Ace Cash Express, Inc. v. WebContents, Inc. c/o Domain Manager
Claim Number: FA0710001095263
Complainant is Ace Cash Express, Inc. (“Complainant”), represented by Kay
Lyn Schwartz, of Gardere Wynne Sewell, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ace-financial.com>, registered with Dotster.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 2007 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@ace-financial.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ace-financial.com> domain name is confusingly similar to Complainant’s ACE mark.
2. Respondent does not have any rights or legitimate interests in the <ace-financial.com> domain name.
3. Respondent registered and used the <ace-financial.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ace Cash Express, Inc., is a leading retailer
of financial services, including check cashing, short-term consumer loans, bill
payment and prepaid debit card services, and is the largest owner, operator and
franchisor of check cashing stores in the
Respondent registered the <ace-financial.com>
domain name on
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 registered the ACE mark with the USPTO, and
therefore, established rights to the mark pursuant to Policy ¶ 4(a)(i). See McCarthy
on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The
ICANN dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
complaint under the Policy); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
Complainant contends that the <ace-financial.com> domain name is confusingly similar to the ACE mark. Respondent’s addition of the generic term “financial” to the registered mark is insufficient to distinguish the disputed domain name from the registered mark because the generic term describes Complainant’s business. In addition, because all domain names are required to have a top-level domain, Respondent’s use of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from Complainant’s registered mark. Therefore, the Panel finds that the <ace-financial.com> domain name is confusingly similar to Complainant’s ACE mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent has neither rights nor
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant
has the initial burden of showing the Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant has made a prima facie case showing that Respondent
lacks rights and legitimate interests, the burden shifts to Respondent to show
that it does have rights or legitimate interests in the <ace-financial.com> domain name. The Panel finds that Complainant has met the
initial burden of showing that Respondent lacks rights and legitimate
interests, and therefore has made a prima
facie case under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has never been
authorized to use the ACE mark, and that Respondent is not and has never been
commonly known by the disputed domain name.
Further, the WHOIS information does not indicate that Respondent is
commonly known by the disputed domain name.
Thus, the Panel finds that Respondent is not commonly known by the <ace-financial.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent is using the <ace-financial.com> domain name to advertise links to third-party competitors. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Additionally, Respondent advertises the disputed domain name
for sale on the website that resolves from the disputed domain name. The
Panel finds that Respondent’s apparent intention to sell the website is
evidence that Respondent lacks rights and legitimate interests in the <ace-financial.com> domain name under Policy ¶ 4(a)(ii). See
Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is currently offering the disputed domain name
for sale on the website that resolves from the disputed domain name. Previous panels have found that offering the
disputed domain name for sale evidences registration and use in bad faith. Therefore, because Respondent advertises the <ace-financial.com> domain name for
sale, the Panel finds that this behavior is evidence of registration and use in
bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).”); see also Am. Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum
Moreover, the Panel finds that Respondent’s use of the <ace-financial.com> domain name to
commercially gain by advertising links to competing services constitutes bad
faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Complainant contends that Respondent is using the <ace-financial.com>
domain name for commercial gain by advertising links to competing services, and
benefiting from the likely confusion between Complainant’s mark and the
disputed domain name. The Panel finds
that the similarity between the disputed domain name and the ACE mark are
likely to create confusion as to Complainant’s source, sponsorship,
affiliation, or endorsement of the website that resolves from the disputed
domain name under Policy ¶ 4(b)(iv). See AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent’s domain name
resolved to a website that offered links to third-party websites that offered
services similar to the complainant’s services and merely took advantage of
Internet user mistakes); see also
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 <ace-financial.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 3, 2007
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