DECISION

Dollar Financial Group, Inc. v. Web Check Services

Claim Number:  FA0303000152461

PARTIES

Complainant is Dollar Financial Group, Inc., Berwyn, PA (“Complainant”) represented by Hilary B. Miller. Respondent is Web Check Services, Glendale, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cash-until-payday.com>, registered with Bulkregister.Com, 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.

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 30, 2003; the Forum received a hard copy of the Complaint on April 1, 2003.

On March 31, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain name <cash-until-payday.com> is registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the name. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, 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 April 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 22, 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@cash-until-payday.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 May 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <cash-until-payday.com> domain name is confusingly similar to Complainant’s CASH ‘TIL PAYDAY mark.

2. Respondent does not have any rights or legitimate interests in the <cash-until-payday.com> domain name.

3. Respondent registered and used the <cash-until-payday.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant operates in the financial services industry providing short-term loan services.  Since 1995, Complainant has used the CASH ‘TIL PAYDAY mark to denote its short-term loan services.  Complainant claims to be the “largest national originator of small consumer ‘payday loans.’”  Complainant displays its CASH ‘TIL PAYDAY mark in over 400 retail locations throughout the United States and Canada in graphic form.  Complainant’s loan services associated with its mark developed over $400,000,000 in consumer loans. 

Complainant holds registered trademarks with the United States Patent and Trademark Office (“USPTO”) for the CASH ‘TIL PAYDAY mark (Reg. Nos. 1,987,764 and 2,606,704).  Complainant also has registered the <cashtilpayday.com> domain name to protect its interest in the CASH ‘TIL PAYDAY mark and provide information about its services on the Internet. 

Respondent registered the <cash-until-payday.com> domain name on October 11, 2002.  Respondent does not use the <cash-until-payday.com> domain name to actively resolve to a website. 

DISCUSSION

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has established its rights in the mark through proof of trademark registration with the USPTO.

Respondent’s <cash-until-payday.com> domain name incorporates virtually all of Complainant’s CASH ‘TIL PAYDAY mark.  The addition of hyphens in between the words of the second level domain is insignificant in a Policy ¶ 4(a)(i) analysis.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the Complainant’s mark is identical to and confusingly similar to Complainant’s mark).  Respondent has nearly incorporated Complainant’s entire CASH ‘TIL PAYDAY mark in the second level domain by adding hyphens between the words of the mark.  The second level domain, however, differs from the mark in that the word “until” replaces the word “‘til.”  The ‘TIL portion of the CASH ‘TIL PAYDAY mark represents a common abbreviation for the word “until.”  Respondent’s second level domain, therefore, represents a common variation of Complainant’s CASH ‘TIL PAYDAY mark.  Hence, the Panel finds Respondent’s <cash-until-payday.com> domain name to be confusingly similar to Complainant’s CASH ‘TIL PAYDAY mark.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks). 

The Panel finds Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Complainant argues that Respondent’s non-use of the <cash-until-payday.com> domain name and the fact that Respondent has never sold any goods or services under the CASH-UNTIL-PAYDAY mark evidences a lack of rights or legitimate interests in the domain name.  Respondent has not challenged Complainant’s assertions.  Moreover, for all practical purposes the <cash-until-payday.com> domain name is identical to Complainant’s CASH ‘TIL PAYDAY mark.  In the absence of a Response, the Panel will draw all reasonable inferences in Complainant’s favor.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).  Due to the identical descriptive quality of the disputed domain name and mark in question, the Panel finds that there exists no foreseeable use of the domain name that would not interfere with Complainant’s services offered under the CASH ‘TIL PAYDAY mark.  Therefore, the Panel finds that Respondent’s inactive use of the <cash-until-payday.com> domain name and Respondent’s failure to dispute Complainant’s allegations warrants a finding that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); 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).

There is no evidence on record that supports a finding that Respondent is commonly known by the <cash-until-payday.com> domain name.  The WHOIS information suggests that Respondent’s business identity is Web Check Services, as deduced from Respondent providing that name as the Registrant, Administrative Contact and Technical Contact.  Respondent has not offered any evidence that would suggest it is commonly known by anything other than Web Check Services.  Therefore, Policy ¶ 4(c)(ii) does not apply in Respondent’s favor.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

According, the Panel finds that Respondent has no rights or legitimate interests in the <cash-until-payday.com> domain name; thus, Policy ¶ 4(a)(ii) is satisfied. 

Registration and Use in Bad Faith

The provisions articulated under Policy paragraph 4(b) are illustrative of actions that constitute bad faith registration or use.  However, the list is not exhaustive and other situations can give rise to bad faith determinations by the Panel.  It is proper to review the “totality of circumstances” in deciding if Respondent registered or used the domain name in bad faith.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Respondent does not use the <cash-until-payday.com> domain name and has not actively used it for its seven months of registration.  Given the lack of evidence submitted by Respondent, the Panel may infer that passive holding in these circumstances qualifies as bad faith registration and use pursuant to Policy ¶ 4(b).  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 Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith)

Since the <cash-until-payday.com> domain name is practically identical to Complainant’s CASH ‘TIL PAYDAY mark and both the domain name and mark have the same descriptive meaning, the Panel finds that Respondent could not possibly have registered the domain name for any non-infringing use.  Moreover, Complainant’s mark has garnered a substantial amount of goodwill and notoriety since its first commercial use in 1995.  Respondent’s registration of the <cash-until-payday.com> domain name that deviates from Complainant’s CASH ‘TIL PAYDAY mark with the mere addition of hyphens between the words and the inconsequential substitution of the full word “until” for the abbreviated version “’til” suggests an opportunistic attempt to trade on the goodwill associated with the mark.  Given the totality of circumstances, the Panel need not wait until Respondent uses the domain name to find bad faith use and registration under Policy ¶ 4(a)(iii).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the Complainant).

The Panel finds that Policy ¶ 4(a)(iii) is satisfied. 

DECISION

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

Accordingly, it is Ordered that the <cash-until-payday.com> domain name be TRANSFERRED from Respondent to Complainant.

 Honorable Paul A. Dorf (Ret.), Panelist

Dated: May 19, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/505.html