ACE Cash Express, Inc. v. kloans
Claim Number: FA1401001541781
Complainant is ACE Cash Express, Inc. (“Complainant”), represented by Jason R. Fulmer of Gardere Wynne Sewell LLP, Texas, USA. Respondent is kloans (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acecashexpress-loans.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On February 1, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <acecashexpress-loans.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a Public-DomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@acecashexpress-loans.com. Also on February 7, 2014, 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 March 7, 2014, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant is a retailer of financial services, including consumer loans, check-cashing, bill payment and prepaid debit card services.
Complainant holds a registration for the ACE CASH EXPRESS mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,051,382, registered January 24, 2006).
Respondent’s <acecashexpress-loans.com> domain name was created on De-cember 9, 2013.
Respondent’s <acecashexpress-loans.com> domain name is confusingly similar to Complainant’s ACE CASH EXPRESS mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not affiliated with complainant and has not been authorized by Complainant to use any of Complainant’s marks.
Respondent is not making a bona fide offering of goods or services or a legiti-mate noncommercial or fair use of the disputed domain name.
The domain name resolves to a website entitled “ACE Cash Express Loans.”
That website holds itself out as being Complainant and invites Internet users to apply for personal loans.
When Internet users click on the “Apply for Loan” mark, the user is redirected to an application screen where s/he is asked to enter personal information.
Respondent presumably profits from this use of the disputed domain name.
Respondent has no rights to or legitimate interests in the <acecashexpress-loans.com> domain name.
Respondent’s diversion of Internet users to third-party websites disrupts Com-plainant’s business.
Respondent was aware of Complainant and Complainant’s marks when it reg-istered the disputed domain name.
Respondent registered and is using the <acecashexpress-loans.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 in the in the ACE CASH EXPRESS service mark for pur-poses of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Ace Cash Express, Inc. v. Jay Shanks c/o Kweb Mktg., FA 1106472 (Nat. Arb. Forum, Dec. 25, 2007)(finding in an earlier proceeding that Complainant had sufficiently established its rights in the ACE CASH EXPRESS mark through its registration with the USPTO).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here India). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has reg-istered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction). To the same effect, see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <acecashexpress-loans.com> domain name is con-fusingly similar to Complainant’s ACE CASH EXPRESS service mark. The do-main name incorporates the ACE CASH EXPRESS mark in its entirety, merely deleting the spaces between the terms of the mark and adding a hyphen and the term “loans,” which describes an aspect of Complainant’s business, plus the gen-eric top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of con-fusing similarity under the standards of the Policy. See, for example, AOL Inc. v. Mor-gan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addi-tion of the generic top-level domain (“gTLD”) “.com” to the mark of another in creating a domain name does not distinguish the domain name from the mark from which it was derived).
On the point of adding a descriptive term to the mark of another in forming a do-main name, see Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding that the <westfieldshopping.com> domain name was confusingly similar to the WESTFIELD mark because the mark was the dominant element of the domain name).
Further 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).
Finally, see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between the terms of the mark of a UDRP complainant in creating a domain name does not establish distinctiveness from the mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name <acecashexpress-loans.com>, and that Respondent is not affiliated with Com-plainant and has not been authorized to use any of Complainant’s marks. More-over, the WHOIS information for the domain name identifies the registrant only as “kloans,” which does not resemble the domain name. On this record, we con-clude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the con-templation of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding, under Policy ¶ 4(c)(ii), that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> do-main name where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark and failed to submit evidence that it was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that the <acecashexpress-loans.com> domain name resolves to a website entit-led “ACE Cash Express Loans” at which Respondent holds itself out as being Complainant and invites Internet users to apply for personal loans, and from the operation of which Respondent presumably profits. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) where that respondent used it to take advantage of a UDRP complainant's mark by diverting Internet users to a competing commercial site); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (the panel there finding that a respondent’s attempt to pass itself of a UDRP complainant was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) where that respondent used a domain name to present Internet users with a website that mimicked that complainant’s website).
Finally under this head of the Policy, that Respondent apparently uses the contested domain name to operate a website the purpose of which is to dupe Internet users into giving up their personal information in hopes of obtaining a loan is a form of Internet fraud known as “phishing.” Phishing is powerful evi-dence that Respondent has no rights to or legitimate interests in the disputed domain name. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (finding that a respondent’s use of the <allianzcorp.biz> domain name fraudulently to acquire the personal and financial information of Internet users seeking a UDRP complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <acecashexpress-loans.com> domain name as alleged in the Complaint disrupts Complainant’s business. This stands as proof of bad faith in the regis-tration and use of the domain name under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (finding, under Policy ¶ 4(b)(iii), that a respondent registered and used the <sportlivescore.com> domain name to disrupt a UDRP complainant’s business conducted under the LIVESCORE mark where that respondent maintained a website which it operated in competition with the business of that complainant).
We are likewise convinced by the evidence that Respondent’s use of the <acecashexpress-loans.com> domain name, which is confusingly similar to Complainant’s ACE CASH EXPRESS service mark, to profit from confusion caused among Internet users as to the possibility of Complainant’s association with the resolving website demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solu-tions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent used a domain name derived from the mark of a UDRP complainant to divert Internet users to its website where it offered com-peting computer products and services).
In addition, we conclude that Respondent’s fraudulent “phishing” scheme is further proof of its bad faith in the registration and use of the domain name. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding, under Policy ¶ 4(a)(iii), bad faith registration and use where a respond-ent used a domain name to redirect Internet users to a website that imitated a UDRP complainant’s website fraudulently to acquire personal information from that complainant’s clients).
Finally, it is evident that Respondent knew of Complainant and its rights in the ACE CASH EXPRESS service mark when it registered the <acecashexpress-loans.com> domain name. This is independent proof of bad faith in the regis-tration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding, under Policy ¶ 4(a)(iii), bad faith where a re-spondent was "well-aware of” a UDRP complainant's mark at the time of its registration of a confusingly similar domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <acecashexpress-loans.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 19, 2014
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