DECISION

Dollar Financial Group, Inc. v. Domainhiway.com

Claim Number: FA0406000285123

PARTIES

Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Hilary B. Miller,112 Parsonage Road, Greenwich, CT 06830-3942.  Respondent is Domainhiway.com (“Respondent”), Post Office Box 28831, San Diego, CA 92198.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ezloanmart.com>, registered with Stargate.com, 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.

P. Jay Hines as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 9, 2004; the Forum received a hard copy of the Complaint on June 11, 2004.

On June 11, 2004, Stargate.com, Inc. confirmed by e-mail to the Forum that the domain name <ezloanmart.com> is registered with Stargate.com, Inc. and that Respondent is the current registrant of the name.  Stargate.com, Inc. has verified that Respondent is bound by the Stargate.com, 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 June 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 6, 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@ezloanmart.com by e-mail.

A timely Response was received and determined to be complete on July 6, 2004.

On July 12, 2004, Respondent submitted an “Amended Response” that was not in compliance with ICANN Rule 5(a).  Also on July 12, 2004, Complainant submitted an Additional Submission that was timely.  On July 19, 2004, Respondent submitted an Additional Submission that was timely.  All materials have been considered by the Panelist. 

On July 20, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed P. Jay Hines as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of U.S. Registration No. 2,192,247 for the LOAN MART mark, issued September 29, 1998 and covering “consumer lending services.”  Use is claimed since September 1, 1997.  Complainant’s registration has become incontestable under Section 15 of the Lanham Act.

Complainant is one of the largest national originators of small consumer loans.  Complainant contends having spent millions of dollars advertising its consumer financial services and having originated over $500 million in consumer loans, a substantial portion of which were originated at Complainant stores bearing the LOAN MART name and logo.  Complainant also originates loans in nine states through a toll-free telephone number and to a limited extent through its web site at <loanmart.net>. 

Respondent registered the domain name in question on April 22, 2004.  Complainant alleges that at the time Respondent should have known of Complainant’s registered service mark.  Complainant indicates that Respondent admitted in an e-mail message that it does not check the trademark status of every name it registers prior to registering it.  Complainant contends that Respondent is not generally known by the <ezloanmart.com> domain name.  Complainant alleges that Respondent, prior to the filing of this Complaint, has not made any use of the domain name and alleges passive holding as an indication of bad faith.

Complainant has brought numerous prior administrative domain name actions based on the LOAN MART mark and, indeed, prevailed against the instant domain name in Dollar Financial Group, Inc. v. EZLoanMart, FA 97309 (Nat. Arb. Forum June 25, 2001). 

B. Respondent

Respondent offers Internet identity services, hosting services, web design and e-commerce solutions. 

Respondent claims that it was unaware of Complainant’s mark at the time of registration and that it considered and viewed the domain name as a generic, unencumbered domain name.  Respondent acknowledges that Complainant is the senior user of the LOAN MART mark, but believes that its domain name is distinguishable due to numerous other websites comprised, in part, of the terms “ez,” “loan,” or “mart.”  Respondent notes that Complainant’s U.S. registration includes a disclaimer of exclusive rights to use of the term “loan.”

Respondent claims that it is not a competitor of Complainant since its website is engaged in mortgage loan referrals and listing mortgage and real estate agents in the home mortgage field.  It does not make consumer loans such as payday advance loans or tax refund advance loans.  Respondent operates exclusively online, whereas Respondent claims that Complainant’s Internet presence is de minimus.

Respondent claims that at the time of its domain name registration, hosting was arranged and programmable web site design was contracted for.  It claims that websites that require backend programming (searchable databases) are usually projected for six months in development and that Respondent is already populating the website with potential real estate agent listings.  Respondent denies that the eight days between registration and the objection of the Complaint could be considered passive holding.  Respondent claims that Complainant should have renewed the domain name after the prior UDRP proceeding.

