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Generic Top Level Domain Name (gTLD) Decisions |
Dollar Financial Group, Inc. v. Thomas
Becks, Inc.
Claim
Number: FA0309000193884
Complainant is Dollar Financial Group, Inc., Berwyn,
PA (“Complainant”) represented by Hilary
B. Miller, 112 Parsonage Road,
Greenwich, CT 06830-3942. Respondent is Thomas Becks, Inc., 314 Waterside Drive, Hypoluxo, FL 33462 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <cash-till-payday-loan.com>,
<1000-cash-til-payday-loan.com>, and <1000-cash-until-payday-loan.com>,
registered with Wild West Domains, Inc.
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
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 10, 2003;
the Forum received a hard copy of the
Complaint on September 12, 2003.
On
September 19, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum
that the domain names <cash-till-payday-loan.com>,
<1000-cash-til-payday-loan.com>, and <1000-cash-until-payday-loan.com>
are registered with Wild West Domains, Inc. and that Respondent is the current registrant
of the names. Wild West Domains, Inc. has
verified that Respondent is bound by
the Wild West Domains, 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
September 22, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of October 13, 2003 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@cash-till-payday-loan.com,
postmaster@1000-cash-til-payday-loan.com, and postmaster@1000-cash-until-payday-loan.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
October 23, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus
R. Atkinson, Jr., as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <cash-till-payday-loan.com>,
<1000-cash-til-payday-loan.com>, and <1000-cash-until-payday-loan.com>
domain names are confusingly similar to Complainant’s CASH ‘TIL PAYDAY mark.
2. Respondent does not have any rights or
legitimate interests in the <cash-till-payday-loan.com>,
<1000-cash-til-payday-loan.com>, and
<1000-cash-until-payday-loan.com> domain names.
3. Respondent registered and used the <cash-till-payday-loan.com>,
<1000-cash-til-payday-loan.com>, and <1000-cash-until-payday-loan.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
provided evidence of its rights in the CASH ’TIL PAYDAY mark through
registration on the Supplemental Register of
the U.S. Patent and Trademark
Office (USPTO) since 1996 and on the Principal Register of the USPTO in 2002,
including Registration
Numbers 1,987,764 and 2,606,704. Complainant has been continuously using the
said mark since 1995. Complainant’s
mark is displayed in more than 400 retail locations nationwide, as well as at
various worldwide web sites operated by
Complainant and its subsidiaries.
Respondent
registered the domain names <1000-cash-til-payday-loan.com> and <1000-cash-until-payday-loan.com>
on August 5, 2003 with ElCheapoDomains.net., an affliate of Wild West
Domains, Inc. Respondent registered the
domain name <cash-till-payday-loan.com> on August 13, 2003 with
ElCheapoDomains.net. Respondent is
using the latter two names to redirect Internet users to a direct competitor of
Complainant. Respondent is passively
holding the former domain name.
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
demonstrated its rights in the CASH ’TIL PAYDAY mark through registration of
the mark on the Supplemental Register
of the U.S. Patent and Trademark Office
as far back as 1996, and subsequently on the Principal Register of the U.S.
Patent and Trademark
Office in 2002.
The three domain
names are confusingly similar to Complainant’s trademark. Each of the domain names in question
contains the substantive appearance of Complainant’s registered mark, mainly
CASH ‘TIL PAYDAY. Although Respondent
has attempted to add minor variations via punctuation, numerals, or a generic
word, the essence of Complainant’s
mark remains. The mere shrouding of a mark in creative additions or
modifications is not enough to rid a confusing similarity. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18,
2000) (holding “that the use or absence of punctuation marks, such as hyphens,
does not alter the fact
that a name is identical to a mark"); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent,
D2000-0412 (WIPO July 2, 2000) (finding that the domain name
<hitachi2000.net> is confusingly similar to Complainant’s mark); see
also Nintendo of Am., Inc. v. Lizmi,
FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that Respondent’s domain
names <pokemon2000.com> and <pokemons.com>
are confusingly similar
to Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
is confusingly similar to Complainant’s
HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does
not take the disputed domain name out of the realm of
confusing similarity).
Furthermore,
Respondent is a direct competitor of Complainant. Both Complainant and Respondent arrange “payday loans” for
consumer borrowers. The domain names <1000-cash-til-payday-loan.com>
and <1000-cash-until-payday-loan.com> redirect Internet users
to Respondent’s web site that engages in the same industry as Complainant. Therefore, if understood in conjuction with
the competitive relationship of the parties, these domain names create a
substantial likelihood
that appreciable number of consumers will be confused
into believeing that Complainant originates, endorses, or sponsors Respondent’s
services when they are redirected to Respondent’s site. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb.
