Payday-loan-mart.com

The timeline behind payday-loan-mart.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Dollar Financial Group, Inc. v. America's Cash Express, LLC Claim Number: FA0502000418592 PARTIES Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT 06830-3942. Respondent is America's Cash Express, LLC (“Respondent”), 12208 North 32nd Street, Phoenix, AZ 85032. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <payday-loan-mart.com>, registered with Network Solutions, 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. Sandra Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 11, 2005. On February 11, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <payday-loan-mart.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 February 15, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 7, 2005 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@payday-loan-mart.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 March 11, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin 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. 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 <payday-loan-mart.com> domain name is confusingly similar to Complainant’s LOAN MART mark. 2. Respondent does not have any rights or legitimate interests in the <payday-loan-mart.com> domain name. 3. Respondent registered and used the <payday-loan-mart.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, using the LOAN MART name and mark. To date, Complainant has originated over $700,000,000 in consumer loans. Complainant holds a trademark registration for the LOAN MART mark with the United States Patent and Trademark Office (Reg. No. 2,192,247 issued September 29, 1998) and has used the mark in commerce since at least September 1997. Complainant also originates loans online at various websites whose domain names incorporate their mark, e.g. <loanmart.net>. Respondent registered the <payday-loan-mart.com> domain name on February 8, 2005. Respondent is using the disputed domain name to direct Internet users to a website with the content title, “Payday Loan Fast and Easy!” The website offers payday and short-term consumer loans in direct competition with Complainant. 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 Complainant has established that it has rights in the LOAN MART mark through registration with the United States Patent and Trademark Office and through continued use of its mark in commerce over the last eight years. See 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.; see also 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 Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) finding that the failure of complainant to register all possible domain names that surround its substantive mark does not hinder complainant’s rights in the mark, ntoing “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”. Respondent’s <payday-loan-mart.com> domain name is confusingly similar to Complainant’s mark because the domain name wholly incorporates Complainant’s LOAN MART mark and simply adds a generic or descriptive term “payday,” hyphens to separate the words and the generic top-level domain (“gTLD”) “.com.” The addition of the generic or descriptive term “payday,” hyphens and a gTLD do not distinguish Respondent’s domain name from Complainant’s mark. Thus, the Panel concludes that Respondent’s minor alterations to Complainant’s mark are not sufficient to differentiate Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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 Sony Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000) finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied; see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) finding confusing similarity where respondent’s domain name combines complainant’s mark with a generic term that has an obvious relationship to complainant’s business; see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). The Panel finds that Complainant fulfilled Policy ¶ 4(a)(i). Rights or Legitimate Interests Respondent has not submitted a response in this proceeding. Thus, the Panel chooses to view the Complaint in the light most favorable to Complainant and accepts as true all reasonable assertions made by Complainant. Complainant has asserted that Respondent lacks rights and legitimate interests in the domain name. Respondent has not refuted this assertion. Accordingly, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain name. See 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”; see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that under certain circumstances the mere assertion by complainant that respondent has no rights or legitimate interests is sufficient to shift the burden of proof to respondent to demonstrate that such rights or legitimate interests do exist; see also 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. In the WHOIS contact information, Respondent lists its name and administrative contact as “America’s Cash Express LLC.” However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was ever commonly known by the disputed domain name. Moreover, Complainant’s first use of the LOAN MART mark in commerce and its registration of the mark predates Respondent’s registration of the domain name. Furthermore, Respondent has not been authorized by Complainant to use the LOAN MART mark in its domain name. Thus, the Panel finds that Respondent has not been commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“[N]othing 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 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"; 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 rights in the mark precede respondent’s registration; (3) respondent is not commonly known by the domain name in question. Respondent’s use of the infringing <payday-loan-mart.com> domain name to offer and advertise payday loans and related services, which are similar to services that Complainant offers at its website, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) finding respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) finding that respondent, as a competitor of complainant, had no rights or legitimate interests in a domain name that utilized complainant’s mark for its competing website; see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) finding that the disputed domain names were confusingly similar to complainant’s mark and that respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods. The Panel finds that Complainant fulfilled Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Respondent is using Complainant’s mark in a domain name to attract Internet users to its competing website. Since both Respondent and Complainant operate in the same line of business and market similar products via the Internet, Respondent knew or should have known of Complainant’s business under its registered mark. Based on the foregoing, the Panel presumes that Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business. Thus, the Panel finds that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) finding that, given the competitive relationship between complainant and respondent, respondent likely registered the contested domain name with the intent to disrupt complainant's business and create user confusion; see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding respondent acted in bad faith by attracting Internet users to a website that competes with complainant’s business; see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) finding that respondent registered and used the domain name <eebay.com> in bad faith where respondent has used the domain name to promote competing auction sites. It is likely that Internet users will be confused about Complainant’s affiliation with the domain name because the loan services offered at Respondent’s website are similar to the loan services offered by Complainant, and the domain name hosting Respondent’s website wholly incorporates Complainant’s mark. Thus, the Panel finds that since Respondent is commercially benefiting from using a confusingly similar domain name, Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if respondent profits from its diversionary use of complainant's mark when the domain name resolves to commercial websites and respondent fails to contest the Complaint, it may be concluded that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) finding bad faith where respondent directed Internet users seeking complainant’s site to its own website for commercial gain; see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) finding that respondent registered the domain name <statefarmnews.com> in bad faith because respondent intended to use complainant’s marks to attract the public to the website without permission from complainant. The Panel finds that Complainant fulfilled Policy ¶ 4(a)(iii). 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 <payday-loan-mart.com> domain name be TRANSFERRED from Respondent to Complainant. Sandra Franklin, Panelist Dated: March 25, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.