Dollar
Financial Group, Inc. v American Credit and Debt, Inc.
Claim Number: FA0502000425862
PARTIES
Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT 06830-3942. Respondent is American Credit and Debt, Inc. (“Respondent”), represented by Curtis Muck, 25202 Crenshaw Blvd., Suite 214, Torrance, CA 90505.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <carloanmart.com>, registered with Go Daddy Software, Inc.
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.
Judge Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 21, 2005.
On February 22, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <carloanmart.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 14, 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@carloanmart.com by e-mail.
A timely Response was received and determined to be complete on March 14, 2005.
On
March 18, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Identical or Confusingly Similar.
Policy ¶4(a)(i)
1. Complainant is the owner of the LOAN MART service mark, registered on the Principal Register of trademark of the United States Patent and Trademark Office under Serial Number 75/342,261, Registration Number 2,192,247, for consumer lending services.
2. The disputed domain name, <carloanmart.com>, is confusingly similar to Complainant’s registered LOAN MART service mark and confusingly similar to Complainant’s own registered domain names which incorporate the LOAN MART mark.
3. Complainant, Dollar Financial Group, Inc., a New York corporation, is one of the largest national originators of small consumer loans, using the LOAN MART name and mark.
4. Since 1997, Complainant has spent millions of dollars advertising its consumer financial services and has, to date, originated over $700,000,000 in consumer loans, a substantial portion of which have been originated at Complainant’s stores bearing the LOAN MART name and logo.
5. Respondent registered the disputed domain name on or about January 23, 2005, long after the commencement of Complainant’s use of the LOAN MART mark and the registration of Complainant’s LOAN MART mark.
6. The disputed domain name fully incorporates Complainant’s registered LOAN MART mark. Accordingly, such domain name registration is deemed, without the need for any greater showing by Complainant, to be confusingly similar to Complainant’s mark.
7. The disputed domain name is confusingly similar to Complainant’s registered mark because the domain name is comprised of Complainant’s mark and a generic term that directly relates to the auto-lending business.
Rights and Legitimate Interests. Policy ¶ 4(a)(ii)
1. Respondent is neither commonly known by the <carloanmart.com> domain name nor authorized to register domain names featuring Complainant’s LOAN MART mark.
2. Respondent has made no use of the <carloanmart.com> domain name since registering it on January 23, 2005. Accordingly, non-use constitutes passive holding, and as such is neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Registration and Use in Bad Faith.
Policy ¶ 4(a)(iii)
1. At the time of registration of the disputed domain name, Respondent knew or reasonably should have known of Complainant’s registered service mark, LOAN MART, and could easily have ascertained the status of such mark from a conventional trademark search, but failed to do so. Respondent, which is apparently a direct competitor of Complainant in the consumer-lending business, should also have been aware of the use of Complainant’s registered service mark in the trade.
2. Respondent apparently is a direct competitor of Complainant in the business of consumer lending. There is a substantial likelihood that an appreciable number of consumers will be confused into believing that Complainant originates, endorses or sponsors Respondent’s services. There is no legitimate possibility that Respondent can use the mark to market consumer loans without being in direct competition with the services of Complainant.
B. Respondent
Identical or Confusingly Similar.
Policy ¶4(a)(i)
1. The disputed domain name is neither identical nor confusingly similar to Complainant’s mark because any confusion created will generate hits for Complainant’s website at <loan-mart.com>. Web surfers looking for <loan-mart.com> will not enter <carloanmart.com> by mistake.
2. Complainant’s mark is comprised entirely of the generic or descriptive terms “loan” and “mart.”
3. The addition of the term “car” and the generic top-level domain “.com” is enough to distinguish the disputed domain name from Complainant’s mark pursuant to Policy ¶4(a)(i).
Rights and Legitimate Interest.
