Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Dollar Financial Group, Inc., Berwyn, PA, USA ("Complainant"). The Respondent is Advanced Legal Systems, Inc., Clackamas, OR, USA ("Respondent").

The domain name at issue is "LOAN-MART.COM", registered with Network Solutions Inc ("NSI").

The Panelist 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 the panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/05/2000; The Forum received a hard copy of the Complaint on 07/05/2000.

On 07/10/2000, NSI confirmed by e-mail to The Forum that the domain name "LOAN-MART.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 07/19/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/08/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

On August 10, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

Respondent contends that it registered the domain name "loan-mart.com" for an existing client as Respondent prepared to develop a web site for this client during the summer of 1998. That the client has since gone out of business. As part of the settlement of their account Respondent assumed ownership of the registration of the domain name.

Respondent contends that its client "did in fact have a web site posted to his domain name for more that a year following the registration of the domain name loan-mart.com on August 25, 1998".

Respondent claims to have made an adequate trademark search of "LOAN MART". The search was made "upon registering the said domain name loan-mart.com". Respondent further claims, "Being that Dollar Financial Group received the trademark for LOAN MART on September 29, 1998 it did not appear in the search performed before the August 25, 1998 domain name registration date".

Respondent denies being aware of the LOAN MART identity on services regarding small consumer payday loans.

Respondent denies it registered the domain name with the intent to sell, rent, or otherwise transfer the domain name for valuable consideration in excess of its out-of-pocket costs directly related to the domain name. Respondent claims to be the legitimate owner of the domain name in dispute.

Respondent submitted no evidence that it has developed a web site location at loan-mart.com, made any bona fide use of the domain name, sold any goods or service under said domain name, and is known by the domain name.

Respondent claims to be the legitimate owner of loan-mart.com and is willing to negotiate the transfer of the said domain name.

Paragraph 4.a of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The Respondent’s domain name is confusingly similar to the Complainant’s registered service mark. The presence of the hyphen in the domain name does not destroy the Complainant’s rights in the mark. See General Electric Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in domain name between "General" and "Electric" is confusingly similar to Complainant’s mark).

The Respondent has no rights or legitimate interests in the domain name in question.

The Respondent is not commonly known by the domain name in question. Policy ¶4.c.(ii). The Respondent is known by the name Advanced Legal Systems, Inc.

The Respondent is not using the domain name in connection with a bona fide offering of goods and services. Policy ¶ 4.c.(i). The Respondent is not making a legitimate noncommercial or fair use of the domain name. Policy ¶ 4.c.(iii).

The Respondent is in the business of designing, selling, and trading domain names. The Respondent knew or should have known of Complainant’s mark when the Respondent registered the domain name. In fact, given the slight variation to the Complainant’s mark and domain names, the only reasonable inference is that this particular name was chosen because of the Complainant’s mark. See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 15, 2000) (finding that Respondent "clearly had knowledge or reasonably should have had knowledge" of Complainant’s well-known mark).

The panel concludes that the domain name was registered in bad faith.

The Respondent is using the domain name, which encroaches on Complainant’s mark to advertise its domain creation and sales services, creating the likelihood of confusion about the source or sponsorship of the services. Policy ¶ 4.b(iv).

The Respondent registered the domain name for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or a competitor of the Complainant for consideration in excess of out of pocket costs. Policy ¶ 4.b.(i).

The panel concludes that the domain name is being used in bad faith.

In summary, the Respondent’s response to Complainant’s allegations appear inconsistent and without credibility. In one response Respondent claims that it registered the domain name in dispute for a former client on August 25, 1998. The Respondent failed to identify this former client, but represents that this client had a web site posted to this domain name for more than a year after August 25, 1998. If this were the case, the original registrant would be someone other than the Respondent. Network Solutions, Inc., the registrar, confirmed that the original registrant was in fact Advance Legal Systems, Inc., the Respondent. Respondent made no claim that it had created a web site posted to this domain name.

At one point in its Response Respondent claimed to have purchased the domain name loan-mart.com on August 25, 1998 from the unidentified client. In the same Response Respondent claims it "assumed ownership" of the registration of the domain name as part of the settlement of its account with the "client" who had since gone out of business.

Failure on part of Respondent to provide clear and concise responses affects the credibility and weight to be given said responses. It is an indication of bad faith at the time of registration and use of the domain name thereafter.

The Respondent registered and is using the domain name in bad faith.

Having established all three elements required by the ICANN Policy Rule 4.a, it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "LOAN-MART.COM" be transferred from the Respondent to the Complainant.

Judge Harold Kalina (Ret).

Dated: August 14, 2000