DECISION

Dollar Financial Group, Inc. v. Global Money Group

Claim Number: FA0303000147529

PARTIES

Complainant is Dollar Financial Group, Inc., Berwyn, PA, USA (“Complainant”) represented by Hilary B. Miller, of 112 Parsonage Road.  Respondent is Global Money Group, Brampton, ON, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cashtillpayday.com>, registered with Tucows, Inc.

PANEL

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

Herman D. Michels as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 6, 2003; the Forum received a hard copy of the Complaint on March 7, 2003.

On March 6, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <cashtillpayday.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 27, 2003 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@cashtillpayday.com by e-mail.

A timely Response was received and determined to be deficient on March 27, 2003.  Notwithstanding that Respondent's submission was not received in hard copy form, thereby violating ICANN Rule 5(a), the Panel has determined to consider Respondent's  submission.  See generally Telstra Corp. v. Chu, D 2000-0423 (WIPO June 21, 2002) (Finding that any weight to be given to the lateness of the response is solely in the discretion of the Panel); see also Strum v. Nordic Net Exchange AB, FA 102843(Nat. Arb. Forum Feb 21, 2002).

On April 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Herman D. Michels as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant, a New York corporation (formerly known as "Monetary Management Corporation"), is the largest national originator of small consumer "payday loans" from banks using the CASH 'TIL PAYDAY^® name and registered service mark.  Complainant's mark is displayed at its over 400 retail locations nationwide in the U.S. and Canada.  Complainant's mark is also displayed at various worldwide websites operated by Complainant and its subsidiaries.  See, e.g. <http://www.cashtilpayday.com>, as well as <http://www.moneymart.com/ctp/les/default.asp>.  Since 1995, Complainant has spent millions of dollars advertising its consumer financial services and has, to date, originated over $400,000,000 in consumer loans nationwide using the CASH 'TIL PAYDAY^® mark and logo.

2. Complainant contends that Respondent's second-level domain name is confusingly similar to Complainant's registered service mark CASH 'TIL PAYDAY^® and the CASH 'TIL PAYDAY^® logos used in interstate commerce to describe its short-term consumer loan services since 1995.  Such mark was granted registration by the U.S. Patent and Trademark Office on July 16, 1996.

3. Respondent only very recently registered its domain name in dispute herein, on or about July 3, 2002, long after the commencement of Complainant's use of the mark CASH 'TIL PAYDAY^®, and the registration of Complainant's mark CASH 'TIL PAYDAY^®, and the establishment of Complainant's use of the CASH 'TIL PAYDAY^®  loans logotype.

4. At the time of registration of Respondent's domain name, Respondent was a direct competitor of Complainant and, therefore, knew or reasonably should have known of Complainant's registered service mark and could easily have ascertained the status of such mark from a conventional trademark search, but failed to do so.  Complainant's mark is widely known in the trade, and Respondent's adoption of a confusingly similar mark evidences Respondent's bad faith in registering its domain name.

5. Complainant also contends that prior to registration of the domain name at issue, Respondent had made no commercial use of the mark CASHTILLPAYDAY and had sold no material 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.

6. Finally, Complainant contends that Respondent is in the business of arranging third-party credit for consumer borrowers using the Internet.  Thus, there is a substantial likelihood that an appreciable number of consumers will be confused into believing that Complainant originates, endorses or sponsors Respondent's services, which is not the case.  Although Respondent's mailing address is in Canada, the material contained at its website is aimed at U.S.-base borrowers and hosted in Florida, and thus creates a substantial likelihood of confusion regarding the source or sponsorship of Respondent's source services.

7. Complainant has duly protested Respondent's infringing use by e-mail on November 28, 2002, which Respondent duly received and retained without objection.

B. Respondent

1. Respondent contends that it is a registered home-based business and not a pay day loan company; that the sole purpose of the name "CASHTILLPAYDAY" is to use it for an affiliated program that offers a service via Internet website for a commission (percentage) of every completed sale; and that it makes use of several independently managed affiliate programs which are available to anyone for free. 

2. Respondent further contends that research will reveal that there are over 100 websites with the name "cashtillpayday." Not only are these registered domain names similar, but when a party registers a domain name the site also has "Suggested Domain Names" to help just in case the party does not have a domain name or the domain name has already been registered.

3. In sum, Respondent contends that it is not competing with Complainant; that it is not a payday loan company; that it has a legitimate interest in the domain name, and that its services are available to everyone without cost.

