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Generic Top Level Domain Name (gTLD) Decisions |
Dollar Financial Group, Inc. v. Mobile
Internet Technologies, LLC
Claim Number: FA0411000363953
Complainant is Dollar Financial Group, Inc. (“Complainant”),
represented by Hilary B. Miller, 112
Parsonage Road, Greenwich, CT 06830-3942.
Respondent is Mobile Internet
Technologies, LLC (“Respondent”), 1100 5th Avenue S., Suite 308, Naples, FL
34102-6407.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <autoloanmart.com>,
registered with Network Solutions, 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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
15, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 16, 2004.
On
November 16, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <autoloanmart.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has
verified that Respondent is
bound by the Network Solutions, 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
November 18, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 8, 2004 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@autoloanmart.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 15, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Judge Harold Kalina (Ret.)
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <autoloanmart.com> domain name is confusingly similar to
Complainant’s LOAN MART mark.
2. Respondent does not have any rights or
legitimate interests in the <autoloanmart.com>
domain name.
3. Respondent registered and used the <autoloanmart.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
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 the
<loanmart.net> domain name.
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 <autoloanmart.com>
domain name on May 2, 2004.
Respondent’s domain name resolves to an undeveloped website and has not
been used since registration.
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.
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 <autoloanmart.com> domain name is
confusingly similar to Complainant’s LOAN MART mark. The domain name entirely incorporates Complainant’s mark and
merely adds the generic term “auto.”
Such addition is not sufficient to negate the confusing similarity
between Respondent’s domain name and Complainant’s mark. See
Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant
combined with a generic word
or term); see also Marriott Int’l, Inc.
v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that
Respondent’s domain name <marriott-hotel.com> is confusingly similar
to
Complainant’s MARRIOTT mark).
The Panel finds
that Policy 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See
Am. Online, Inc. v. Clowers,
FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to
challenge a complainant’s allegations allows a panel to accept
all of the
complainant’s reasonable allegations and inferences as true);
see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover, Respondent is not licensed or
authorized to register or use domain names that incorporate Complainant’s
marks. Therefore, the Panel concludes
that Respondent lacks rights and legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly
known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Due to
Complainant’s registration with the USPTO and the general fame of Complainant’s
mark, the Panel infers that Respondent had
actual or constructive knowledge of
Complainant’s LOAN MART mark when Respondent registered the <autoloanmart.com> domain
name. Thus, Respondent’s registration
and subsequent use of the domain name was 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 Ty Inc. v.
Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s
registration and use of an identical and/or confusingly similar domain
name was
in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent
should have been aware of it).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <autoloanmart.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
December 28, 2004
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