CNG Financial Corporation v. Brian Payday
Claim Number: FA1602001662357
Complainant is CNG Financial Corporation (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is Brian Payday (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <check-n-go.us> ('the Domain Name'), registered with TLD Registrar Solutions Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2016; the Forum received payment on February 23, 2016.
On February 24, 2016, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <check-n-go.us> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@check-n-go.us. Also on February 24, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy ("Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the 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
The Complainant’s submissions can be summarised as follows:
Complainant has a registered trade mark for CHECK 'N GO in the USA for financial services which it has provided since 1995. It has a web site at www.checkngo.com.
The Domain Name is confusingly similar to the Complainant's CHECK 'N GO mark. The geographical TLD suffix is insignificant to the determination of confusing similarity. The dashes added into the Domain Name should simply be considered a space, leaving the Complainant’s CHECK 'N GO mark as the relevant part of the Domain Name for review. With the exception of a missing apostrophe immediate preceding the N a feature that is disallowed in a domain name the Domain name, exactly matches the Complainant's trademark.
The Domain Name was registered in 2015. The Complainant has not licensed the Respondent to use the Complainant’s marks for any purpose. The Respondent has chosen the option of personal use for its intended purpose of the .us domain name and as such it does not appear to have a bona fide intention to offer goods and services. The Respondent is not commonly known by the Domain Name.
The website offers referrals to competing financial services which are not connected with the Complaint. As such there is no non-commercial or fair use of the Domain Name.
Respondent is using the Domain Name to divert users searching for the Complainant’s services by use of a confusingly similar domain name for profit.
The Complainant’s mark is also featured on the header of the web site attached to the Domain Name.
In response to a cease and desist letter the Respondent agreed to transfer the Domain Name but did not do so. Instead it pointed the Domain Name to the Complainant's web site, but the Domain Name remains outside the Complainant's control.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has a registered trade mark for CHECK 'N GO in the USA for financial services which it has provided since 1995. It has a web site at www.checkngo.com.
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."
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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.”).
Apart from the .us suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainant’s CHECK 'N GO registered trade mark albeit with the omission of the apostrophe and the addition of hyphens which do not serve to distinguish the Domain Name from the Complainant’s CHECK 'N GO mark. See Gurney's Inn Resort & Spa Ltd. v Whitney, FA 140656 (Forum Feb 19, 2003)('Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name') ; see also Farouk Systems Inc. v Jack King/SLB, FA 176541 (Forum June 19, 2015) (finding the ccTLD .us inconsequential to a Policy 4 (a) (i) analysis.) As such the Panelist finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark CHECK 'N GO for the reasons given above and the Complainant satisfies para 4(a)(i) of the Policy.
The Panelist has had an opportunity to review the competing use of the Respondent's web site. It was not clear to the panellist upon a quick review of the site, as it was before complaint, that it was not a site authorised by the Complainant. As such the web site must be considered to have been misleading and the Respondent as having passed itself off as connected with or authorised by the Complainant by its use of the Domain Name. Passing off is evidence that the Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the Complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v Mosely FA 381256 (Nat. Arb. Forum Feb, 8 2005) (finding that the respondent's attempts to pass itself off as the complainant was evidence that the respondent lacked rights and legitimate interests.) Previous panels have also found that use by a respondent of a confusingly similar domain name to a well-known mark of the Complainant to attract Internet users to a competing web site does not constitute a bona fide offering of goods and services nor a legitimate or non-commercial fair use. Pointing the Domain Name to the Complainant’s web site subsequently cannot establish any rights and legitimate interests in the Domain Name for the Respondent. As such the panellist finds that the Respondent lacks any rights or legitimate interests in the Domain Name.
Having found that the Respondent's web
site has been confusing and misleading customers into believing it is
associated with the Complainant the panelist believes that the Respondent has attempting
to pass itself off as authorised by the Complainant and has intentionally
attempted to attract for commercial gain internet users to its web site by
creating a likelihood of confusion by using the Complainant's marks and logo as
to the source or endorsement of its web site under Para 4 (b) (iv) of the
Policy and also has caused disruption to the Complainant under Para 4 (iii) of
the Policy. See DatingDirect.com Ltd. v Aston, FA 593977 (Nat. Arb.
Forum Dec. 28 2005)('Respondent is appropriating Complainant’s mark to divert
Complainant's customers to Respondent's competing business. The Panel finds
this diversion is evidence of bad faith registration and use pursuant to Policy
4(b)(iii). Also Asbury Auto, Group, Inc. v Tex, Int'l Prop. Assocs., FA
958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent's use of the
domain name to advertise car dealerships that competed with the Complainant's
business would likely lead to confusion among Internet users as to the sponsorship
or affiliation of those competing dealerships and was therefore evidence of bad
faith registration and use pursuant to Policy 4(b)(iv). See also MathForum.com,
LLC v Weiguang Huang, D2000-0743 (WIPO Aug.17, 2000) (finding bad faith
under Policy 4(b)(iv) where the respondent registered a domain name confusingly
similar to the Complainant's mark and the domain name was used to host a
commercial web site that offered similar services offered by the Complainant
under its mark). Panels have also found that where a respondent establishes a
redirect to a complainant's own site bad faith is still evident. See Ameriquest
Mortgage CO. v Banks, D2003-0293 (WIPO June 6, 2003)(concluding that a
respondent acted in bad faith by using the domain name to redirect traffic to
the Complainant’s own web site because it interferes with the Complainant’s
ability to control its own trademarks on the Internet and creates a risk that
the respondent could collect and use Internet data about Internet users
intending to access Complainant’s web site) As such, the panelist finds that
the Domain Name has been registered and used in bad faith.
DECISION
Having established all three elements required under the usDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <check-n-go.us> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<March 29, 2016 >>
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