Forum Dec. 18, 2000) (finding that confusion would result when Internet users,
intending to access Complainant’s
website, think that an affiliation of some
sort exists between Complainant and Respondent, when in fact, no such
relationship would
exist).
Therefore,
Complainant has successfully established Policy ¶ 4(a)(i).
Complainant has asserted that Respondent lacks rights and legitimate
interests in the disputed domain name.
In light of Respondent’s failure to contest Complainant’s claims, the
Panel may accept Complainant’s assertion as true and draw reasonable
inferences
from Complainant’s uncontested submission.
See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that Respondents’ failure to respond can be construed as an admission that they
have no
legitimate interest in the domain names); see also Geocities v. Geociites.com, D2000-0326 (WIPO June
19, 2000) (finding that Respondent has no rights or legitimate interests in the
domain name because Respondent
never submitted a Response or provided the Panel
with evidence to suggest otherwise).
With respect to
the domain names <1000-cash-til-payday-loan.com> and
<1000-cash-until-payday-loan.com>, Respondent uses these addresses to
redirect unsuspecting Internet users to Respondent’s site. Redirecting unsuspecting Internet users does
not qualify as a right or legitimite interest.
See MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate
interests in the famous MSNBC mark where Respondent attempted to
profit using
Complainant’s mark by redirecting Internet traffic to its own website); see
also Imation Corp. v. Jean Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002)
(finding no rights or legitimate interests where Respondent used the disputed
domain name
to redirect Internet users to an online casino).
Complainant has also asserted that
Respondent registered <cash-till-payday-loan.com>, but failed to
contain any content on the website that relates to the domain name. This is referred to as “passive
holding.” Passive holding fails to
establish rights or legitimate interests.
Although Respondent has held the domain name for a short time,
Respondent’s conduct with respect to the other two domain names demonstrates
a
lack of rights and interests in all of the disputed domain names. Am. Univ. v.
Cook, FA 159549 (Nat. Arb. Forum Aug. 21,
2003) (finding that Respondent had no rights or legitimate interests in a
domain name being
passively held for just over four months, where Respondent’s
conduct, relating to four similar domain names, demonstrated lack of
rights and
legitimate interests in those names); see also Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering
the domain name is not sufficient to establish rights or legitimate
interests
for purposes of paragraph 4(a)(ii) of the Policy”).
Finding no
evidence that Respondent has rights or legitimate interests in respect to the
domain names, the Panel finds that Policy
¶ 4(a)(ii) has been established.
Respondent is
using the domain names <1000-cash-til-payday-loan.com> and
<1000-cash-until-payday-loan.com> to market short-term consumer loans
in direct competition with the services of Complainant. In light of this, Respondent has attempted
to attract, for commerical gain, Internet users to its web sites by creating a
likelihood
of confusion with the Complainant’s mark as to the source, sponsorship,
affliation, or endorsement of Respondent’s web site and service.
This type of
domain name operation is evidence of bad faith registration and use. See H-D Michigan, Inc. v. Petersons Auto.
a/k/a Larry Petersons, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding
that the disputed domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing
domain name to intentionally attempt to attract Internet
users to its
fraudulent website by using Complainant’s famous marks and likeness); see
also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website).
Furthermore, in
reference to <cash-till-payday-loan.com>, Respondent passively
held the domain name for approximately a month before this Complaint was
filed. In light of Respondent’s use of
the other two domain names in question, bad faith can be safely attached to the
third as well, based
on Respondent’s other similar acts. Passive holding precludes one with
legitimate rights to the domain name from registering the name. This is evidence of bad faith. See also Am.
Univ. v. Cook, FA 159549 (Nat. Arb. Forum
Aug. 21, 2003) (finding that, where Respondent registered and used four domain
names incorporating the
AMERICAN UNIVERSITY mark and passively held a fifth for
a short period of time, all were registered and used in bad faith because
“it
makes little sense to wait until the <allamericanuniversity.info> domain
name is used to determine that Policy ¶ 4(a)(iii)
has been satisfied when inevitably
its use will constitute bad faith”); see also DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use
can constitute use in bad faith).
Therefore,
Complainant has satisfactorily established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <cash-till-payday-loan.com>,
<1000-cash-til-payday-loan.com>, and <1000-cash-until-payday-loan.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
November 3, 2003
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