Money-mart.com

The timeline behind money-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. Marc Bertola and Abbeyway Contracts Ltd Claim Number: FA0506000489397 PARTIES Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT 06830-3942. Respondent is Marc Bertola and Abbeyway Contracts Ltd (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <money-mart.com>, registered with Registration Technologies, Inc. PANEL The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically May 31, 2005; the National Arbitration Forum received a hard copy of the Complaint June 2, 2005. On June 2, 2005, Registration Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <money-mart.com> is registered with Registration Technologies, Inc. and that Respondent is the current registrant of the name. Registration Technologies, Inc. verified that Respondent is bound by the Registration Technologies, Inc. registration agreement and thereby has 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 9, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 29, 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@money-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 July 7, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <money-mart.com>, is confusingly similar to Complainant’s MONEY MART mark. 2. Respondent has no rights to or legitimate interests in the <money-mart.com> domain name. 3. Respondent registered and used the <money-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 international vendors of sub-prime consumer financial services. Complainant uses its MONEY MART mark to advertise its business by various forms of media in the United States, Canada and Australia. Since 1982, Complainant and its predecessors have spent millions of dollars in advertising Complainant’s services. To date, Complainant has achieved more than one billion dollars in sales using its MONEY MART mark. Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for its MONEY MART mark (Reg. No. 2,244,158 issued May 11, 1999). Additionally, through its wholly-owned Canadian subsidiary, National Money Mart Company, Complainant owns a registration for the MONEY MART mark with the Canadian Intellectual Property Office (“CIPO”), which was registered on December 7, 1984. In addition, Complainant offers its services online at numerous websites, including websites at the <moneymart.com> and <moneymart.ca> domain names. Respondent registered the <money-mart.com> domain name October 15, 2002. The domain name is not being used for any purpose and merely resolves to a placeholder website. 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar Complainant provided evidence that it registered the MONEY MART mark with the USPTO and CIPO. Complainant’s registration of its mark with multiple federal authorities establishes a prima facie case of Complainant’s rights in the mark, which Respondent is entitled to contest. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Since Respondent has not filed a response, Complainant’s prima facie case of rights in the mark has gone uncontested, and the Panel determines that Complainant has established rights in the MONEY MART mark for the purposes of Policy ¶ 4(a)(i). In General Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000), the panel found that the use of the lowercase format and the addition of a hyphen between the words of Complainant’s registered GENERAL ELECTRIC mark rendered the <general-electric.com> domain name to be “without doubt confusingly similar” to Complainant’s mark. See also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of the complainant’s registered mark is confusingly similar). Furthermore, the panel held that “the addition of the generic top-level domain (gTLD) name ".com" is likewise without legal significance since use of a gTLD is required of domain name registrants.” See General Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000). In the instant case, the <money-mart.com> domain name differs from Complainant’s MONEY MART mark only with the additions of a hypen and a gTLD, which have been held to be “differences without legal significance from the standpoint of comparing” a domain name to a trademark. Id.; see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the complainant’s mark is identical to and confusingly similar to the complainant’s mark). The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant satisfied Policy ¶ 4(a)(i). Rights to or Legitimate Interests It has been established under the Policy that Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the disputed domain name. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held: Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name 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 respondents 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its initial burden in establishing a prima facie case, the Panel will now conduct an analysis of whether Respondent has met its burden to indicate why it should be considered to have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). The Panel finds no evidence in the record indicating that Respondent is commonly known by the <money-mart.com> domain name. The only evidence of Respondent’s identity is the WHOIS registration information, which identifies Respondent as “Marc Bertola” of “Abbeyway Contracts Ltd.” without any mention of a potential relationship to the disputed domain name. Furthermore, due to Respondent’s failure to provide any evidence to assert that it is commonly known by the disputed domain name, the Panel finds that Respondent is essentially admitting that it has not established rights or legitimate interests pursuant to the Policy ¶ 4(c)(ii) safe harbor provision. See Tercent Inc. v. Lee 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Complainant argues that Respondent should be found to have established no rights or legitimate interests in the <money-mart.com> domain name, because Respondent has not made any use of the domain name. Numerous panels have held under the Policy that passively holding a domain name that includes the mark of another is not sufficient to establish a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”). Furthermore, in Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000), the complainant submitted evidence that the respondent was not using the disputed domain name and had not demonstrated any preparations to use it. The Pharmacia & Upjohn AB panel found that, in such circumstances, a respondent’s failure to respond allows the panel to infer “that any evidence of the Respondent would not have been in his favor.” Id. Thus, where the disputed domain name is not in use and Respondent has failed to respond to the Complaint, the Panel finds that Respondent has not met its burden to establish rights or legitimate interests pursuant to Policy ¶ ¶ 4(c)(i) and (iii). The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith The Policy provides that Complainant may satisfy the bad faith registration and use requirement of Policy ¶ 4(a)(iii) by providing evidence of one of the listed circumstances found under Policy ¶ 4(b). However, the Policy states explicitly that the panel is not limited to the provided list in making a determination of bad faith registration and use. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000): The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names. Id. Complainant asserts that Respondent’s failure to use the <money-mart.com> domain name for any purpose within a period of more than two years constitutes passive holding and is evidence of bad faith registration and use. In Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000), the respondent had not made any use of the disputed domain name for a period of over two years. The panel held that while the respondent’s failure to respond to the complaint allowed an inference in the complainant’s favor, the respondent’s failure to use the disputed domain name for “a substantial period of time” supported an inference that the domain name had been “registered without a bona fide intent to make good faith use.” Id.; see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith). Thus, the Panel finds that the circumstances of the instant case allow an inference that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(a)(iii). Furthermore, a respondent’s registration of a domain name that contains the mark of another with actual or constructive knowledge of the mark holder’s rights is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). In this case, Complainant’s registration of its MONEY MART mark on the Principal Register of the USPTO before Respondent’s registration of the domain name confers upon Respondent constructive knowledge of Complainant’s rights in the mark at the time of the domain name registration. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072). Thus, Respondent had constructive knowledge of Complainant’s rights in the MONEY MART mark when it registered the <money-mart.com> domain name and, therefore, registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). The Panel finds that Complainant satisfied 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 <money-mart.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Carolyn Marks Johnson, Panelist Dated: July 20, 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.