Moneytree, Inc. v. somsak hnonmai
Claim Number: FA1212001474901
Complainant is Moneytree, Inc. (“Complainant”), represented by Kathleen T. Petrich of GRAHAM & DUNN PC, Washington USA. Respondent is somsak hnonmai (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <i-moneytreeinc.com>, registered with FASTDOMAIN, INC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2012; the National Arbitration Forum received payment on December 7, 2012.
On December 11, 2012, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <i-moneytreeinc.com> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@i-moneytreeinc.com. Also on December 17, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
B. Respondent
Respondent did not submit a timely, compliant Response. However, the Panel notes that Respondent submitted an additional correspondence, through one “Somsak / Admin,” which states: “This content has been removed and I have contacted Google to remove this url. Sorry for this violation.”
Complainant, Moneytree, Inc., operates 120 retail financial services stores throughout the Western United States and also has stores in British Columbia, Canada. Complainant has rights in the MONEY TREE mark (Reg. No, 2,166,890 registered on June 23, 1998) and the MONEYTREEINC.COM & Design mark (Reg. No. 3,799,378 registered on June 8, 2010), through its trademark holdings with the United States Patent and Trademark Office ("USPTO").
Respondent, somsak hnonmai, registered the <i-moneytreeinc.com> domain name on August 12, 2012. Respondent is using this domain name in conjunction with a website designed nearly identical to another financial services website. Respondent encourages Internet users to provide personal information in order to apply for financial services.
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."
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.
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.”).
Complainant has rights under Policy ¶ 4(a)(i), via USPTO registrations, in both the MONEY TREE mark (See Reg. No, 2,166,890 registered on June 23, 1998) and the MONEYTREEINC.COM & Design mark (See Reg. No. 3,799,378 registered on June 8, 2010). Previous panels have found that registration of a mark with the USPTO satisfies the Policy’s ¶4(a)(i) requirements, regardless of whether or not the Respondent is located in the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that, “[t]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The addition of one letter and a hyphen is not enough to distinguish the disputed domain name from Complainant’s MONEYTREEINC.COM mark. The <i‑moneytreeinc.com> domain name adds “i-“ to the Complainant’s MONEYTREEINC.COM mark. Previous panels have found that the addition of punctuation, such as a hyphen, is irrelevant under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). See also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Therefore the Panel finds that the <i-moneytreeinc.com> domain name is confusingly similar to Complainant’s MONEYTREEINC.COM under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent is not licensed or permitted to use Complainant’s mark. The WHOIS information lists one “somsak hnonmai” as the registrant of the disputed domain name. Previous panels have decided that if there is no evidence in the record linking a respondent to a disputed domain name, the respondent is not commonly known by the domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known as its <i‑moneytreeinc.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is using this domain name in conjunction with a website designed nearly identical to another financial services website run by “ABC Fast Loan.” Complainant believes that Respondent encourages Internet users to provide their birth date, social security number, and other personal information in order to “apply now” for the financial services that Respondent may or may not actually provide. The disputed domain name resolves to a website under the “ABC FASTLOAN” masthead, and features a submission form asking for the user’s name, e-mail address, state of residence, and ZIP code. This website appears to be identical to another domain name’s resolving website, found at <abcfastloan.com>. Previous panels have held that a respondent’s use of a domain name to deceive Internet users into providing their personal information is incapable of being either a bona fide offering of goods/services or a legitimate noncommercial or fair use. See J Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting Internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s disputed domain name makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.
Complainant contends that Respondent likely registered the <i‑moneytreeinc.com> domain name for the purpose of disrupting Complainant’s business. Respondent is requesting personal information from Complainant’s potential customers and this illustrates Respondent’s intent to interfere with Complainant’s business. Previous panels have held that it is bad faith use and registration on behalf of a respondent when said respondent uses the confusingly similar domain name to offer services that compete with Complainant in an effort to disrupt Complainant’s business. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel concludes that Respondent’s use of the disputed domain constitutes a bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Complainant contends that Respondent is seeking to divert customers from Complainant in order to obtain the personal information of Internet users. Complainant argues that the disputed domain name harms the MONEY TREE marks by confusing Internet users into believing Complainant is the source of, or affiliated with, the content available on the disputed domain name. Complainant further argues that the potentially questionable practices Respondent is engaging in on the disputed domain name will become associated with Complainant in the eyes of confused Internet users. Previous panels have found a bad faith use and registration when a respondent uses a disputed domain name to resolve to a website that seeks to lure internet users into providing respondent with a fraudulent commercial gain. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). The Panel concludes that Respondent’s appropriation of another company’s website content on a domain name confusingly similar to Complainant’s mark illustrates a bad faith attempt to confuse Internet users for Respondent’s commercial gain under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent likely had constructive if not actual knowledge of Complainant’s rights due to the nature of the domain names content. UDRP case precedent usually does not find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name which is sufficient evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <i-moneytreeinc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 28, 2013
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