national arbitration forum

 

DECISION

 

Dollar Financial Group, Inc. v. Matters of the Love c/o Money Mart Co., Ltd.

Claim Number: FA0703000945060

 

PARTIES

Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Hilary B. Miller, 112 Parsonage Road, Greenwich, CT 06830-3942, USA.  Respondent is Matters of the Love c/o Money Mart Co., Ltd. (“Respondent”), 158 N. Santa Clara, New Braunfels City, New Braunfels City 78130, US.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <money-mart.net>, registered with Onlinenic, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2007.

 

On March 27, 2007, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <money-mart.net> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name.  Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 March 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 19, 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@money-mart.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <money-mart.net> domain name is confusingly similar to Complainant’s MONEY MART mark.

 

2.      Respondent does not have any rights or legitimate interests in the <money-mart.net> domain name.

 

3.      Respondent registered and used the <money-mart.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Dollar Financial Group, Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MONEY MART mark (i.e. Reg. No. 2,244,158 issued May 11, 1999).  Complainant also holds a registered trademark for the MONEY MART mark with the Canadian Intellectual Property Office (“CIPO”) (i.e. Reg. No. TMA297,783 issued December 7, 1984).  Complainant has used the MONEY MART mark in connection with the international sale of consumer financial services, including check cashing and electronic funds transfer services.  Complainant has registered the <moneymart.com> and <moneymart.ca> domain names in order to offer consumer financial services online.

 

Respondent registered the <money-mart.net> domain name on June 25, 2006.  Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, displaying advertisements and selling advertisement space on the website, all under Complainant’s MONEY MART 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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the MONEY MART mark through registration with the USPTO and the CIPO.  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Respondent’s <money-mart.net> domain name is confusingly similar to Complainant’s MONEY MART mark because it uses Complainant’s mark in its entirety and merely adds a hyphen to separate the two words of the mark.  The Panel finds that this minor addition does not alter the mark sufficiently to negate the confusingly similar aspects of Respondent’s disputed domain name under Policy ¶ 4(a)(i).  See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Gen. Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in domain name between “General” and “Electric” is confusingly similar to the complainant’s mark).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <money-mart.net> domain name.  Complainant’s assertion establishes a prima facie case which shifts the burden to Respondent to prove that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).

 

Panels have held that the failure to respond to the Complaint not only fails to establish Respondent’s burden, but may also be considered evidence that Respondent lacks rights or legitimate interests in the domain name.  See, e.g., Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  The Panel assumes that Respondent has no rights or legitimate interests here because Respondent has failed to respond to the Complaint.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  However, the Panel will still consider all available evidence in determining whether Respondent has rights or legitimate interests in the <money-mart.net> domain name under Policy ¶ 4(c).

 

Complainant contends that Respondent is using the <money-mart.net> domain name to redirect Internet users to Respondent’s website displaying advertisements and offering advertisement space for sale.  Respondent’s use of the <money-mart.net> domain name to redirect Internet users to Respondent’s website displaying advertisements is not a use in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See De La Rue Holdings PLC v. Video Images Prods. L.L.C., FA 196054 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent was not using the <delaru.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent was using the domain name to “subject unsuspecting users to a barrage of unsolicited [pop-up] advertisements,” presumably for commercial benefit); see also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

 

Additionally, Respondent offers no evidence and none is present in the record to indicate Respondent is commonly known by the <money-mart.net> domain name.  Respondent’s WHOIS information identifies Respondent as “Matters of the Love c/o Money Mart Co., Ltd.”  While Respondent’s name includes the “Money Mart” mark, there is no evidence presented in the record to indicate Respondent is commonly known by the MONEY MART mark.  Therefore, the Panel finds that Respondent has failed to establish rights or legitimate interests in the <money-mart.net> domain name under Policy ¶ 4(c)(ii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).

 

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

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <money-mart.net> domain name to redirect Internet users to Respondent’s website displaying advertisements and selling space on the website for advertisements.  The Panel finds that such use constitutes disruption and is evidence of bad faith under Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO 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 Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”).

 

Respondent is using the <money-mart.net> domain name to display advertisements and sell advertisement space on Respondent’s website for the assumed profit of Respondent.  The Panel finds that because Respondent’s domain name is confusingly similar to Complainant’s MONEY MART mark, consumers may become confused as to Complainant’s affiliation with the website.  Presumably, Respondent is profiting from this confusion.  As a result, Respondent’s use of the <money-mart.net> domain name to redirect Internet users to a website displaying advertisements and selling advertisement space constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements).

 

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 <money-mart.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  May 8, 2007

 

 

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