C. Additional Submissions

Each party claims that, since the filing of this proceeding, the adversary has redesigned its website in response to arguments presented in this proceeding.  Complainant alleges that Respondent’s website now offers consumer loans in direct competition with Complainant.  Respondent argues that Complainant’s registered mark, while visible in a “bricks and mortar” world, is almost non-existent on the Internet.  In contrast, Respondent’s business is solely Internet-based.  Respondent states that it views thousands of domain names that become available on a daily basis and has registered many ending in the word “mart” or beginning with the letters “EZ.”  Respondent’s site concentrates only on listing real estate loans and is not in competition with the short term loans offered by Complainant. 

Finally, Respondent seeks to distinguish the cases relied upon by Complainant that were default decisions and points to EAuto, LLC v. Triple S Auto Parts, D2000-0047 (WIPO March 24, 2000), which concluded that Respondent had a legitimate interest in the selling of automobile lamps on the Internet using the <eautolamps.com> domain name.  Respondent believes that the nature of the mark and the circumstances in that case are similar to the instant case. 

FINDINGS AND 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 Respondent is identical or confusingly similar to a trademark or service mark in which the 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

Complainant’s mark registered on the Principal Register in 1998 includes a disclaimer of exclusive rights to use of the term “loan.”  A disclaimer does not remove the disclaimed matter from the mark, but is merely a statement that the owner does not claim exclusive rights to its use.  Complainant has made extensive use of the LOAN MART mark in connection with consumer lending. 

The mere addition of the letters “EZ” to an existing mark is not sufficient to avoid a likelihood of confusion.  See Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (<e-creditlyonnais.com> confusingly similar to Complainant’s CREDIT LYONNAIS mark); see also Nike, Inc. v. Zia, D2000-0167 (WIPO Apr. 27, 2000) (<e-nike.com> confusingly similar to NIKE); see also Calvin Klein, Inc. v. Scelomo, FA 96314 (Nat. Arb. Forum February 16, 2001) (<e-calvinklein.com> confusingly similar to CALVIN KLEIN); see also Malletier v. Sooksripanich, D2000-0866 (WIPO Nov. 3, 2000) (<elouisvuitton.com> confusingly similar to LOUIS VUITTON).  While the LOAN MART mark might not be as distinctive and strong as the house marks in the cited cases, Complainant has demonstrated extensive use of its mark such that it is known in the field of short term consumer loans.  Thus, the presumption is that the mark is valid and distinctive.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002). 

Respondent has not met the burden of refuting this assumption.  Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Respondent has offered a plausible explanation of how it operates and how it acquires domain names and develops websites.  Respondent is in the business of capturing domain names which become available in the marketplace, often through failure to renew registration.  See GLB Serv. Interactivos S.A. v. Ultimate Search, Inc., D2002-0189 (WIPO May 29, 2002).  Indeed, Respondent has demonstrated its registration of three other domain names that end in the term “mart.”  In addition, Respondent has identified the procedure it initiated upon registering the domain name in order to set up a searchable database portal site for mortgage loan companies.  The status of the site at <ezloanmart.com> as of the Complainant’s Additional Submission tends to confirm that demonstrable preparations to use the domain name were under way before any notice of the dispute.  See IG Index Plc. v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000); see also SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000).  Since Respondent has been a web developer for ten years and offers Internet identity services, hosting services, web design and e-commerce solutions for various clients, the Panel must give weight to Respondent’s explanation.  See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000). 

Therefore, the Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.

Registration and Use in Bad Faith

Given the short amount of time between the registration of the subject domain name and the initiation of this dispute, the Panel does not find that the situation equates to passive holding. 

The non-competitive nature of the parties’ respective services prevents the Panel from finding bad faith intent with respect to Policy ¶¶¶ 4(b)(ii), (iii), and (iv).  Although the respective services of each party are financial in nature, the Panel believes that the channels of trade are distinct and, as noted above, the Panel believes that Respondent was not aware of Complainant when it registered the domain name and undertook preparations to set up its web site.  See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb. Forum August 5, 2002). 

The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, the Panel concludes that the domain name <ezloanmart.com> should not be transferred to Complainant. 

P. Jay Hines, Panelist
Dated: July 30, 2004

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