Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Dollar Financial Group, Inc., Berwyn, PA, USA ("Complainant") represented by Hilary B. Miller, of 112 Parsonage Road. The Respondent is Jewald & Associates Ltd., Palos Park, IL, USA ("Respondent").

The domain names at issue are "usaloanmart.com" and "usloanmart.com", registered with Bulkregister.

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

The Honorable Charles K. McCotter, Jr. as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 16, 2001; the Forum received a hard copy of the Complaint on February 19, 2001.

On February 21, 2001, Bulkregister confirmed by e-mail to the Forum that the domain names "usaloanmart.com", "usloanmart.com" are registered with Bulkregister and that the Respondent is the current registrant of the name. Bulkregister has verified that the Respondent is bound by the Bulkregister 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 February 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@usaloanmart.com, usloanmart.com by e-mail.

A timely response was received and determined to be complete on March 14, 2001.

On March 23, 2001, pursuant to the Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

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

A. Complainant

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:

The Respondent’s second-level domain names usloanmart.com and usloanmart.com are confusingly similar to the Complainant’s registered service mark LOAN MART® and confusingly similar to the Complainant’s own registered domain names which incorporate the LOAN MART® mark. The addition of "US" or "USA" does not alter the underlying mark held by the complainant. Marriott Intl’l, Inc. v. Café au Lait, FA93670 (Nat. Arb. Forum March 13, 2000) (finding that the respondent’s domain name "Marriott-hotel.com" is confusingly similar to the complainant’s mark MARRIOTT). See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar."); see also Treeforms, Inc. v. Cayne Ind. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access the complainant’s web site, think that an affiliation of some sort exists between the complainant and the respondent, when in fact, no such relationship would exist).

The Complainant owns the registered mark LOAN MART, which is used in connection with its consumer financial loan services. Since 1997, the Complainant has invested millions of advertising dollars in promoting its mark.

The Respondent has no rights or legitimate interests in the disputed domain names because the Respondent is not commonly known by the domain names, nor has the Respondent used the domain names in connection with a legitimate noncommercial or fair use. See Broadcom Corp. v. Intellifone Corp., FA96356 (Nat. Arb. Forum Fed. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Respondent claims that it was in the process of developing web sites to be used in connection with disputed domain names. See SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also 3Z Productions v. Globaldomain, FA94659 (Nat. Arb. Forum May 2, 2000) (finding a legitimate interest in a domain name is shown by web site development). However, the Respondent has not made a showing of preparation to use the domain names.

Further, the Respondent asserts that its domain names are comprised of generic terms, to which the Complainant cannot maintain exclusive rights. See Energy Source Inc. v. Your Energy Source, FA96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where the "Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with the Complainant’s business").

Often trademarks are formed of generic components; however the marks are viewed in their entirety. See Dollar Financial Group, Inc. v. VQM NET FA96101 (Nat. Arb. Forum January 25, 2001). Complainant’s mark is sufficiently distinctive when used in connection with consumer lending services to function as a federal trademark. Id. The Respondent has shown no evidence to the contrary.

The Complainant alleges the Respondent was aware, or should have been aware, of its famous mark prior to registering the domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Reuters Ltd. V. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

Moreover, the Respondent has "passively held" the disputed domain names since registration. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

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

Therefore, the relief requested by the Complainant pursuant to Paragraph 4(i) of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain names "usaloanmart.com" and "usloanmart.com".