Dollar Financial Group, Inc. v. David
Singer a/k/a DS a/k/a Security Home Loans
Claim
Number: FA0406000282770
Complainant is Dollar Financial Group, Inc. (“Complainant”),
represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT
06830-3942. Respondent is David Singer a/k/a DS a/k/a Security Home Loans (“Respondent”), 26527 Agoura Road #200,
Calabasas, CA 91302.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <loansmart.org> and <loansmart.info>,
registered with Enom.
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 (the "Forum")
electronically on June 4, 2004; the Forum received a hard copy of the Complaint
on June 7, 2004.
On
June 7, 2004, Enom confirmed by e-mail to the Forum that the domain names <loansmart.org>
and <loansmart.info> are registered with Enom and that
Respondent is the current registrant of the names. Enom has verified that
Respondent is bound by the Enom 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
June 9, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of June
29, 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 and postmaster@loansmart.info 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
July 6, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <loansmart.org>
and <loansmart.info> domain names are confusingly similar to
Complainant’s LOAN MART mark.
2. Respondent does not have any rights or
legitimate interests in the <loansmart.org> and <loansmart.info>
domain names.
3. Respondent registered and used the <loansmart.org>
and <loansmart.info> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Dollar Financial Group, Inc., is a nationally known originator of small
consumer loans. Since 1997, Complainant
has spent millions of dollars advertising its computer financial services and
originated over $500,000,000 in consumer loans.
Complainant
registered the LOAN MARK service mark on September 29, 1998 with the U.S.
Patent and Trademark Office (“USPTO”) (Reg. No. 2,192,247). Complainant also uses a website to trade its
services, employing the LOAN MART mark at <loanmart.net>.
Respondent
registered the <loansmart.org> domain name on July 24, 2002. Respondent registered the <loansmart.info>
domain name on November 18, 2001.
Respondent uses the disputed domain names to arrange third-party credit
for consumer borrowers using the Internet.
Respondent describes its services as “computer lending 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."
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
rights to the LOAN MART mark as evidenced by its registration with the
USPTO. 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’s <loansmart.org>
and <loansmart.info> domain names are confusingly similar to
Complainant’s LOAN MART mark. The only
difference between the domain names and the mark is the addition of the letter
“s” and the omission of the space between words, which does not substantially
distinguish the <loansmart.org> and <loansmart.info>
domain names from the LOAN MART mark. See
Nat’l Geographic Soc. v. Stoneybrook
Inv., 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 Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO
Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s
UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark
and thus made the disputed domain name confusingly similar to it).
Therefore the
Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not filed a Response. In the absence of
a Response, the Panel may construe all reasonable assertions in the Compliant
as true. See 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”); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent is
using the disputed domain names to attract Internet users and offer services
similar to Complainant’s services.
Appropriating another’s mark to offer similar services is not a bona
fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶
4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to Respondent’s competing website
through the use of Complainant’s mark); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001)
(finding no rights or legitimate interests when Respondent is using a domain
name identical to Complainant’s mark and is offering similar services).
While
Respondent’s WHOIS information implies that it is commonly known by the <loansmart.org>
and <loansmart.info> domain names, the Panel finds that its use of
the “loansmart” moniker is solely to appropriate Complainant’s goodwill. Therefore, Respondent does not have any
rights or legitimate interests in the domain names, pursuant to Policy ¶
4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also 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).
Therefore the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is
appropriating Complainant’s mark to lure customers to the <loansmart.org>
and <loansmart.info> domain names. Respondent is offering services that are similar to Complainant’s
services. By luring customers to offer
services similar to Complainant’s services, the Panel finds that Respondent has
registered and used the <loansmart.org> and <loansmart.info>
domain names to disrupt Dollar Financial Group’s business, which is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding
that Respondent registered and used the domain name <eebay.com> in bad
faith where Respondent has used the domain name to promote competing auction
sites); see also Hewlett Packard
Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that
Respondent registered and used the domain name primarily for the purpose of
disrupting the business of Complainant by offering personal e-mail accounts
under the domain name <openmail.com> which is identical to Complainant’s
services under the OPENMAIL mark).
The Panel infers
that the Respondent is creating confusion between its <loansmart.org>
and <loansmart.info> domain names and Complainant’s LOAN MART
marks for commercial gain, which is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
Respondent made no use of the domain name in question and there are no other
indications that Respondent could have registered and used the domain name in
question for any non-infringing purpose); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that Respondent intentionally attempted to attract Internet users to his
website for commercial gain by creating a likelihood of confusion with
Complainant’s mark and offering the same chat services via his website as
Complainant).
Therefore the
Panel finds that Complainant has established Policy ¶ 4(a)(iii).
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> and < loansmart.info>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 20, 2004
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