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Generic Top Level Domain Name (gTLD) Decisions |
Dollar Financial Group, Inc. v. Greg Lee
Claim Number: FA0308000190515
PARTIES
Complainant
is Dollar Financial Group, Inc.,
Berwyn, PA (“Complainant”) represented by Hilary
B. Miller. Respondent is Greg Lee, Tulsa, OK, (“Respondent”)
represented by Rodney H. Dusinberre.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <cashmoneytilpayday.com>,
registered with Enom, Inc.
PANEL
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.
Richard
Hill as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 23, 2003; the Forum received
a hard copy of the
Complaint on August 26, 2003.
On
September 2, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <cashmoneytilpayday.com>
is registered with Enom, Inc. and that the Respondent is the current registrant
of the name. Enom, Inc. has verified
that Respondent is bound by the Enom, 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 3, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of September 23, 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@cashmoneytilpayday.com
by e-mail.
A
timely Response was received and determined to be complete on September 23,
2003.
On
September 27, 2003, Complainant submitted a timely additional submission
pursuant to Forum Supplemental Rule 7.
On
October 2, 2003, Respondent submitted a timely additional submission pursuant
to Forum Supplemental Rule 7
On October 3, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Richard Hill
as Panelist.
RELIEF SOUGHT
Complainant
requests transfer of the domain name from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
Dollar Financial Group, Inc., a New York corporation (formerly known as
“Monetary Management Corporation”), is the largest
national originator of small
consumer “payday loans” from banks, using the “CASH ’TIL PAYDAY” name
and registered service mark in varied media.
Complainant’s mark is displayed not only at Complainant’s more than 400
retail locations nationwide but also at various worldwide
web sites operated by
Complainant and its subsidiaries. Since
1995, Complainant has spent millions of dollars advertising its consumer financial
services and has, to date, originated over
$400,000,000 in consumer loans
nationwide using the above mark.
Respondent’s
second-level domain name is confusingly similar to Complainant’s registered
mark and confusingly similar to complainant’s
own domain name
<CASHTILPAYDAY.COM>.
Respondent
only very recently registered its domain name in dispute herein, on or about
April 9, 2002, long following the commencement
of Complainant’s use of its
mark.
At
the time of registration of Respondent’s domain name, Respondent knew or reasonably
should have known of Complainant’s registered
service mark and could easily have ascertained the status
of such mark from a conventional trademark search, but failed to do so.
Complainant's
mark is widely known in the trade, and Respondent’s adoption of a
confusingly similar mark evidences Respondent’s bad faith in registering
its
domain name.
Prior
to registration of the domain name at issue herein, Respondent had made no
commercial use of the mark CASHMONEYTILPAYDAY and
sold no material goods or
services under the mark (or any colorably similar mark) in
any jurisdiction, and is not generally known by the name or mark
CASHMONEYTILPAYDAY, and therefore
has no rights or legitimate interest in the
domain name in dispute.
Respondent
is a direct competitor of Complainant; like Complainant, Respondent is in the
business of arranging “payday loans” for
consumer borrowers using the Internet.
There is thus a substantial likelihood that an appreciable number of consumers
will be confused
into believing that complainant originates, endorses or
sponsors Respondent’s services, which is not the case. Respondent is using the mark at its web site
to market short-term consumer loans in direct competition with the services of
Complainant. By virtue thereof,
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its web site by creating
a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s
web site and service.
Complainant
duly protested Respondent’s infringing use by promptly sending a
cease-and-desist demand to Respondent after registration
of the offending
domain name, but such demand was ignored and retained without objection.
B.
Respondent
Respondent
invokes US trademark law to argue that there is no “likelihood of confusion”
between the Complainant’s mark and the disputed
domain name. Its argument is based on essentially two
prongs: (1) that the Complainant’s mark is a logo, with graphic elements; and
(2) that the
word part of the mark is merely descriptive, or, at best,
generic. Thus, alleges the Respondent,
it is “weak” and afforded less protection than a “strong” mark.
Respondent
alleges that Complainant has not, nor could it have, obtained exclusive rights
to the terms “cash”, “money”, “until”, and
“payday”.
Respondent’s
rights to and legitimate interest in the <cashmoneytilpayday.com>
domain name are established by and through the continued use of the domain name
over the last 18 months in connection with legitimate
offering of payday loans
to consumers who may apply for payday loans over the Internet.
Respondent’s
first notice of Complainant’s dispute over Respondent’s use of the subject
domain name was upon Respondent’s receipt
of the Complaint on August 25,
2003. Complainant did not provide
Respondent with a cease-and-desist letter as alleged in the Complaint.
Because
Complainant (i) is known primarily through its Money Mart retail name, and not
by its “Cash ‘til Payday” logo; (ii) does not
use the “cash ‘til payday”
phraseology as part of any functioning domain name marketing payday loans in
the United States; and (iii)
does not provide customers, either existing or
prospective, the ability to apply for loans over the Internet, Respondent’s use
of
its domain name cannot be deemed misleading, unfair or tarnishing to
Complainant’s service mark.
Respondent’s
registration and use of the domain name <cashmoneytilpayday.com>
is and has always been in good faith solely for the purpose of providing
Internet-based payday loans.
