Tradition Media Group, LLC v. pham huy
Claim Number: FA2302002030928
Complainant is Tradition Media Group, LLC (“Complainant”), represented by Mark Bagley of Tolpin & Partners, PC, Illinois, USA. Respondent is pham huy (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <maxcash.us> and <maxcashtitleloans.us>, registered with NameCheap, Inc..
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.
Complainant submitted a Complaint to Forum electronically on February 7, 2023; Forum received payment on February 7, 2023.
On February 8, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <maxcash.us> and <maxcashtitleloans.us> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2023 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@maxcash.us, postmaster@maxcashtitleloans.us. Also on February 21, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <maxcash.us> and <maxcashtitleloans.us> domain names are confusingly similar to Complainant’s MAXCASH mark.
2. Respondent does not have any rights or legitimate interests in the <maxcash.us> and <maxcashtitleloans.us> domain names.
3. Respondent registered and uses the <maxcash.us> and <maxcashtitleloans.us> domain names in bad faith.
B. Respondent did not file a Response.
Complainant, Tradition Media Group, LLC, offers financial services and holds a registration for the MAXCASH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 6,014,321, registered on March 17, 2020).
Respondent registered the <maxcash.us> and <maxcashtitleloans.us> domain names on January 24, 2022 and January 26, 2022, respectively, and uses them to pass off as and compete with Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Respondent’s <maxcash.us> and <maxcashtitleloans.us> domain names use Complainant’s MAXCASH mark and simply add the “.us” ccTLD and, in one case, the descriptive terms “title loans”. Under Policy ¶ 4(a)(i), adding a descriptive term and a ccTLD does not distinguish a disputed domain name from a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds that Respondent’s <maxcash.us> and <maxcashtitleloans.us> domain names are confusingly similar to Complainant’s MAXCASH mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant asserts that Respondent has no rights or legitimate interests in the <maxcash.us> and <maxcashtitleloans.us> domain names, as Respondent is not commonly known by the domain names and Complainant has not authorized or licensed Respondent to use its MAXCASH mark. The WHOIS information identifies Respondent as “Pham Huy.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(iii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”)
Complainant asserts that Respondent is not using the <maxcash.us> and <maxcashtitleloans.us> domain names for a bona fide offering of goods or services or a noncommercial or fair use. Under Policy ¶¶ 4(c)(ii) and (iv), passing off as a complainant is not a bona fide offering of goods or services or a noncommercial or fair use. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”) Complainant provides screenshots of the webpages resolving from <maxcash.us> and <maxcashtitleloans.us>, which display Complainant’s logo, text and pictures from Complainant’s webpage, and offer links to the services offered by Complainant. The Panel finds that this is not a bona fide offering of goods or services or a noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(ii) or (iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent offered to sell the <maxcash.us> and <maxcashtitleloans.us> domain names to Complainant and provides evidence of Respondent’s offer to sell the <maxcash.us> domain name for $50,000 and the <maxcashtitleloans.us> domain name for $5,000. The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“Respondent replied to a demand letter from Complainant with an offer to sell the domain name for $1 million, which it later lowered to $800,000, grossly over out-of-pocket costs. The Panel finds that this is evidence of bad faith under Policy ¶ 4(b)(i).”)
Complainant asserts that Respondent uses the disputed domain names to pass off as Complainant and to competes with Complainant’s. Using a disputed domain name to pass off as a complainant and offer competing services constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel finds that Respondent registered and uses the disputed domain names to disrupt Complainant’s business and compete with Complainant, demonstrating bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the MAXCASH mark when it registered the disputed domain names. The Panel agrees, noting that Respondent uses the disputed domain names to pass off as and directly compete with Complainant, demonstrating further bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maxcash.us> and <maxcashtitleloans.us> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 23, 2023
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