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Dollar Financial Group, Inc. v. Andrew Shorten and Trendmedia [2005] GENDND 9 (25 January 2005)


National Arbitration Forum

national arbitration forum

DECISION

Dollar Financial Group, Inc. v. Andrew Shorten and Trendmedia

Claim Number:  FA0411000371792

PARTIES

Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT 06830-3942. Respondent is Andrew Shorten and Trendmedia (“Respondent”), 31 Eastwood Boulevard, Westcliff, GB SS0 0BY, United Kingdom.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <loansmart.org>, registered with Namescout.

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 electronically on November 29, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2004.

On November 29, 2004, Namescout confirmed by e-mail to the National Arbitration Forum that the domain name <loansmart.org> is registered with Namescout and that Respondent is the current registrant of the name. Namescout has verified that Respondent is bound by the Namescout 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 December 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 23, 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@loansmart.org by e-mail.

While there is serious question as to whether the Respondent timely filed and served its Response in this proceeding, the benefit of the doubt was extended to the Respondent, and the Response was considered for all purposes.  Further, it appears that Respondent has not appeared personally or through an attorney.  Rather, it appears that Respondent has employed an “intellectual property consultant” to file the Response.  While such an appearance on behalf of another would not be proper (unless authorized by a power of attorney) by U.S. standards, it will be presumed for the purposes of this proceeding that an intellectual property consultant is so authorized in the United Kingdom and the Respondent will be bound by the consultant’s acts and omissions in light of no other Response filed.

On January 4, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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, including the Response, 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.

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 <loansmart.org> domain name is confusingly similar to Complainant’s LOAN MART mark.

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

3. Respondent registered and used the <loansmart.org> domain name in bad faith.

B.  Respondent submitted a one page response, without supporting exhibits, which alleges:

           

            1.  Respondent has not offered to sell the domain name at issue for an amount in                        excess of acquisition cost (no bad faith).

            2.  Respondent intends to make fair use of the domain name in the future.

            3.  The domain name at issue is not confusingly similar to a mark in which the                           Complainant has rights.

            4.  The Complainant does not use its mark in the United Kingdom where the                           Respondent resides.

            5.  The Complainant is guilty of reverse domain name hijacking.

FINDINGS

Complainant, an originator of small consumer loans, uses the LOAN MART mark in connection with its services. Since 1997, Complainant has spent millions of dollars advertising its consumer financial services and has originated over $500 million in consumer loans, a substantial portion of which Complainant has originated at stores that bear the LOAN MART mark. Complainant has used the LOAN MART mark continuously since at least September 1, 1997. Complainant holds a registration for the LOAN MART mark at the United States Patent and Trademark Office (Reg. No. 2,192,247, issued September 29, 1998). Complainant also operates a loan origination website at the <loanmart.net> domain name.

Complainant has previously prevailed in domain name proceedings involving the <loansmart.org> domain name. See Dollar Fin. Group v. Singer, FA 282770 (Nat. Arb. Forum July 20, 2004). The domain name became available through an administrative error of the prior registrar in transferring the domain name to Complainant.

Respondent registered the <loansmart.org> domain name on October 9, 2004.

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."

The Panel shall decide this administrative proceeding on the basis of Complainant's representations and exhibits and Respondent’s Response 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

Complainant has established that it has rights in the LOAN MART mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce. 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 notes that Complainant’s mark is LOAN MART and that the added “s” in the domain name at issue makes it not confusingly similar.  Further, Respondent argues that since it has not heard of LOAN MART in the U.K., the public would not find <loansmart.org> confusingly similar to Complainant’s mark.  The Respondent has not provided any documentary evidence or case authority in support of these or other assertions.

The Panel finds that the <loansmart.org> domain name is confusingly similar to Complainant’s LOAN MART mark because the domain name fully incorporates the mark while merely adding the letter “s” to a word in the mark, removing a space from the mark, and adding the “.com” generic top-level domain. None of these changes sufficiently distinguishes the disputed domain name from Complainant’s registered trademark.  See Dollar Fin. Group v. Singer, FA 282770 (Nat. Arb. Forum July 20, 2004) (finding that the <loansmart.org> domain name was confusingly similar to Complainant’s LOAN MART mark); see also Nat’l Geographic Soc. v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s NATIONAL GEOGRAPHIC mark); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to Complainant’s PHILIPS mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant is able to establish a prima facie case by showing that Respondent does not qualify for the three “safe harbors” provided under Policy ¶¶ 4(c)(i)-(iii). Such a showing shifts Complainant’s burden to Respondent, who must come forward with evidence rebutting Complainant’s allegations in order to prevail on this element. In this case, Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the <loansmart.org> domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“[p]roving that the Respondent has no rights or legitimate interests in respect of the [d]omain [n]ame requires the Complainant to prove a negative. For the purposes of this sub-paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for [R]espondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Since Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name, the burden is shifted to Respondent to demonstrate that it has rights or legitimate interests in the domain name.

Although Respondent has not yet made any actual use of the domain name at issue, it contends, without providing specifics or evidence in the form of any exhibit or affidavit, that it intends to make “fair use” of the domain name at issue in the U.K. using a financial information site called “Loan Smart.”

The Panel finds that Respondent has failed to present any circumstances or evidence under which it could substantiate rights or legitimate interests in the disputed domain name. Since Respondent has not used the disputed domain name, it cannot be said to be making a bona fide offering of goods or services, nor can it be said to be making a legitimate noncommercial or fair use of the domain name. In these circumstances, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).

Furthermore, no evidence in the record suggests that Respondent is commonly known by the <loansmart.org> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); 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 mark 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.

Registration and Use in Bad Faith

Respondent is not using the <loansmart.org> domain name for any purpose. Such passive holding equates to bad faith use and registration under Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(a)(iii) 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 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).

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 <loansmart.org> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  January 25, 2005


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