Complainant
has not pointed to any evidence that Respondent registered the domain name for
the purpose of disrupting Complainant’s
business, a business that operates
primarily under the trade name “Money Mart” out of its physical retail stores
locations, and does
not provide its customers the ability to apply for payday
loans over the Internet.
Respondent
and Complainant are not in direct competition in the short-term consumer loan
industry. Respondent is a web-based
provider of such loans that can be processed over the Internet, Complainant
provides such loans exclusively
through its physical retail locations.
Respondent
has provided a sworn affidavit stating that the domain name was chosen by using
a random domain name generation tool and
that he had no prior knowledge of any
other company’s use of the domain name or similar domain names in
Internet-based payday loan
application processing.
C.
Additional Submissions
In
its additional submission, Complainant points out that its registered trademark
is a “typed drawing”, that is, a registration for
the words “cash ‘til payday”,
and not a registration for a logo (that is, some particular graphical
representation of the words). It goes
on to argue that the criterion for confusion under the Policy is not the same
as the criterion for confusion under US trademark
law, so the Respondent’s
arguments concerning the “weakness” of the mark are not relevant. It reiterates its statement that the
Respondent did not do business under a name or mark similar to the contested
domain name prior
to registration of that domain name.
Complainant
further states that: “the offering of services by respondent that are very
similar to the services of complainant, under
a confusingly similar mark, is
not a bona fide offering of goods or services.”
Finally,
Complainant reiterates its allegation that the Respondent knew, or should have
known, of the Complainant’s mark, and that
“Respondent’s bad faith may be
inferred from respondent’s use of a domain name similar to complainant’s
registered service mark CASH ’TIL PAYDAY
to drive customers to respondent’s web site, where respondent offers consumer
credit services in direct competition with those offered
by complainant’s
stores.”
In
its additional submission, Respondent restates its conclusions concerning
“confusion” under US trademark law.
Respondent
goes on to point out that Paragraph 4(c)(i) of the Policy requires use before
notice of a dispute, not use before registration
of the disputed domain name.
In
addition, Respondent alleges that Complainant must present evidence of bad
faith behavior and that such behavior cannot be merely
inferred from the mere
registration and use of the disputed domain name, given that it is composed of
generic words. Respondent states;
“Complainant is no ‘Christian Dior’ or ‘Nike’ and it cannot avail itself of an
inference of bad faith.”
Complainant has been in the business of
offering short-term loans to consumers since 1995 using the word mark
"CASH ‘TIL PAYDAY"
and this mark has been registered in the USA. Complainant’s business is well known.
Respondent registered the contested
domain name in April 2002 and has been using it since then to provide online
offers of short-term
loans to consumers.
DISCUSSION
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:
(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.
This
case presents many similarities to other cases involving the Complainant. Cases in which the Respondent defaulted, and
the Complainant prevailed, include Dollar Fin. Group, Inc. v. Great Am.
Credit, FA 94994 (Nat Arb. Forum July 18, 2000) (<cashuntilpayday.com>);
Dollar Fin. Group, Inc. v. Wells, FA 96787 (Nat Arb. Forum Apr. 3, 2001)
(<cashtopayday.com>); Dollar Financial Group v. Jimmy, FA 113310
(Nat Arb. Forum June 27, 2002) (<cashtopayday.com>); Dollar Fin.
Group, Inc. v. Cash Advance Till Payday, FA 156801 (Nat Arb. Forum June 16,
2003) (<cash-till-payday.com>). Those cases must be distinguished from the
present case because, if the Respondent defaults, the Panel has wide latitude
to accept
the factual statements made by the Complainant, whereas the Panel
must evaluate the evidence presented by both sides when there is
a Response, as
there is in the present case.
Cases
in which the Respondent replied, and the Complainant prevailed, include:
1)
Dollar Fin. Group, Inc. v. Cash Til Payday Loan, Inc., FA 97032 (Nat
Arb. Forum May 14, 2001) (<cashtilpaydayloan.com>). That case can be distinguished from the
present case, because in that case the Panel found that “the Respondent’s
claims to be a user
of the mark in question as early as 1994 are
unsubstantiated”, whereas in the present case it is clear that the Respondent
was indeed
using the disputed domain name.
In addition, in that case the Panel found that “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”, whereas
this Panel does not find such
behavior in the present case.
2)
Dollar Fin. Group, Inc. v. Global Money Group, FA 147529 (Nat Arb. Forum
Apr. 10, 2003) (<cashtillpayday.com>).
That case can be distinguished from the present case, because in that
case the Panel found that “Respondent lacks rights and legitimate
interest in
the domain name because it made no commercial use of <cashtillpayday.com>
since registration”, whereas in the present
case it is clear that the
Respondent was indeed using the disputed domain name. In addition, in that case the Panel found that Respondent
“registered the domain name primarily for the purpose of disrupting
Complainant's
competing business”, whereas this Panel does not find such
behavior in the present case.
Cases
in which the Complaint was dismissed include Dollar Fin. Group, Inc. v. Oakridge, FA 94977 (Nat. Arb. Forum July
17, 2000) (<tillpaydayloan.com>).
