Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Dollar Financial Group, Inc., Berwyn, PA, USA ("Complainant") represented by Hilary B. Miller. The Respondent is Business Solutions of Texas, Early, TX, USA ("Respondent").

The domain name at issue is "moneymart.net " registered with Network Solutions.

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 a panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 21, 2000; The Forum received a hard copy of the Complaint on November 22, 2000.

On November 29, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "moneymart.net" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 2000 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@moneymart.net by e-mail.

On November 30, 2000, Respondent filed its Response to Complainantís Complaint. Said Response was timely filed in accordance with the Policy.

On December 22, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

Complainant contends that Respondents domain name is confusingly similar to Complainantís registered service mark MONEY MART® and confusingly similar to Complainantís registered domain names which incorporate said mark. The Complainant also contends that the Respondent has no legitimate interest in the domain names and registered same in bad faith.

B. Respondent

The Respondent registered the domain name with the intention of starting an investors bulletin board site. The Respondent contends that the domain name was not registered in bad faith and was not aware of any interest Complainant had in the .net extension, had no knowledge of any trademark rights to the name and in fact only learned of the Complainantís existence when contacted by Mike Marcus on behalf of the Complainant. Respondent also contends that since being informed of the trademark he has left the address dormant.

Complainant has been continuously using the mark MONEY MART® in interstate commerce since 1984, and filed itís trademark application on January 27, 1997. Complaint's mark was granted registration by the U.S. Patent and Trademark Office on May 11, 1999, under serial number 75-231431 for check cashing and electronic funds transfer services.

Respondent registered the domain name that is the subject of this Complaint on January 29, 1999, some 15 years after the Complainant had begun using the name in commerce. On March 3, 2000, Complainant protested the domain name registration via correspondence to the Respondent, and Respondent did not communicate with the Complainant regarding this issue.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

Paragraph 4(a) of the 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 Complainant's registered service mark MONEY MART® and its domain name moneymart.com is confusingly similar to the domain name registered by the Respondent. The Respondent merely added the ".net" extension to the mark. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO April 27, 2000) (holding that the domain name ROBOHELP.COM is identical to Complainantís registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

As the Respondent has made no commercial use of the mark, has sold no goods or services under the mark, has not been known by the mark in any trade or business. See Hartford Fire v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainantís marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondentís use of the Complainantís mark precludes Complainant from registering the corresponding second-level domain name. The Complainant currently holds the first-level domain name of "moneymart.com" and would like to use the second-level domain name for another project they are working on. See Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corp. v. S&S Enterprises Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that "Registration of a domain name (by Respondent that incorporates anotherís trademark) goes further than merely correctly using in an advertisement the trademark of another in connection with that otherís goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name").

Also, by its own admission, the Respondent has left the address dormant. See The Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or web site that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name "MONEYMART.COM" be transferred from the Respondent to the Complainant.