Generic Top Level Domain Name (gTLD) Decisions

Complainant is Dollar Financial Group, Inc., Berwyn, PA, USA ("Complainant") represented by Hilary B. Miller. Respondent is MH2 & Associates, Alpharetta, GA, USA ("Respondent").

The domain name at issue is "shoploanmart.com" registered with Register.com.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 28, 2001; the Forum received a hard copy of the Complaint on March 1, 2001.

On March 2, 2001, Register.com confirmed by e-mail to the Forum that the domain name "shoploanmart.com" is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 March 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 22, 2001 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@shoploanmart.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 Forum transmitted to the parties a Notification of Respondent Default.

On March 29, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

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

Complainant makes the following allegations, as stated directly in the complaint:

" Respondent’s second-level domain name SHOPLOANMART.COM is confusingly similar to complainant’s registered service mark LOAN MART® and confusingly similar to complainant’s own registered domain names which incorporate the LOAN MART® mark."

" Complainant Dollar Financial Group, Inc., a New York corporation, is one of the largest national originators of small consumer loans, using the LOAN MART® name and mark. Complainant also widely uses the mark LOAN MART® in the form of the following logotype:

" Since 1997, complainant has spent millions of dollars advertising its consumer financial services and has, to date, originated over $400,000,000 in consumer loans, a substantial portion of which have been originated at complainant’s stores bearing the LOAN MART® name and logo."

" Complainant also originates loans online at its various websites, including those incorporating the mark in question. See, e.g., http://www.loanmart.net/. Thus, there is a substantial likelihood of confusion with an Internet domain that differs from complainant’s registered mark by adding the word SHOP.

" Complainant is the senior user of the mark LOAN MART® and has been continuously using the said mark and the logo, in various forms, in interstate commerce to describe its short-term consumer loan services since 1997. Such mark was granted registration by the U.S. Patent and Trademark Office on September 29, 1998.

" Respondent only very recently registered its domain name in dispute herein, on or about January 7, 2001, long following the commencement of complainant’s use of the mark LOAN MART® and the registration of claimant’s mark LOAN MART®.

" At the time of registration of respondent’s domain names, respondent knew or reasonably should have known of complainant’s registered service mark LOAN MART® and could easily have ascertained the status of such mark from a conventional trademark search, but failed to do so.

" Respondent is not generally known by the mark SHOPLOANMART and, prior to registration of the domain name at issue herein, had made no commercial use of the mark SHOPLOANMART and had sold no goods or services under the mark (or any colorably similar mark) in any jurisdiction and therefore has no rights or legitimate interest in the domain name in dispute.

" Telephone calls to the telephone number listed at respondent’s web site are answered by a woman at respondent’s residence and not at a place of business. The telephone number is a registered residential telephone and not a business line. Complainant has conducted an extensive business name, common-law and state and federal trademark search and has discovered no evidence of the use in commerce of the mark SHOPLOANMART by respondent in any trade or business. Accordingly, respondent has no legitimate interests in respect of the domain name.

" Because complainant’s services are sold in significant part over the Internet, there is a meaningful chance that an appreciable number of ordinary consumers will be confused, mistaken or deceived into believing that respondent’s services sold at the shoploanmart.com web site originate with, or are sponsored by, complainant, which is not the case. Respondent’s services are sold in direct competition with the consumer loan services of complainant.

" Moreover, the addition of the word "shop" or variants thereof to respondent’s domain name is insufficient to distinguish it from complainant’s registered mark. See, generally, Cellular One v. IP Services, No. D200-1035 (WIPO, November 6, 2000) (SHOPCELLULARONE.COM and SHOPCELLONE.COM are confusingly similar to CELLULAR ONE®); L.L. Bean, Inc. v. ShopStar Network, No. FA95404 (NAF, September 14, 2000) (SHOPLLBEAN.COM is confusingly similar to L.L. BEAN®); Time Warner Entertainment Co., L.P. v. HarperStephens, No. D2000-1254 (WIPO, December 13, 2000) (HARRYPOTTERSHOPPE.COM, HARRYPOTTERSHOPPE.NET, HARRYPOTTERSHOPPE.ORG, HARRYPOTTERSHOPS.COM, HARRYPOTTERSHOPS.NET and HARRYPOTTERSHOPS.ORG are confusingly similar to HARRY POTTER®); Sony Corp. v. Inja, No. D2000-1409 (WIPO, December 9, 2000) (SONYSHOPPING.COM is confusingly similar to SONY®).

