Acecheckcashin.com

The timeline behind acecheckcashin.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 Ace Cash Express, Inc. v. Marketing Total S.A. Claim Number: FA0710001097327 PARTIES Complainant is Ace Cash Express, Inc. (“Complainant”), represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP, 1601 Elm Street, Suite 3000, Dallas, TX 75201. Respondent is Marketing Total S.A. (“Respondent”), P.O. Box 556, Main Street, Charlestown, West Indies KN. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <acecheckcashin.com>, registered with Capitoldomains, LLC. 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. Judge Harold Kalina (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 25, 2007. On October 22, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <acecheckcashin.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, LLC 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 October 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 2007 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@acecheckcashin.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 27, 2007, 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. 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 <acecheckcashin.com> domain name is confusingly similar to Complainant’s ACE CASH EXPRESS mark. 2. Respondent does not have any rights or legitimate interests in the <acecheckcashin.com> domain name. 3. Respondent registered and used the <acecheckcashin.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Ace Cash Express, Inc., is a leading retailer of financial services, including check cashing, short-term consumer loans, bill payment and prepaid debit card services. Complainant is also the largest owner, operator, and franchisor of check cashing stores in the United States. Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the ACE CASH EXPRESS mark (Reg. No. 3,051,382 issued January 24, 2006). Complainant also operates a website at the <acecashexpress.com> domain name. Respondent registered the <acecheckcashin.com> domain name on September 20, 2007. Respondent’s disputed domain name resolves to a website that displays hyperlinks to various third-party websites, some of which are in direct competition with the services offered by 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. 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 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 asserts rights in the ACE CASH EXPRESS mark through registration of the mark with the USPTO. The Panel finds that this timely registration sufficiently establishes Complainant’s rights in the mark under the parameters of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). The <acecheckcashin.com> domain name contains the dominant portions of Complainant’s ACE CASH EXPRESS mark and simply modifies the “cash” portion of the mark and adds the term “check,” which is descriptive of Complainant’s business, while deleting the term “express.” As the disputed domain name also includes a generic top-level domain, which is irrelevant to a Policy ¶ 4(a)(i) analysis, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant must, under the requirements of Policy ¶ 4(a)(ii), present a prima facie case with regards to Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(a)(ii), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name). The Panel finds that Complainant has adequately met its burden and thus the burden has shifted to Respondent to demonstrate rights or legitimate interests in the <acecheckcashin.com> domain name. Despite Respondent’s failure to submit a response, the Panel will examine all the elements under Policy ¶ 4(c) to see if Respondent has rights or legitimate interests in the disputed domain name. Respondent is using the <acecheckcashin.com> domain name to host a website that displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant, a use that is presumably for Respondent’s own commercial benefit through the earning of click-through fees. Thus, there is no evidence that Respondent is using the <acecheckcashin.com> domain name for 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 Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). Complainant contends that Respondent is not commonly known by the <acecheckcashin.com> domain name as required by Policy ¶ 4(c)(ii). As Complainant has stated that Respondent is not authorized to use its ACE CASH EXPRESS mark, and there is no evidence in the record, including Respondent’s WHOIS information, that Respondent is or ever has been commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the disputed domain name under the parameters of Policy ¶ 4(c)(ii). See eLuxury.com, Inc. v. Sandulli, FA 960178 (Nat. Arb. Forum June 7, 2007) (finding that the respondent was not commonly known by the <eluxury.mobi> domain name where it was not known by the name at the time of registration and the complainant had not given the respondent a license); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith The website that resolves from the <acecheckcashin.com> domain name displays, among other things, hyperlinks to websites in direct competition with Complainant and the services Complainant offers under its ACE CASH EXPRESS mark. Such use is a disruption of Complainant’s business and indicates bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Moreover, Respondent is using a domain name which is confusingly similar to Complainant’s mark to operate a website whereby Respondent accumulates click-through fees for redirecting Internet users. Such use of the <acecheckcashin.com> domain name indicates bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). 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 <acecheckcashin.com> domain name be TRANSFERRED from Respondent to Complainant. Judge Harold Kalina (Ret.), Panelist Dated: December 10, 2007 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.