 2001