national arbitration forum

 

DECISION

 

Payday America, Inc. v. Xedoc Holding SA c/o Domain Admin

Claim Number: FA0612000874794

 

PARTIES

Complainant is Payday America, Inc. (“Complainant”), represented by Eric D. Paulsrud, of Leonard Street and Deinard, Professional Association, 150 South Fifth Street, Suite 2300, Minneapolis, MN 55402.  Respondent is Xedoc Holding SA c/o Domain Admin (“Respondent”), represented by Paul Raynor Keating, of Renova, Ltd., Balmes 173 2/2, Barcelona 08006, Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <paydayamerica.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.

 

On January 3, 2007, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <paydayamerica.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 January 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 29, 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@paydayamerica.com by e-mail.

 

Having received no timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. The Respondent belatedly filed a Request for Acceptance of Late Filing to be ruled upon by the Panel.

 

On February 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <paydayamerica.com> domain name is identical or confusingly similar to Complainant’s PAYDAY AMERICA and PAYDAY$AMERICA marks.

 

2.      Respondent does not have any rights or legitimate interests in the <paydayamerica.com> domain name.

 

3.      Respondent registered and used the <paydayamerica.com> domain name in bad faith.

 

B.     Respondent failed to submit a timely Response in this proceeding.  However, the     Panel elected to consider the arguments made in the “Response”.

 

C.  Additional Submissions:

            Complainant filed an Additional Submission, notwithstanding Respondent’s        untimely Response, which Additional Submission was considered for all     purposes.

 

FINDINGS

                        Payday America, Inc. operates a financial services company that provides small             loans or temporary loans to individual consumers. Payday America offers a quick and         easy way for individuals to get an advance loan against their next payday. Payday          America offers its services through ten retail locations and has been in business since             November 1, 2000 and has used the PAYDAY$AMERICA mark in connection with   its services. Over the years, Payday America has devoted substantial resources        and efforts building goodwill in the PAYDAY$AMERICA mark and this mark is             used to distinguish Payday America’s services from all other services in the same class.

 

                        Payday America, Inc. is the owner of the          PAYDAY$AMERICA trademark,          as further described in United States registration: PAYDAY$AMERICA Reg. No.          2,586,330 for use in connection with financial services, namely, temporary loans.

Prior to 2006, the domain name <paydayamerica.com> was owned by another party. On October 24, 2006 Dave Willmott of Payday America received an email from Tom Pratt (tomnpratt@gmail.com) offering to sell the domain name <paydayamerica.com> for US$4,500.00. Pratt requested a response on or before 12:00 pm, Thursday, October 26, 2006 EDT. When Willmott responded to the offer to sell the domain name after the deadline, he was advised that it was no longer available.

Respondent Xedoc Holding now owns and operates the website at <paydayamerica.com>. Complainant has not licensed or otherwise authorized the Respondent to use the PAYDAY AMERICA mark and there is no evidence that Respondent is known by such name. Respondent’s website does not offer any services itself, but offers links to payday loans, cash advances and short term loans, all services competitive with Complainant’s business.

Respondent argues in its delinquent Response that Complainant has no real rights in the domain name at issue in that the U.S.P.T.O. registration was merely “figurative” and registered as an “image” and that no common law trademark has been proven.  It appears from Respondent’s own words that the domain name at issue was purchased for its potential as a click through site, and no claim is made that Respondent is known by the mark or has been licensed to use the mark

 

DISCUSSION

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."

 

Although the Panel has taken note of the arguments of Respondent in its delinquent Response, the Panel shall decide this administrative proceeding giving great weight to Complainant's 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.

 

Initial considerations regarding delinquent response

 

Although the Panel has given consideration to the arguments of Respondent, it should be noted that the Panel has no obligation to do so. Respondent’s response was not received by the response deadline.  The Panel has discretion whether or not to consider Respondent’s submission because it is not in compliance with ICANN Rule 5(a).  See Shedrick v. Princeton, FA 236575 (Nat. Arb. Forum Apr. 2, 2004) (“Although Respondent provided no explanation with regards to its failure to timely send an electronic copy of its Response, Panel notes that Complainant suffered no damage from this procedural deficiency . . . . [G]iven the insignificant impact it has on the proceedings . . . the Panel allows Respondent to make its case before this Panel.”); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).  But see Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . ."); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (“Because of the expedited nature of these proceedings, absent unusual circumstances, it appears appropriate to exclude late submissions that have not been requested by the Panel.”).

 

Further, the Respondent has asked for a three-member panel to resolve this case.  In light of Respondent’s late submission and Respondent’s failure to submit the requisite fee for a three-member panel, the National Arbitration Forum rejects Respondent’s request for a three-member panel.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the PAYDAY$AMERICA and PAYDAY AMERICA marks.  Complainant submits evidence of rights in the PAYDAY$AMERICA mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,586,330 issued June 25, 2002).  The registration lists November 1, 2000 as the first date of use in commerce.  Although Respondent’s registration of the disputed domain name predates Complainant’s first use in commerce, the registration of a mark with a governmental authority is unnecessary to establish rights in the mark pursuant to Policy ¶ 4(a)(i).  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).

 

Moreover, Complainant has common law rights in the PAYDAY AMERICA mark.  Complainant began using the mark since November 1, 2000, when it began offering temporary loans to customers through its ten retail locations.  Complainant contends that it has used the PAYDAY AMERICA mark in commerce continuously since November 2, 2000 and has established secondary meaning through its continuous and extensive use.  Complainant has established common law rights in the PAYDAY AMERICA mark through continuous use since November 1, 2000.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).

 

Respondent’s disputed domain name contains the dominant features of Complainant’s PAYDAY$AMERICA mark but omits the use of the “$” symbol.  The addition of a symbol to an otherwise identical mark fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i).  See Adamovske Strojirny v. Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding confusing similarity between the <adast.com> domain name and the complainant’s three different marks, consisting of a combination of a symbol with the words “ADAST”, “ADAST dominant” and “ADAST maxima”); see also Ziegenfelder Co. v. VMH Enters., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding confusing similarity between the respondent’s domain name, <budgetsaver.com> and the complainant’s mark, BUDGET$AVER).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

 

 

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Respondent’s disputed domain name resolves to a website offering links to various short-term loan companies that compete with Complainant’s business, presumably with the intent of receiving commercial gain.  Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Respondent is not commonly known by the <paydayamerica.com> domain name or authorized to register a domain name containing Complainant’s PAYDAY$AMERICA mark.  A review of Respondent’s WHOIS information reveals that the registrant of the <paydayamerica.com> domain name is “Xedoc Holding SA.”  Respondent is not commonly known by the disputed domain name and, therefore, has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to a website featuring links to competing websites.  Respondent’s use constitutes a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Respondent’s registration and use of the disputed domain is in bad faith pursuant to Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also 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 finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <paydayamerica.com> domain name be TRANSFERED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  February 19, 2007

 

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