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P.O. BOX 50191 _________________________________________
Dollar Financial Group, Inc.
vs. Carlton Roark d/b/a Loanmart
_________________________________________
The above entitled matter came on for an administrative hearing on March 7, 2000, before Paul A. Dorf, Arbitrator, on the Complaint of Dollar Financial Group, Inc., hereafter "Complainant", against Carlton Roark d/b/a/a Loanmart, hereinafter "Respondent". Complainant was represented by Hilary B. Miller, Esq., 112 Parsonage Road, Greenwich, Connecticut 06830-3942. There was an answer on behalf of Respondent. Upon the written submitted record, the following DECISION is made.
PROCEDURAL FINDINGS
Domain Name: loanmart.org and loanmart.net Domain Name Registrar: Network Solutions, Inc. Date of Domain Name Registration: March 25, 1999 Date Complaint was sent to Respondent in accordance with Rule 2(a)*: February 9, 1999 Response Due Date: March 3, 1999
The Complainant filed its complaint with the National Arbitration Forum on February 9, 2000. After reviewing the Complaint for administrative compliance, The Forum transferred the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d) The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.
The Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, the Respondent agreed to resolve any dispute regarding it domain name through ICANN’S Uniform Domain Name Dispute Resolution Policy.
Respondent on February 19, 2000 filed a response to Domain Complaint.
FINDINGS OF FACT
1. Respondent’s second-level domain name is identical to complainant’s registered service mark and identical to complainant’s registered domain name loanmart.com.
2. Respondent acknowledges registration of domain names loanmart.net and loanmart.org, which are similar to complainant’s registered trademark. However, the use of names that are identical to those used by others is allowed by Federal Trademark law, as long as the class of goods and services is not similar or confusing. Incidentally, Respondent’s investigation of the domain name loanmart. com through www.whois.net and the Whois Lookup at www.networksolutions.com (copy enclosed) as of February 12, 2000 discloses a registrant other than the complainant.
3. Complainant is the senior user of the mark Loan Mart®. Upon information and belief, respondent has made no commercial use of the mark and has sold no goods or services under the mark.
4. Complainant is not the senior user of the mark, as it pertains to the domain name. Furthermore, Respondent has been unable to make commercial use of its Loanmart domain names solely because Complainant initiated actions to have respondent’s domain names deactivated and placed on hold status.
5. Prior to make any commercial use of the mark, and shortly after registering the domain names loanmart.org and loanmart.net with Network Solutions, respondent initiated contact with complainant with a view toward attempting to extort $7,500 from complainant in return for respondent’s agreement to transfer the domain names to complainant.
6. Respondent argues that this is a false and gross mischaracterization of the events that transpired. Please note that respondent was already pursuing the development of a commercial web site in the field of Health and Beauty care products. Good domain names for this field, and most others, for that matter, are already taken, so respondent chose to use a domain name that was an acronym for "Lotions, Oils, And Nutriments Mart". In addition, Respondent also obtained for this endeavor, the toll free number 1-877-LOANMART, which currently rings into Respondent’s home office. As further evidence of Respondent’s bona fide intention to create a Health & Beauty care web site, Respondent previously obtained U.S. Patent # 5,379,909 on January 10, 1995 on a consumer product container for Health & Beauty care lotions and liquids. This can be verified at www.uspto.gov. The product was also featured in at least one Health and Beauty care trade magazine.
a. After registering loanmart.net and loanmart.org Respondent checked the USPTO’s online Trademark database to ensure that the name was not already registered for the class of goods and services sought, (Health & Beauty Care) and it was not. Respondent noted that Complainant had a registered trademark for that name in a completely unrelated class of goods and services and assumed Complainant had abandoned their Trademark. This assumption was reasonable given the fact that Complainant had willfully neglected to undertake the minimal effort required to obtain registration for the disputed domain names herein, for over an entire year after their first use of the name.
b. Approximate the time Respondent had registered the loanmart domain names, Respondent was seeking capital for another business venture, and chose to offer Complainant the domain names, if they had not in fact abandoned their Trademark. Registering and then contacting Complainant for the sale of Respondents domain names was not Respondents original intention, as evidenced by the facts above.
7. Not until after he was requested to desist from use of the domain names and his extortion demands were spurned, did Respondent in fact create content at a World Wide Web site with the domain names in question; such content was unrelated to loans or anything having to do with the registered mark.
8. Respondent was developing site content offline immediately after the domain names in question were registered, but ceased after Complainant initiated actions to deactivate Respondent’s domain names, and place them on hold.
a. For the record, Respondent vehemently objects to Complainant’s irresponsible and inflammatory use of the words "extort" and "extortion" to malign Respondent.
b. Please also note that Complainant has previously indicated their intention to effect a form of malicious prosecution upon Respondent in order to obtain Respondent’s domain names. On April 22, 1999 Mike Marcus of Dollar Financial Group transmitted an email message to Respondent stating "lube up", a threatening metaphor commonly used to warn one of malicious and hardball legal tactics, a copy of which was presented.
c. Please also note for the record that on April 13, 1999 Complainant’s attorney Hillary Miller transmitted a similarly profane email message to Respondent in which she instructed Respondent to "Go to Hell", a copy of which was presented.
d. Respondent respectfully requests that Complainant’s inflammatory use of the words "extort" and "extortion" be taken in light of Complainant’s true motivations.
9. Based on the foregoing, Respondent should be found to have registered the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations for loanmart.org and loanmart.net to complainant, who is the owner of the service mark Loan Mart®, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
10. Based on the above, Respondent has clearly demonstrated their good faith intentions originally, and thereafter, to use the domain names loanmart.org and loanmart.net for a Health & Beauty care web site.
11. Based on the foregoing, Respondent intentionally attempted to attract, for commercial gain, Internet users to his web sites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site.
12. Complainant’s allegation above is nonsensical. Why would Respondent who is seeking to develop a Health & Beauty care web site seek to attract those seeking financial services?
13. Complainant is being quite disingenuous to suggest that visitors to a web site for Health & Beauty care products would be confused and possibly believe that Dollar Financial Group might be somehow affiliated, sponsoring, or endorsing the products featured at the site.
14. If Complainant’s allegation #6 were true or had any merit, they (Complainant) themselves would be guilty of their own charge, since the second level name of their own web site at www.dfg.com is identical to the mark of another currently registered Trademark. The owner of that mark is the Dalton Foundries Group who registered the mark in 1964.
15. If Complainant’s argument had any merit, Trademarks would be issued once, to one party, without regard to their use (i.e., class of good or services), which is not the case.
16. Respondent respectfully requests that it be allowed to keep and use the domain names loanmart.net and loanmart.org for use as a Health & Beauty care products web site. Complainant’s actions have already caused Respondent to incur unnecessary delays and expenses.
17. As required by the rules governing this response, Respondent states that it does in fact prefer correspondence by U.S. Mail, and does "not" request a three-member panel.
18. "Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."
CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:
The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complainant. For that reason, the undersigned decides that:
a. The domain name as registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
b. the Respondent has no rights or legitimate interest in respect of the domain name; and
c. the Respondent domain name has been registered and is being used in bad faith.
It is therefore just, right and proper that the domain name "loanmart.org" and "loanmart.net" be transferred to the Complainant.
DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "loanmart.org" and "loanmart.net" BE TRANSFERRED TO COMPLAINANT DOLLAR FINANCIAL GROUP, INC.
Dated: March 7, 2000,
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