" Complainant has consistently prosecuted infringing domain names and has never knowingly acquiesced in any infringing junior use. See, generally, Dollar Financial Group, Inc. v. Roark, No. FA0093671 (NAF, March 7, 2000) ("loanmart.net" and "loanmart.org") (Dorf, J.); Dollar Financial Group, Inc. v. "Same," No. FA0094734 (NAF, June 8, 2000) ("theloanmart.org" and "theloanmart.net") (Dorf, J.); Dollar Financial Group, Inc. v. Analytical Services, No. FA0095106 (NAF, July 24, 2000) ("loanmartusa.com") (Blizzard, J.); Dollar Financial Group, Inc. v. RXW Management, No. FA0095108 (NAF, August 4, 2000) ("onlineloanmart") (Carmody, J.); Dollar Financial Group, Inc. v. Advanced Legal Systems, Inc., No. FA0095102 (NAF, August 14, 2000) ("loan-mart.com") (Kalina, J.); Dollar Financial Group, Inc. v. The Diapers, No. FA0095423 (NAF, October 2, 2000) ("euloanmart.com" and "euroloanmart.com") (Dorf, J.); Dollar Financial Group, Inc. v. McNair, No. FA0095420 (NAF, September 29, 2000) ("eloan-mart") (Dorf, J.); Dollar Financial Group, Inc. v. Pavon Fin’l Corp., No. FA0095836 (NAF, November 29, 2000) (Johnson, J.); Dollar Financial Group, Inc. v. VQM Net, No. FA0096101 (NAF, January 25, 2001) ("auto-loan-mart.com") (Michaelson, J.); Dollar Financial Group, Inc. v. First Alliance Mortgage, No. FA0096213 (proceedings stayed due to respondent’s bankruptcy; motion for relief from automatic stay pending).

" Complainant has thus aggressively policed its valuable trademark rights under its registered LOAN MART® mark."

B. Respondent

No response was received by the Forum.

Complainant provides short-term consumer loans under its LOAN MART name and mark. Complainant has been using this mark in connection with its services since 1997. The LOAN MART trademark is registered with the United States Patent and Trademark Office under the number 2,192,247, registered on September 29, 1998.

Respondent registered the domain name in question on January 7, 2001. Respondent is using the domain name to link to a website that offers many types of loans, including residential, commercial, and home equity loans. Respondent advertises a telephone number and e-mail address where he can be contacted. The website also contains links to other loan-related websites and real estate information.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Respondent’s domain name "shoploanmart.com" is confusingly similar to Complainant’s registered service mark LOAN MART. The addition of "SHOP" does not alter the underlying mark held by Complainant. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word "shop" with the Complainant’s registered mark "llbean" does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). Accordingly, the Panel finds that paragraph 4(a)(i) is satisfied.

By its failure to respond, Respondent has done nothing to contest Complainant’s allegation that Respondent lacks any rights or legitimate interests in the disputed domain name.

Respondent is using the confusingly similar domain name to link to a website offering competing services. Using the domain name in connection with a bona fide offering of goods and services is one method for Respondent to prove rights and legitimate interests in the domain name. Policy ¶ 4(c)(i). However, it has been established in other UDRP proceedings that use of a confusingly similar website in connection with competing services is not a "bona fide" use under the Policy. See North Coast Medical, Inc. v Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that "[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of website using a domain name which is confusingly similar to the complainant’s mark and for the same business); America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that respondent’s operation of web-site offering essentially the same services as the complainant and displaying the complainant’s mark was insufficient for a finding of bona fide offering of goods or services). Therefore, Respondent has no rights and legitimate interests under Policy ¶ 4(c)(i).

There is also no evidence that Respondent has been commonly known as SHOPLOANMART. Policy ¶ 4(c)(ii). This is further supported by the fact that Respondent only commenced use of the domain name and website after the January 7, 2001 registration date. There is no evidence that Respondent was conducting business under the SHOPLOANMART term prior to the registration of the domain name and development of the corresponding domain name. In this short time frame, it is rather unlikely that Respondent could have established such an association with the mark to become "commonly known."

Lastly, given the commercial nature of the loan services offered on Respondent’s website, Respondent cannot claim that he has made a legitimate noncommercial or fair use of the disputed domain name. Policy ¶ 4(c)(iii).

No other circumstance has been evidenced by Respondent that could reasonably support an inference in its favor under paragraph 4(c) of the Policy. Therefore the Panel finds that Respondent has no rights or legitimate interests to the disputed domain name and that paragraph 4(a)(ii) has been proved.

By its default, Respondent has not responded to the very specific allegation of the Complainant that Respondent registered the domain name in bad faith.

With regard to ‘bad faith’, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith.

Paragraph 4(b)(iii) states "you have registered the domain name primarily for the purpose of disrupting the business of a competitor." Paragraph 4(b)(iv) states "[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of you website or location or of a product or service on your website or location."

Respondent’s use of the domain name to link to his website which offers competing loan services undoubtedly reveals bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands); Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant); MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).

The Panel therefore concludes that Respondent has registered and used the disputed 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, "shoploanmart.com" be transferred from the Respondent to the Complainant.