Policy ¶4(a)(ii)
1. Respondent has made no use of the <carloanmart.com> domain name because it just registered the domain name on January 23, 2005, and has not had time to properly implement a functioning website for the domain name. Its preparations include setting a time frame during which Respondent would start to use the domain name as well as planning the design and basic layout of the future website.
2. Respondent is in the business of acting as a finder for the purpose of introducing individuals and entities looking for car loans with lenders in the business of making car loans. Respondent generates “leads” by allowing e-mail marketers and other website owners to drive traffic to websites owned by Respondent through mass mailings, text links and banners that link the potential borrowers to Respondent’s websites, the leads then being transferred to various lenders. Currently, Respondent generates leads through <autoloanapprovedtoday.com> and <carloangenie.com>. In order to keep generating fresh leads, Respondent needs to start a new site with a new name and fresh logo every few months because the e-mail marketers and other website owners prefer to run fresh offers, and they will not run the same offers after a period of time. Therefore, appropriate and attractive names need to be sought after and registered by Respondent before all such names are registered by others. The disputed domain name is both attractive and appropriate for Respondent’s finder business completely separate from Complainant and its mark, web presence or advertising. Respondent has a legitimate interest in the disputed domain name.
Registration and Use in Bad Faith.
Policy ¶4(a)(iii)
1. Complainant’s website, located at <loan-mart.com> does not even offer automobile loans, but rather offers check cashing, cash until payday loans, loans collateralized by tax refunds and pre-paid credit card services. Accordingly, Respondent’s use of the disputed domain name will not in any way compete with Complainant.
2. Web surfers looking for <loan-mart.com> will not enter <carloanmart.com> by mistake. The cases cited by Complainant deal with domain names that could be easily entered in error by surfers such as <eloanmart.com> and <loanmart.com>. There is no evidence that Respondent is trying to prevent Complainant from reflecting its mark in a domain name. To the contrary, Complainant has a website at <loan-mart.com> that apparently has been running for years that is more accurate to Complainant’s mark.
3. Respondent registered the domain name very recently. It plans to start utilizing the domain name by the middle of 2005. Even though cases do state that passive holding is evidence of bad faith, those cases all deal with situations where there was no response to the Complaint.
FINDINGS AND
DETERMINATIONS
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.
Primarily, it is to be noted that the various ingenious attempts to utilize the principal components of the Complainant’s registered mark, i.e., “loan mart” as a domain name, as here, have been extensively arbitrated.
Such arbitration (all ordering transfer) includes the decisions in Dollar Fin. Group, Inc. v. Roark, FA 93671 (Nat. Arb. Forum Mar. 7, 2000) (<loanmart.net> and <loanmart.org>); Dollar Fin. Group, Inc. v. Same, FA 94734 (Nat. Arb. Forum June 8, 2000) (<theloanmart.org> and <theloanmart.net>); Dollar Fin. Group, Inc. v. Analytical Servs., FA 95106 (Nat. Arb. Forum July 24, 2000) (<loanmartusa.com>); Dollar Fin. Group, Inc. v. RXW Mgmt., FA 95108 (Nat. Arb. Forum Aug. 4, 2000) (<onlineloanmart>); Dollar Fin. Group, Inc. v. Advanced Legal Sys., Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (<loanmart.com>); Dollar Fin. Group, Inc. v. The Diapers, FA 95423 (Nat. Arb. Forum Oct. 2, 2000) (<euloanmart.com> and <euroloanmart.com>); Dollar Fin. Group, Inc. v. Pavon Fin. Corp., FA 95836 (Nat. Arb. Forum Nov. 29, 2000) (<loans-mart.com>); Dollar Fin. Group, Inc. v. VQM Net, FA 96101 (Nat. Arb. Forum Jan. 25, 2000) (<auto-loan-mart.com>); Dollar Fin. Group, Inc. v. First Alliance Mortgage, FA 96213 (Nat. Arb. Forum Sept. 7, 2001) (<theloanmart.com>); Dollar Fin. Group, Inc. v. MH2, FA 96775 (Nat. Arb. Forum Apr. 3, 2001) (<shoploanmart.com>); Dollar Fin. Group, Inc. v. Sys. Dev., FA 97293 (Nat. Arb. Forum June 22, 2001) (<eloanmart.com>); Dollar