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Generic Top Level Domain Name (gTLD) Decisions |
Dollar Financial Group, Inc. v. Andrew
Shorten and Trendmedia
Claim
Number: FA0411000371792
Complainant is Dollar Financial Group, Inc. (“Complainant”),
represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT
06830-3942. Respondent is Andrew Shorten
and Trendmedia (“Respondent”), 31 Eastwood Boulevard, Westcliff, GB
SS0 0BY, United Kingdom.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <loansmart.org>, registered with Namescout.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
29, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 30, 2004.
On
November 29, 2004, Namescout confirmed by e-mail to the National Arbitration
Forum that the domain name <loansmart.org> is registered with Namescout
and that Respondent is the current registrant of the name. Namescout has
verified that Respondent is
bound by the Namescout 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
December 3, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 23, 2004 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@loansmart.org by e-mail.
While
there is serious question as to whether the Respondent timely filed and served
its Response in this proceeding, the benefit
of the doubt was extended to the
Respondent, and the Response was considered for all purposes. Further, it appears that Respondent has not
appeared personally or through an attorney.
Rather, it appears that Respondent has employed an “intellectual
property consultant” to file the Response.
While such an appearance on behalf of another would not be proper
(unless authorized by a power of attorney) by U.S. standards, it
will be
presumed for the purposes of this proceeding that an intellectual property
consultant is so authorized in the United Kingdom
and the Respondent will be
bound by the consultant’s acts and omissions in light of no other Response
filed.
On
January 4, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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, including the Response, and in accordance
with the ICANN
Policy, ICANN Rules, the National Arbitration Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <loansmart.org>
domain name is confusingly similar to Complainant’s LOAN MART mark.
2. Respondent does not have any rights or
legitimate interests in the <loansmart.org> domain name.
3. Respondent registered and used the <loansmart.org>
domain name in bad faith.
B. Respondent submitted a one page response,
without supporting exhibits, which alleges:
1.
Respondent has not offered to sell the domain name at issue for an
amount in excess of acquisition cost (no bad faith).
2.
Respondent intends to make fair use of the domain name in the future.
3.
The domain name at issue is not confusingly similar to a mark in which
the Complainant has rights.
4.
The Complainant does not use its mark in the United Kingdom where
the Respondent resides.
5.
The Complainant is guilty of reverse domain name hijacking.
Complainant,
an originator of small consumer loans, uses the LOAN MART mark in connection
with its services. Since 1997, Complainant
has spent millions of dollars
advertising its consumer financial services and has originated over $500
million in consumer loans,
a substantial portion of which Complainant has
originated at stores that bear the LOAN MART mark. Complainant has used the
LOAN MART
mark continuously since at least September 1, 1997. Complainant holds
a registration for the LOAN MART mark at the United States
Patent and Trademark
Office (Reg. No. 2,192,247, issued September 29, 1998). Complainant also
operates a loan origination website
at the <loanmart.net> domain name.
Complainant has
previously prevailed in domain name proceedings involving the <loansmart.org>
domain name. See Dollar Fin. Group v.
Singer, FA 282770 (Nat. Arb.
Forum July 20, 2004). The domain name became available through an
administrative error of the prior registrar in transferring the domain name to
Complainant.
Respondent
registered the <loansmart.org> domain name on October 9, 2004.
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."
The Panel shall
decide this administrative proceeding on the basis of Complainant's
representations and exhibits and Respondent’s
Response 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.
Complainant has
established that it has rights in the LOAN MART mark through registration with
the United States Patent and Trademark
Office and through continuous use of the
mark in commerce. See Men’s Wearhouse, Inc. v. 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201
(WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of validity,
which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden
of refuting this assumption).
Respondent notes
that Complainant’s mark is LOAN MART and that the added “s” in the domain name
at issue makes it not confusingly
similar.
Further, Respondent argues that since it has not heard of LOAN MART in
the U.K., the public would not find <loansmart.org> confusingly
similar to Complainant’s mark. The
Respondent has not provided any documentary evidence or case authority in
support of these or other assertions.
The Panel finds
that the <loansmart.org> domain name is confusingly similar to
Complainant’s LOAN MART mark because the domain name fully incorporates the
mark while
merely adding the letter “s” to a word in the mark, removing a space
from the mark, and adding the “.com” generic top-level domain.
None of these
changes sufficiently distinguishes the disputed domain name from Complainant’s
registered trademark. See Dollar
Fin. Group v. Singer, FA 282770 (Nat. Arb. Forum July 20, 2004) (finding
that the <loansmart.org> domain name was confusingly similar to
Complainant’s
LOAN MART mark); see also Nat’l Geographic Soc. v. Stoneybrook
Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain
name <nationalgeographics.com> was confusingly similar to
Complainant’s
NATIONAL GEOGRAPHIC mark); see also Koninklijke
Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that
the domain name <philips.org> is identical to Complainant’s PHILIPS
mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible
in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided
under Policy ¶¶ 4(c)(i)-(iii).
Such a showing shifts Complainant’s burden to Respondent, who must come forward
with evidence rebutting
Complainant’s allegations in order to prevail on this
element. In this case, Complainant has made a prima facie showing that
Respondent
does not have any rights or legitimate interests in the <loansmart.org>
domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (“[p]roving that the Respondent has
no rights or legitimate interests in respect of the [d]omain
[n]ame requires
the Complainant to prove a negative. For the purposes of this sub-paragraph,
however, it is sufficient for the Complainant
to show a prima facie case and
the burden of proof is then shifted on to the shoulders of Respondent. In those
circumstances, the
common approach is for [R]espondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question”);
see also G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that
where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion
because this
information is “uniquely within the knowledge and control of the respondent”).
Since
Complainant has made a prima facie showing that Respondent does not have any
rights or legitimate interests in the disputed
domain name, the burden is
shifted to Respondent to demonstrate that it has rights or legitimate interests
in the domain name.
Although
Respondent has not yet made any actual use of the domain name at issue, it
contends, without providing specifics or evidence
in the form of any exhibit or
affidavit, that it intends to make “fair use” of the domain name at issue in
the U.K. using a financial
information site called “Loan Smart.”
The Panel finds
that Respondent has failed to present any circumstances or evidence under which
it could substantiate rights or legitimate
interests in the disputed domain
name. Since Respondent has not used the disputed domain name, it cannot be said
to be making a bona
fide offering of goods or services, nor can it be said to
be making a legitimate noncommercial or fair use of the domain name. In
these
circumstances, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to Respondent. See
Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov.
11, 2000) (“merely registering the domain name is not sufficient to establish
rights or legitimate interests
for purposes of paragraph 4(a)(ii) of the
Policy”); see also 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).
Furthermore, no
evidence in the record suggests that Respondent is commonly known by the <loansmart.org>
domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy
¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the mark precede Respondent’s registration; (3)
Respondent is not commonly known by the domain
name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is not using the <loansmart.org> domain name for any purpose. Such
passive holding equates to 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(a)(iii) 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 DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <loansmart.org> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
January 25, 2005
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