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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Dollar Financial Group, Inc. v BingZeng
Claim Number: FA0012000096205
PARTIES
The Complainant is Dollar Financial Group, Inc. , Berwyn, PA, USA ("Complainant") represented by Hilary B Miller. The Respondent is BingZeng, London, ON, CA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "monymart.com" registered with Register.com.
PANELIST
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 the panelist in this proceeding.
Hon. Roger P. Kerans as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on December 4, 2000; The Forum received a hard copy of the Complaint on December 6, 2000.
On December 8, 2000, Register.com confirmed by e-mail to The Forum that the domain name "monymart.com" is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.
On December 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2000 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@monymart.com by e-mail.
On December 19, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Hon. Roger P. Kerans as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIESí CONTENTIONS
A. Complainant:
Respondentís second-level domain name MONYMART.COM is confusingly similar to complainantís registered service mark MONEY MART® and substantially identical thereto. The domain name is similar in sound and appearance to complainantís mark. Respondentís domain name is also confusingly similar to complainantís own domain name MONEYMART.COM.
Complainant Dollar Financial Group, Inc., a New York corporation, is one of the largest national international vendors of subprime consumer financial services, using the MONEY MART® name and mark in various media in the U.S., Canada, the United Kingdom and Australia.
Since 1982, complainant and its predecessors in interest have spent millions of dollars advertising its consumer financial services and have, to date, achieved approximately one billion dollars of sales using the MONEY MART® name and logo.
Complainant also offers services online at its various web sites, including those incorporating the service mark at issue herein. See, e.g., http://www.moneymart.com and http://www.moneymart.ca. Thus, there is a substantial likelihood of confusion with an Internet domain that differs from complainantís registered mark by a single letter and has an identical sound.
Complainant is the senior user of the mark MONEY MART® and has been continuously using the said mark in interstate commerce to describe its consumer financial services in the U.S. since 1984 and in Canada since 1982. Such mark was granted registration by the U.S. Patent and Trademark Office on May 11, 1999. A copy of an excerpt from the trademark registration database of U.S. Patent and Trademark Office re MONEY MART® is attached as an exhibit hereto.
Complainant, through its wholly owned subsidiary National Money Mart Company, 1640 Oak Bay Avenue, Victoria, V8R 1B2, B.C., Canada, is also the owner of the registered service mark MONEY MART® in Canada, which mark was first used in commerce by complainant and its predecessors in interest on July 1, 1982 and was granted registration by the Canadian Intellectual Property Office on December 7, 1984; see, excerpt from Candian database at http://strategis.ic.gc.ca/SSG/0490/trdp049000200e.html. Complainantís Canadian subsidiary business owns the domain name MONEYMART.CA and operates a worldwide web site at http://www.moneymart.ca.
Respondent only very recently registered his domain name in dispute herein, on or about March 19, 2000, long following the commencement of claimantís use of the mark MONEY MART® and the registration of claimantís mark MONEY MART® in the U.S. and Canada. Thus, at the time of registration of respondentís domain name, respondent knew or reasonably should have known of complainantís registered service mark MONEY MART® and could easily have ascertained the status of such mark from a conventional trademark search.
Respondent has made no commercial use of the mark and has sold no goods or services under the mark MONYMART (or any colorably similar mark) in any jurisdiction and has no rights or legitimate interest in the mark MONYMART or the domain name MONYMART.COM. Complainant has conducted an extensive business name, common-law and state and federal trademark search and has discovered no evidence of use of the mark MONYMART by respondent in any trade or business. Accordingly, respondent has no legitimate interests in respect of the domain name.
Respondentís web site at www.monymart.com presently contains no content related to the domain name. Passive holding of a domain name is evidence of bad faith. Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Respondent offers the domain name for sale through the "Great Domains" domain-name auction site. See, http://www.greatdomains.com/domains/details.asp?ListingID=1038034. The advertising listing at such site indicates that the name is deemed by respondent to constitute a "very versatile financial address." Such advertising is further evidence of respondentís bad faith and an indication of further likelihood of confusion between the services of any prospective purchaser of the domain name and those of complainant.
B. Respondent
By email to the National Arbitration Forum:
Re:
www.monymart.comHaving already informed Dollar's lawyer, Hilary Miller, by fax and e-mail, that i wish a speedy resolution of this affair, I am today informing you that I do not oppose the complaint of Dollar Financial Group and I consent to the entry of an award transferring the domain name.
Do you require that i send you a letter and/or fax to reaffirm this information? To what address if so required?
Please advise me as soon as possible by e-mail to
bornlucky@sprint.ca and I will gladly oblige your wishes.And then by letter:
I am today confirming that my December 17, 2000 e-mail to you is my final response to the abovementioned submission to ICANN's National Arbitration Forum.
I am anxious that this matter be resolved as quickly and as painlessly as possible for all parties involved, and I am following the exact instructions kindly given to me by Dollar Financial Group's lawyer, Hilary Miller.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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
I agree that "monymart.com" is confusingly similar to the name "Money Mart". The only difference between the domain name at issue and the Complainantís mark is the deletion of the letter "E" in "MONEY", which does not alter the underlying mark held by Complainant. See Reuters Limited v Global Net 2000, Inc., D2000-441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark)
Rights or Legitimate Interests
I accept that the Canadian subsidiary of the complainant has a registered Canadian service mark for Money Mart, and owns the domain name MONEYMART.CA and operates a worldwide web site at http://www.moneymart.ca. Clearly the complainant has a legitimate interest in the name.
On the other hand, the respondent, also a Canadian, has not set up a site, nor used the domain name in any commercial way. He has no legitimate interest in it.
Registration and Use in Bad Faith
All the respondent has done since registering the name is to list it for sale.
Moreover, he has very frankly and fairly in response to the complaint said to this tribunal "I consent to the entry of an award transferring the domain name." As noted, he is a Canadian. I understand this consent to be an acknowledgement that he had no lawful purpose for this domain name. That being the case, any further use would clearly be in bad faith.
DECISION
I direct a transfer of the challenged domain name to the complainant.
Hon. Roger P. Kerans
Judge, Court of Appeal (Ret.)
Arbitrator
Dated: December 21, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/1797.html