The
present case also presents similarities to ULLICO Inc. v. SF&C Ins.
Assocs., Inc, FA 99659 (Nat Arb. Forum Nov. 7, 2001)
(<unionlaborlife.com>).
The Complainant has established clearly
that it holds both common law and US registered trademark rights to the mark
“CASH ‘TIL PAYDAY”.
The Respondent is under the mistaken
impression that this Panel is bound by US trademark law when determining the
issue of confusing
similarity. Such is
not the case. Indeed Paragraph 15(a) of
the Policy requires the Panel to:
decide a complaint on the basis of …
these Rules and any rules and principles of law that it deems applicable.
That is, the Panel has broad latitude to
adopt whatever criterion for confusion that it considers appropriate.
Panels have consistently held that strict
application of the confusion criteria arising out of national trademark laws is
not appropriate,
and that a broader notion of confusion should be used in these
proceedings.
This principle is well stated in EAuto,
L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enters., Inc., D2000-0047
(WIPO, Mar. 24, 2000) (<eautolamps.com>):
When
a domain name incorporates, in its entirety, a distinctive mark, that creates
sufficient similarity between the mark and the
domain name to render it
confusingly similar. Accordingly, the Panel holds that Complainant has
satisfied the first prong of the
ICANN test.
The Panel therefore finds that the
Complainant has met its burden of proof and finds that the disputed domain name
is confusingly
similar to the Complainant’s trademark.
Complainant argues at length that the
Respondent does not satisfy Paragraph 4(c)(i) of the Policy, because “prior to
registration
of the domain name at issue herein, respondent had made no commercial
use of the mark CASHMONEYTILPAYDAY and sold no material goods
or services under
the mark (or any colorably similar mark) in any
jurisdiction”. But the Policy does not
put any requirement on the Respondent to use the disputed domain name before
registration. The requirement is rather
that the use should take place before notification of a dispute with respect to
the contested domain name.
It is not contested that the Respondent
has been offering services under the disputed domain name since April
2002. And Paragraph 4(c)(i) states in
pertinent part: “before any notice to you of the dispute, your use of … the
domain name … in connection
with a bona fide offering of goods or
services”. That is, the Respondent has
satisfied Paragraph 4(c)(i) provided that its use is bona fide.
Thus the question facing this Panel is whether the mark
“CASH ‘TIL PAYDAY” is sufficiently well known and unique that the Respondent
cannot possibly have a legitimate interest in making use of those words in
order to promote its own business activities.
The Complainant has argued that it is so
well known that any use of the words “CASH ‘TIL PAYDAY” by the Respondent would
create consumer
confusion, would be in violation of US trademark laws, and thus
could not be legitimate.
While the Complainant has provided
evidence showing that it is well known, it has not provided any evidence to
show that the use of
the words “cash money until payday” by some other
organization would necessarily be in violation of US trademark or unfair
competition
laws. Indeed, these
proceedings, conducted under the UDRP, are not the appropriate forum in which
to argue such violations of national laws.
National courts are the appropriate forums in which to argue such
violations.
We cite in this context Car Toys, Inc.
v Informa Unlimited, Inc., FA 93682 (Nat Arb. Forum Mar. 20, 2000,
<cartoys.net>), in which the panel stated:
Car Toys, Inc. has not proven that
Informa has no legitimate interests in respect of the domain name cartoys.net.
The CAR TOYS trademark is not fanciful or arbitrary, and Car Toys has submitted
no evidence to establish either fame or strong secondary
meaning in its mark
such that consumers are likely to associate cartoys.net with CAR TOYS.
Informa has demonstrated that the name is in use elsewhere. … As a result,
Informa does have a legitimate interest
in the domain name.
Similar conclusions are reached in CRS Tech. Corp. v
CONDENET, Inc., FA 93547 (Nat Arb. Forum Mar. 28, 2000,
<concierge.com>).
The panel holds that the words “cash”, “money”, “until”, and
“payday” are common words, that their use by the Respondent could be
legitimate
in light of the Respondent’s business activities, and that the legitimacy or
not of such use is best determined by national
courts.
Thus, considering all the elements, this Panel holds that
Complainant has failed to prove—under the Policy which governs these
proceedings—that
the Respondent has no legitimate interest in the disputed
domain names.
Complainant has not provided evidence of
any behavior by the Respondent that could be considered to be bad faith
behavior. Complainant has certainly
alleged such behavior, and stated that it should be inferred because the
Respondent knew or should have
known that the disputed domain name is confusingly
similar to the Complaint’s mark.
Respondent has presented a sworn
affidavit stating that the name was chosen at random. The UDRP procedure is not designed to make determinations
regarding the veracity of factual allegations and there is nothing in the
evidence that would lead this Panel to doubt the truth of the Respondent’s
statement.
Thus, considering all the elements of the
present case, this Panel holds that the Complainant has not satisfied its
burden of proof
with respect to registration and use in bad faith.
DECISION
Having
failed to establish each of the three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that
Complainant’s claim is DISMISSED.
Richard Hill, Panelist
Dated: October 16, 2003
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