Dollar Financial Group, Inc. v. Cash
Advance Till Payday
Claim
Number: FA0305000156801
Complainant is
Dollar Financial Group, Inc., Berwyn, PA, USA (“Complainant”) represented
by Hilary B. Miller. Respondent is Cash Advance Till Payday,
Toronto, ON, CANADA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cash-till-payday.com> registered with Tucows,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 7, 2003; the Forum received a hard copy of the Complaint
on May 8, 2003.
On
May 7, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name
<cash-till-payday.com> 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
May 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 29, 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@cash-till-payday.com 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
June 4, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cash-till-payday.com>
domain name is confusingly similar to Complainant’s CASH ’TIL PAYDAY mark.
2. Respondent does not have any rights or
legitimate interests in the <cash-till-payday.com> domain name.
3. Respondent registered and used the <cash-till-payday.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the CASH ’TIL PAYDAY mark (Reg. No. 1,9897,764 registered
on July 16, 1996) in relation to short-term, small, consumer loans.
Complainant’s mark is displayed at over 400 retail locations nationwide in the
U.S. and in the United Kingdom. Complainant’s mark is also displayed at various
websites operated by Complainant and its subsidiaries.
Respondent
registered the <cash-till-payday.com> domain name on January 14,
2003. Respondent is using the disputed domain name to provide services similar
to those provided by Complainant.
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.
Complainant has
established its rights in the CASH ’TIL PAYDAY mark through registration with
the USPTO and continuous use in commerce since 1995.
Respondent’s <cash-till-payday.com>
domain name is confusingly similar to Complainant’s mark because the disputed
domain name incorporates Complainant’s entire mark and merely adds two hyphens
and an extra letter “l” to the word “til.” Neither the addition of the hyphens
nor the addition of the letter “l” sufficiently differentiate the disputed
domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Columbia Sportswear Co. v. Keeler,
D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens
‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue
is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR
COMPANY”); see also Dollar Fin.
Group, Inc. v. Advanced Legal Sys., Inc., FA 95102 (Nat. Arb. Forum Aug.
14, 2000) (finding that the domain name <loan-mart.com> is confusingly
similar to the Complainant’s mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks); see also America Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and
<oicq.com> are confusingly similar to Complainant’s mark, ICQ).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not responded to the claims alleged in the Complaint. Thus, the Panel presumes
that all of Complainant’s reasonable allegations and inferences are true. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that Complainant’s allegations are true unless clearly
contradicted by the evidence).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate its
rights to and legitimate interests in the <cash-till-payday.com>
domain name. Once Complainant has asserted a prima facie case against
Respondent, the burden of proof shifts to Respondent to show that it has rights
to and legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because the Respondent never submitted a response
or provided the Panel with evidence to suggest otherwise); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
using the <cash-till-payday.com> domain name to market short-term
consumer loans in direct competition with the services provided by Complainant.
The use of a domain name confusingly similar to another’s mark to offer
services in competition with the holder of said mark is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business”); see also
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant's site to a competing website).
Complainant
asserts, and there is no evidence to suggest otherwise, that Respondent has
never been commonly known by either CASH TILL PAYDAY or <cash-till-payday.com>.
Thus, the Panel may infer that Respondent has no rights to or legitimate
interests in the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been established.
Respondent is
using the confusingly similar domain name to compete directly with Complainant.
Respondent’s registration and use of the <cash-till-payday.com>
domain name indicates that Respondent is intentionally attempting to attract
Internet users to Respondent’s website for commercial gain by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation or endorsement of Respondent’s website, which is evidence of bad
faith registration and use with regard to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used
the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain).
Furthermore,
Respondent’s registration of a domain name confusingly similar to Complainant’s
mark, a mark widely known in the parties’ trade, suggests that Respondent
registered the <cash-till-payday.com> domain name primarily for
the purpose of disrupting the business of a competitor, which evidences
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the Complainant's marks suggests that
Respondent, Complainant’s competitor, registered the names primarily for the
purpose of disrupting Complainant's business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <cash-till-payday.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
June 16, 2003
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page