Dollar Financial Group. Inc. v. Majeed
Mokhtari
Claim
Number: FA0505000475182
Complainant is Dollar Financial Group, Inc. (“Complainant”),
represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT
06830-3942. Respondent is Majeed Mokhtari (“Respondent”), P.O.
Box 21361, Lehigh Valley, PA 18002-1361.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <1stloanmart.net> and <1stloanmart.com>,
registered with Domainbank.com.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 13, 2005.
On
May 16, 2005, Domainbank.com confirmed by e-mail to the National Arbitration
Forum that the domain names <1stloanmart.net> and <1stloanmart.com>
are registered with Domainbank.com and that Respondent is the current
registrant of the names. Domainbank.com
has verified that Respondent is bound by the Domainbank.com 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
May 18, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 7, 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@1stloanmart.net and postmaster@1stloanmart.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 16.2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <1stloanmart.net>
and <1stloanmart.com> domain names are confusingly similar to
Complainant’s LOAN MART mark.
2. Respondent does not have any rights or
legitimate interests in the <1stloanmart.net> and <1stloanmart.com>
domain names.
3. Respondent registered and used the <1stloanmart.net>
and <1stloanmart.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Dollar Financial Group, Inc., is one of the
largest national originators of small and short-term consumer loans.
Complainant holds a registration with the United States Patent and
Trademark Office (“USPTO”) for the LOAN MART mark (Reg. No. 2,192,247 issued September
29, 1998). Complainant has used the
mark in interstate commerce since at least as early as 1997. Complainant has spent millions of dollars
advertising its consumer financial services and has originated over
$700,000,000 in consumer loans. Additionally,
Complainant originates loans online via various websites at numerous domain
names, including the <loanmart.net> domain name.
Respondent registered the <1stloanmart.net> and <1stloanmart.com>
domain names on April 12, 2005.
Respondent has not made any use of the disputed domain names. Additionally, subsequent to receiving a
cease and desist letter from Complainant, Respondent demanded payment of more
than $300 for transfer of the disputed domain name registrations.
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.
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.
Complainant has
provided evidence that it holds a registration for the LOAN MART mark with the
USPTO. Registration of its mark with a
governmental authority establishes presumptive rights in Complainant’s mark
under the Policy. Therefore, in the
absence of a response from Respondent, the Panel is left with no evidence to
dispute Complainant’s prima facie case of rights. The Panel finds that Complainant has
established rights in the LOAN MART mark under Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that 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, and
that the respondent has the burden of refuting this assumption).
The <1stloanmart.net>
and <1stloanmart.com> domain names incorporate Complainant’s LOAN
MART mark in its entirety and add only the numeric designation “1st” and a
generic top-level domain (“gTLD”). Such
minor additions to Complainant’s registered mark do not succeed in
distinguishing the domain names from Complainant’s mark. Therefore, the Panel concludes that the
disputed domain names are confusingly similar to Complainant’s mark 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 Am. Online, Inc. v. iDomainNames.com, FA
93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain
name <go2AOL.com> was confusingly similar to the complainant’s AOL mark);
see also Omnitel Pronto Italia
S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the
contested <omnitel2000.com> domain name was confusingly similar to the
OMNITEL trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
When left with
no response from Respondent to rebut any of Complainant’s contentions, 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.”).
Complainant
contends that Respondent does not have rights or legitimate interests in the <1stloanmart.net>
and <1stloanmart.com> domain names, which are confusingly simlilar
to Complainant’s LOAN MART mark.
Complainant’s assertion in this instance is sufficient to establish a prima
facie case in support of its allegations and shift the burden to Respondent
to provide evidence to rebut Complainant’s contentions. However, Respondent has failed to respond
and has, therefore, failed to meet its burden.
Thus, the Panel determines that Respondent lacks rights and legitimate interests
in the disputed domain names. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding 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 credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to the respondent to demonstrate that such rights or legitimate interests
do exist); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interests in the domain names).
Complainant
claims that Respondent has not made any use of the <1stloanmart.net>
and <1stloanmart.com> domain names for any purpose since
registering the domain names on April 12, 2005. In a situation such as this, where the disputed domain names have
not been used and Respondent has failed to respond and provide any demonstrable
preparations to use domain names that fully incorporate Complainant’s federally
registered LOAN MART mark, Respondent’s passive holding does not constitute a
use in connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and
(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods or services before notice
of the domain name dispute, the domain name did not resolve to a website, and
the respondent is not commonly known by the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where the respondent
has advanced no basis on which the panel could conclude that it has a right or
legitimate interest in the domain names, and no use of the domain names has
been established); see also Bloomberg
L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no
rights or legitimate interests can be found when the respondent fails to use
disputed domain names in any way).
Furthermore,
upon receipt of Complainant’s cease and desist letter, Respondent demanded
payment of more than $300 for the disputed domain names. The Panel finds that this willingness to
sell the disputed domain names to Complainant is further evidence that
Respondent lacks rights and legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(a)(ii). See
Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain name registration to Complainant,
the rightful holder of the RED CROSS mark.”); see also J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites that are
located at the domain names at issue, other than to sell the domain names for
profit).
Complainant
asserts that Respondent is not commonly known by the <1stloanmart.net>
and <1stloanmart.com> domain names. In fact, the WHOIS information for the domain names indicates
that Respondent is known as “Majeed Mokhtari.”
Respondent has not provided a response to contradict Complainant’s
arguments. Therefore, the Panel finds
that Respondent has not established rights or legitimate interests in the
disputed domain names 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
argues that Respondent’s request for payment to transfer the disputed domain
name registrations to Complainant, the holder of the LOAN MART mark, is
evidence of bad faith registration and use.
Under the circumstances of this case, where Respondent has made no use
of the disputed domain names and has failed to respond to the allegations of
the Complaint, the Panel finds that Respondent’s offer to sell the two domain
names for $300 is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO
Nov. 27, 2000) (finding that a failure to use the domain name in any context
other than to offer it for sale to the complainant amounts to a use of the
domain name in bad faith); see also Universal
City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000)
(finding bad faith where the respondent made no use of the domain names except
to offer them for sale to the complainant); see also Little Six, Inc v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell
the domain name at issue to the complainant was evidence of bad faith).
Although Policy
¶ 4(b) includes a list of four specific situations which constitute evidence of
bad faith registration and use, the Panel is not limited to this list and may
take into account additional evidence in making a finding under Policy ¶
4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Furthermore,
Complainant contends that Respondent had actual or constructive knowledge of
Complainant’s rights in the LOAN MARK mark at the time Respondent registered
the disputed domain names because the status of the mark could have easily been
attained via a traditional trademark search.
The Panel agrees that Complainant’s registration of its mark with the
USPTO bestows upon Respondent constructive knowledge of Complainant’s rights in
the mark and that registration of a domain name containing another’s mark with
actual or constructive knowledge of another’s rights in that mark is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
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.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <1stloanmart.net> and <1stloanmart.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin Panelist
Justice, Supreme Court, NY
Dated:
June 29, 2005
National Arbitration Forum