Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Dollar Financial Group, Inc., Berwyn, PA, USA ("Complainant") represented by Hilary B. Miller. The Respondent is Cash Til Payday Loan, Inc., Cedar Rapids, IA, USA ("Respondent").

The domain name at issue is "cashtilpaydayloan.com" registered with TierraNet Inc. a/k/a Domain Discover.

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.

The Honorable Charles K. McCotter, Jr., as Panelist.

The Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 6, 2001; the Forum received a hard copy of the Complaint on April 9, 2001.

On April 6, 2001, TierraNet Inc. a/k/a Domain Discover confirmed by e-mail to the Forum that the domain name "cashtilpaydayloan.com" is registered with TierraNet Inc. a/k/a Domain Discover and that the Respondent is the current registrant of the name. TierraNet Inc. a/k/a Domain Discover has verified that the Respondent is bound by the TierraNet Inc. a/k/a Domain Discover 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 April 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@cashtilpaydayloan.com by e-mail.

A timely response was received and determined to be complete on April 30, 2001.

On May 8, 2001, pursuant to the Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr., as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

C. Additional Submissions

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:

(3) the domain name has been registered and is being used in bad faith.

The Respondent’s domain name, cashtilpaydayloan.com, is confusingly similar to the Complainant’s registered mark because the domain name is comprised of the Complainant’s mark and a generic term that directly relates to the Complainant’s business. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Body Shop Int’l PLC v. CPIC NET and Hussain, D2000-1214 (Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the Complainant’s trademark <THE BODY SHOP>).

In addition, the Respondent’s domain name is so confusingly similar a reasonable Internet user would assume the domain name is somehow associated with the Complainant’s well-established mark. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant); see also Treeforms, Inc. v. Cayne Ind. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access the Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

The Respondent has no rights or legitimate interests in respect of the domain name. Prior to this dispute, the Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services. See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent has not used the domain names in connection with any type of bona fide offering of goods and services). The Respondent’s claims to be a user of the mark in question as early as 1994 are unsubstantiated.

Further, the Complainant also alleges that the Respondent registered the disputed domain name to divert the Complainant’s customers to a competing web site. See Kosmea Pty Ltd. v. Carmel Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where the Respondent has an intention to divert consumers of the Complainant’s products to the Respondent’s site by using the Complainant’s mark); see also North Coast Medical, Inc. v. Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where the Respondent used the domain name to divert Internet users to its competing web site).

Moreover, the Complainant has been using its mark continuously since 1995, which predates the Respondent’s registration of the disputed domain name. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that the Respondent has not demonstrated any rights or legitimate interests in the domain name "TWILIGHT-ZONE.NET" since the Complainant had been using the mark TWILIGHT ZONE since 1959).

The Respondent cannot prevail on the argument that the mark is generic. The Complainant’s trademark registration is "conclusive evidence" of the Complainant’s exclusive right to use the mark (subject to certain enumerated defenses not relevant to the defense of genericness). 15 U.S.C. § 1115(b). Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., [1985] USSC 8; 469 U.S. 189, 198, [1985] USSC 8; 105 S.Ct. 658, 663, [1985] USSC 8; 83 L.Ed.2d 582 (1985).

The Respondent registered and is using the domain name in bad faith. The Respondent as a competitor, knew or should have known of the Complainant’s famous mark prior to registering the disputed domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

Also, the Respondent registered the disputed domain name to intentionally attract Internet users to its web site or other online location via a likelihood of confusion with the Complainant’s well-established mark. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to the Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain); America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the Respondent attracted users to a web site sponsored by the Respondent).

The fact that the Respondent added a disclaimer after the commencement of this proceeding is further evidence of the Respondent’s bad faith. Generally, such disclaimers are ineffective to avoid infringement, because the competing marks and the competing services of the respective parties are identical. For a disclaimer to be effective, the junior user must ensure that both the junior user’s mark differs from the senior user’s mark in appearance and sound, and that the goods or services associated with the junior user’s mark differ from the goods or services of the senior user. See, generally, Paramount Pictures Corp. v. Worldwide Entertainment Corp., 195 U.S.P.Q. 539 (S.D.N.Y. 1977) (disclaimer held to help prove likelihood of confusion rather than dispel confusion); United States Jaycees v. Philadelphia Jaycees, [1981] USCA3 205; 639 F.2d 134 (3rd Cir. 1981) ("[T]he avoidance of confusion to the infringer’s interests cannot support an order permitting the continued use of the [confusingly similar] trademark even if it is in juxtaposition with the infringer’s locale and accompanied by a disclaimer of affiliation with the trademark owner."); Trans Pacific Insurance Company v. Trans-Pacific Insurance Company, 739 F. Supp. 240 (E.D. Pa. 1990) ("Defendant's use of a disclaimer of affiliation alone would not be sufficient to avoid liability for trademark infringement."). The Respondent’s disclaimer does nothing to dispel initial interest confusion; and therefore, does nothing to negate bad faith. See Madonna v. Dan Parisi, D2000-0847 (WIPO, Oct. 12, 2000) (citing Brookfield Comm., Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036 (9^th Cir. 1999).

Based upon the above findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain name "cashtilpaydayloan.com".