DECISION

Dollar Financial Group, Inc. v. Michael Sheerin

Claim Number:  FA0310000203166

PARTIES

Complainant is Dollar Financial Group, Inc. (“Complainant”) represented by Hilary B. Miller, Esq., 112 Parsonage Road, Greenwich, CT, 06830-3942.  Respondent is Michael Sheerin  (“Respondent”), 2414 N. Tustin Ave. #E3, Santa Ana, CA, 92705.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <loansmarts.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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 14, 2003; the Forum received a hard copy of the Complaint on October 16, 2003.

On October 15, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <loansmarts.com> is registered with Go Daddy Software, Inc. and that 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 October 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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@loansmarts.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 November 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <loansmarts.com> domain name is confusingly similar to Complainant’s LOAN MART mark.

2. Respondent does not have any rights or legitimate interests in the <loansmarts.com> domain name.

3. Respondent registered and used the <loansmarts.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Dollar Financial Group, Inc., is one of the largest national originators of small consumer loans.  Since 1997, Complainant has originated over $500,000,000 in consumer loans, a substantial portion of which have been originated at Complainant’s stores bearing the LOAN MART mark.  Complainant also originates loans online at its various websites, including a website located at <loanmart.net>.

Complainant is the holder of United States Patent and Trademark Office (“USPTO”) Registration No. 2,192,247 (registered on the Principal Register on September 29, 1998) for the LOAN MART mark.  Furthermore, Complainant has continuously used the LOAN MART mark in interstate commerce to describe its short-term consumer loan services since at least as early as than September 1, 1997. 

Respondent registered the <loansmarts.com> domain name on September 22, 2003.  Currently, Respondent’s website does not display any content related to the domain name.

DISCUSSION

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.

Identical and/or Confusingly Similar

The Panel finds that Complainant has established rights in the LOAN MART mark through registration of its mark with the USPTO.  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.  Respondent has the burden of refuting this assumption).

Respondent’s <loansmarts.com> domain name is confusingly similar to Complainant’s mark.  Respondent merely uses the plural form of the two words that comprise Complainant’s LOAN MART mark.  Respondent’s addition of the letter “s” to words included in Complainant’s mark does not prevent the likelihood of confusion caused by the use of Complainant’s mark in the domain name because it does not change the overall impression of the mark.  Thus, the Panel finds that Respondent’s domain name is not sufficiently distinguishable from Complainant’s mark under Policy ¶ 4(a)(ii).  See Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of Complainant’s services and those who were to view a web site provided by Respondent accessed through the contested domain name); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (“the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.    

           

Rights or Legitimate Interests

Respondent did not submit a Response in this proceeding.  Thus, Respondent has not presented the Panel with any evidence demonstrating that it has rights or legitimate interests in the <loansmarts.com> domain name.  Since Respondent did not meet its burden of rebutting Complainant’s allegations, the Panel accepts as true all assertions submitted in the Complaint.  Consequently, the Panel concludes that Respondent does not have any rights or legitimate interests in the domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

There is no evidence before the Panel to show that Respondent is commonly known by the <loansmarts.com> domain name.  Thus, the Panels infers that Respondent was not commonly known by the disputed domain name, as would demonstrate rights or legitimate interests under Policy ¶ 4(c)(ii).  Accordingly, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Since Respondent registered the <loansmarts.com> domain name on September 22, 2003, Respondent has not developed a website or displayed any content related to the domain name.  Moreover, Respondent has not provided any evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or service or for a legitimate noncommercial or fair use of the domain name.  Since there is no evidence before the Panel permitting it to conclude that Respondent is using the domain name for a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), the Panel concludes that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there was no proof that 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 Respondent was 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 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 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”).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.    

Registration and Use in Bad Faith

The Policy expressly states that the circumstances listed under Policy ¶ 4(b) evidencing bad faith registration and use are not exclusive.  In this instance, the Panel bases its decision regarding Respondent’s bad faith use and registration of the domain name on circumstances other than those listed under Policy ¶ 4(b).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶ 4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).   

Since Respondent registered the domain name less than one month before Complainant filed this claim, this case is a close call.  However, the Panel finds that Respondent registered and used the <loansmarts.com> domain name in bad faith based on the totality of the circumstances.  Bad faith is evidenced by the fact that Respondent registered a domain name that is confusingly similar to Complainant’s mark.  In addition, Respondent is not commonly known by the domain name or Complainant’s mark, and Respondent failed to present any circumstances under which the Panel could conclude that it had any rights or legitimate interests in the disputed domain name.  Consequently, since there is no evidence before the Panel rebutting Complainant’s allegations, the Panel finds that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). 

Furthermore, Respondent registered the <loansmarts.com> domain name in bad faith because it had either actual or constructive knowledge of Complainant’s rights in the LOAN MART mark.  Respondent was put on constructive notice of Complainant’s rights in the LOAN MART mark when it registered the domain name because Complainant’s mark was registered on the Principal Register prior to registration of the domain name.  Registration of a domain name displaying another’s mark with constructive knowledge of another’s rights in that mark is prima facie evidence of bad faith registration of the domain name.  Thus, the Panel finds that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there 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”).  

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.    

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 <loansmarts.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  November 21, 2003

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