Fin. Group, Inc. v. EZLoanMart, FA 97309 (Nat. Arb. Forum June 25, 2001) (<ezloanmart.com>); Dollar Fin. Group, Inc. v. Ming Hing Kwok, FA 146225 (Nat. Arb. Forum Mar. 31, 2003) (<loanmarts.com>); Dollar Fin. Group, Inc. v. Shorten, FA 371792 (Nat. Arb. Forum Jan. 25, 2005) (<loansmart.org>). Complainant has also prevailed in federal court litigation with respect to its mark involving the <ezloanmart.com>, <mortgageloanmart.com> and <homeloanmart.com> domain names through the litigation in Dollar Fin. Group, Inc. v. House, No. 3:04cv1301 (S.D. Cal. Nov. 22, 2004), and with respect to the domain name <loan-marts.com> in Loanmarts.com, Inc. v. Dollar Fin. Group, Inc., No. 3:03cv01573 (N.D. Cal. Aug. 21, 2003).
The decision in Dollar Fin. Group, Inc. v. VQM Net, FA 96101 (Nat. Arb. Forum Jan. 25, 2001) by the highly respected panelist, Peter L. Michaelson, Esq., involving the disputed domain name, <auto-loan-mart.com>, appears to be substantially analogous to the disputed domain name here, <carloanmart.com>. Reference, accordingly, will be made to Mr. Michaelson’s decision where appropriate.
There can be little doubt that the disputed domain name is confusingly similar to Complainant’s mark, and it is so found.
This is because the disputed domain name incorporates the mark in its entirety and adds the term “car,” a term associated with Complainant’s auto loan services. See Arthur Guinness Sons & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).
By virtue of the decision of the Examining Attorney at the USPTO to register Complainant’s mark, after the disclaimer of the term “mart” by Complainant, Respondent’s generic claim is without merit.
Moreover, the addition of the generic top-level domain “.com” is insufficient to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is. . .without legal significance since use of a gTLD is required of domain name registrants.”).
Mr. Michaelson states in the “<auto-loan-mart.com>” decision, supra, at pages 6-7:
It is beyond question that confusion would likely arise when and if the Respondent, or any third-party not affiliated with the Complainant to which the Respondent were to transfer the contested domain name, or were to start using the contested domain name in conjunction with goods and/or services similar to those of the Complainant. Such confusion, should it occur, would undoubtedly cause Internet users intending to access the Complainant’s website, but who reach a website through the contested domain name, to think that an affiliation of some sort exists between the Complainant and the Respondent or its third-party transferee, when, in fact, no such relationship would exist at all. See Treeforms, Inc. v. Cayne Indus. Sales Corp. FA 95856 (Nat. Arb. Forum Dec. 18, 2000), Pep Boys Manny, Moe and Jack of Ca. v. E-Commerce Today, Ltd. AF-0145 (eResolution May 3, 2000).
With respect to the alleged difference between car loans and consumer loans as urged by Respondent, the determination of Mr. Michaelson on page 8 of his <auto-loan-mart.com> decision, supra, is correct, and directly applicable here. He said:
Given that, the Panel believes that the addition of the term ‘AUTO’ to the contested domain name not only fails to ameliorate the confusion, but also, by virtue of the Complainant and the Respondent (the latter through one of its affiliates, as discussed below, to which Internet users, who enter the contested domain name, are re-directed) offering competing financial services, likely increases its occurrence. In that regard, those Internet users, including but not limited to those customers of the Complainant, who might think that the Complainant offers automobile loan services – which is a reasonable view given that the Complainant provides various type of consumer loan services – might very well attempt to reach the Complainant’s site by prepending the term ‘AUTO’ to the mark ‘LOAN MART’ to form a domain and then adding a common top level domain, such as ‘.com’ to the result; hence, possibly forming ‘AUTO-LOAN-MART.com’. However, unbeknownst to each of them until after (s)he enters this domain name as an address (URL) into his(her) browser, doing so will not transport that individual to the Complainant’s site, but to that of an affiliate of the Respondent, which, as discussed below, has no relationship with the Complainant; hence causing confusion.
