DECISION

Dollar Financial Group, Inc. v. Misra Group Inc.

Claim Number:  FA0304000154145

PARTIES

Complainant is Dollar Financial Group, Inc., Berwyn, PA (“Complainant”) represented by HiIlary B. Miller. Respondent is Misra Group Inc., Marietta, GA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cashtilpayday.net>, 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 11, 2003; the Forum received a hard copy of the Complaint on April 14, 2003.

On April 11, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <cashtilpayday.net> 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 April 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 6, 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@cashtilpayday.net 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 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 <cashtilpayday.net> domain name is identical to Complainant’s CASH ‘TIL PAYDAY mark.

2. Respondent does not have any rights or legitimate interests in the <cashtilpayday.net> domain name.

3. Respondent registered and used the <cashtilpayday.net> 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 graphic form in over 400 retail locations throughout the United States and Canada.  Complainant’s loan services associated with its mark has originated over $400,000,000 in consumer loans to date. 

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 <cashtilpayday.net> domain name on November 24, 2002.  Respondent does not use the <cashtilpayday.net> 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 <cashtilpayday.net> domain name incorporates Complainant’s entire CASH ‘TIL PAYDAY mark absent the apostrophe before TIL.  Apostrophes are not reproducible in second level domains.  Therefore, the omission of the apostrophe in the second level domain is inconsequential in a Policy ¶ 4(a)(i) “identical” analysis.  See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").  The Panel therefore finds that Respondent’s <cashtilpayday.net> domain name is identical to Complainant’s CASH ‘TIL PAYDAY mark. 

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

Rights or Legitimate Interests

Complainant argues that Respondent’s non-use of the <cashtilpayday.net> 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, the <cashtilpayday.net> 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).  Since the domain name is identical to the mark in question and thus holds the same descriptive quality as the mark, 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 <cashtilpayday.net> 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 <cashtilpayday.net> domain name.  The WHOIS information suggests that Respondent’s business identity is Misra Group Inc., as deduced from Respondent’s submission of that name as the Registrant.  In addition, Respondent’s Administrative Contact and Technical Contact are indicated as Kumar Misra, presumably an individual that has an interest in Misra Group Inc.  Respondent has not offered any evidence that would suggest it is commonly known by anything other than Misra Group Inc. or alternatively Kumar Misra.  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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <cashtilpayday.net> 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 circumstances that warrant a finding of bad faith registration or use.  However, the list is not exhaustive and it is proper to review the “totality of circumstances” when undertaking the Policy ¶ 4(a)(iii) analysis.  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 <cashtilpayday.net> 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(a)(iii).  See 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); see also 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).

Since the <cashtilpayday.net> domain name is identical to Complainant’s CASH ‘TIL PAYDAY mark and thus holds the same descriptive meaning, the Panel finds that it is highly unlikely that Respondent 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 <cashtilpayday.net> domain name that reflects Complainant’s CASH ‘TIL PAYDAY mark in its entirety suggests an opportunistic attempt to trade on the goodwill associated with the well-known mark.  Respondent has not come forward to present the Panel with any circumstances that rebut the inference that the descriptive domain name could or would be used for a non-infringing purpose.  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 <cashtilpayday.net> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 20, 2003

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