FINDINGS

1. Complainant is the largest national originator of small consumer "payday loans" from banks using the CASH 'TILL PAYDAY name and registered service mark.  Complainant has been continuously using the mark CASH 'TIL PAYDAY and the CASH 'TIL PAYDAY  loans logo in interstate commerce since 1995.  Moreover, said mark was granted registration by the U.S. Patent and Trademark Office on July 16, 1996.  Complainant has rights and legitimate interests in and with respect to the above mark and logo.  Respondent, on the other hand, does not have right or legitimate interests with respect to the domain name <cashtillpayday.com>.

2. Respondent only recently registered the <cashtillpayday.com> domain name, on or about July 3, 2002, after the commencement of Complainant's use of the mark CASH 'TIL PAYDAY and the registration of Complainant's CASH 'TIL PAYDAY^® mark and Complainant's use of the CASH 'TIL PAYDAY loans logo type.

3. At the time of registration of Respondent's domain name, Respondent was a direct competitor of Complainant and, therefore, knew or should have known of Complainant's registered service mark.  Complainant's mark is widely known in the trade and Respondent's adoption of a confusingly similar mark evidences Respondent's bad faith in registering its domain name.  The USPTO registration of Complainant's mark, indicates Complainant’s first use of the CASH 'TIL PAYDAY mark occurred in August 1995.  See The Men's Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) ("Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning").

4. Respondent's <cashtillpayday.com> domain name is confusingly similar to Complainant's CASH 'TIL PAYDAY mark.  Respondent's domain name is not only phonetically identical to Complainant's mark, but only deviates with the addition of inconsequential changes and additions such as the addition of the extra "l".  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant's mark satisfies ¶ 4(a)(i) of the Policy); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000); Am. Online, Inc. V. Peppler d/b/a RealTimeInternet.com, FA 103437 (Nat. Arb. Forum Feb. 22, 2002); Victoria's Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov 18, 2000).   

5. The Panel further finds that Respondent lacks rights and legitimate interest in the domain name because it made no commercial use of  <cashtillpayday.com> since registration, which occurred on July 3, 2002.  The mere registration of the domain  name is not sufficient to establish rights or legitimate interests for purposes of  ¶ 4(a)(ii) of the Policy.  See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000); Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

6. Additionally, the Panel finds that Internet users will be confused by the domain name because Respondent is engaged in the same industry as Complainant.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000); Vivid Video, Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14, 2002).

7. The Panel further finds that Respondent was a direct competitor of Complainant and therefore, had at least constructive knowledge of Complainant's rights in the CASH 'TIL PAYDAY mark and that Respondent's registration of its domain despite knowledge of Complainant's rights constituted bad faith registration under  ¶ 4(a)(ii) of the Policy.  See Digi Int'l v. DDS Sys. FA 124506 (Nat. Arb. Forum Oct. 24, 2000) (holding that there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant's trademark, actually or constructively; see also Entrepreneur Media, Inc. v. Smith, 279 F. 3d. 1135, 1148 (9^th cir. Feb 11, 2002) (finding that where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000); G.D. Searle &Co. v. Fred Pelham, FA 117911 (Nat Arb. Forum Sept. 19, 2002)  

8. Finally, the Panel finds that Respondent used and registered the domain name in bad faith pursuant to ¶ 4(b)(iii) of the Policy because it registered the domain name primarily for the purpose of disrupting Complainant's competing business.  Respondent, like Complainant, is in the business of arranging third-party credit for consumer borrowers using the Internet.  See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining "competitor" as "one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor"); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion; see also Lubbock Radio paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where Respondent, a company financially linked to Complainant's main competitor, registered and used the domain name in question to disrupt Complainant's business).

DISCUSSION

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.

Identical and/or Confusingly Similar

The Panel finds that Respondent’s <cashtillpayday.com> domain name is confusingly similar to Complainant's CASH 'TIL PAYDAY mark. Respondent's domain name is not only phonetically identical to Complainant's mark, but only deviates with the addition of an inconsequential change by adding an extra "l" in the name. 

Rights or Legitimate Interests

The Panel finds that Complainant has rights in the CASH 'TIL PAYDAY mark registered with the U.S. Patent and Trademark Office and that Respondent does not have any rights or legitimate interests in the domain name <cashtillpayday.com>.

Registration and Use in Bad Faith

Based on the record, the Panel finds that Respondent’s domain name <cashtillpayday.com> was registered and used by Respondent in bad faith. 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <cashtillpayday.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Herman D. Michels, Panelist
Dated: 10 April, 2003

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