Complainant has met
the requirements of Policy ¶ 4(a)(i).
It is found that Respondent is neither commonly known by the <carloanmart.com> domain name nor authorized to register domain names featuring Complainant’s LOAN MART mark. Thus, it is determined that Respondent lacks rights and legitimate interests in the disputed domain name 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 Compagnie de Saint Gobain v. Com-Union Corp.. D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Mr. Michaelson dealt directly with the issue of Policy ¶ 4(a)(ii) as argued by Respondent in the <auto-loan-mart.com> decision, supra, at page 9, as follows:
In that regard, the Panel finds that the Respondent’s efforts in registering the contested domain name and simply using it as a means to re-direct Internet users to a web site of an affiliate of the Respondent that has no connection whatsoever with the Complainant, fail to constitute a bona fide commercial offering of goods or services under the contested domain name. The illegitimacy is compounded by the fact that the contested domain name, which includes the Complainant’s registered mark, ultimately transports Internet users to the affiliate’s web site, where the affiliate has apparently no relationship with the Complainant, but through which services are offered which compete with those of the Complainant. It is simply beyond question that such activity might very well be diverting Internet users to the affiliate’s site who otherwise might be attempting to seek information, on automobile financing, from the Complainant.
Complainant has met
the requirements of Policy ¶ 4(a)(ii).
It is determined that Respondent registered the <carloanmart.com> domain name with actual or constructive knowledge of Complainant’s rights in the LOAN MART mark due to Complainant’s registration of the mark with the USPTO. It is, accordingly, concluded that registration of a domain name featuring a famous mark, with actual or constructive knowledge of another’s rights in the mark, as here, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).
Moreover, the candid explanation of the intent and the proposed use of the disputed domain name by Respondent does, of itself, establish bad faith registration and use.
Again, the decision in <auto-loan-mart.com>, supra, gives us direction. At pages 10-11, Mr. Michaelson states:
In that regard, the Panel points to the Respondent’s continued use, since its registration some nine months ago, of the contested domain name, which includes the Complainant’s registered mark LOAN MART, as a vehicle to automatically re-direct Internet users to a web site maintained by an affiliate of the Respondent, and one which offers competing services to those offered by the Complainant – even though absolutely no connection or affiliation whatsoever exist between the Complainant and either the Respondent or its affiliate. Furthermore, by virtue of the compensation scheme in place between the Respondent and its affiliate, through which the Respondent is paid by its affiliate for the referrals, the Respondent has a clear pecuniary incentive to not only perpetuate but also increase the number of Internet users that it re-directs to its affiliates, and hence the number of users that experience consumer confusion. Increasing that number obviously increases the number of such users who will ultimately inquire about consumer lending services from the Respondent thinking these services emanate from the Complainant, when in fact they do not, and ultimately for which the Respondent will receive compensation.
“Paragraph 4(b) of the Policy states, in pertinent part, ‘the following circumstances. . .shall be evidence of the registration and use of a domain name in bad faith:
‘. . .(iv) by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.’
Therefore, the Panel concludes that the Respondent’s registration and continued use of the domain name clearly constitutes, a violation of Paragraph 4(b)(iv) of the Policy inasmuch as the website of Respondent’s affiliate falls within an ‘other on-line location’.
It is here determined and found that Policy ¶ 4(a)(iii) is applicable.
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 <carloanmart.com> domain name be TRANSFERRED from Respondent to Complainant.
JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: April 1, 2005
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