MLD Mortgage Inc. v. Gabriel
Gomez Rojo
Claim Number: FA0704000958269
PARTIES
Complainant is MLD Mortgage Inc. (“Complainant”), represented by Stephen
J. Quigley, of Ostrolenk, Faber, Gerb & Soffen, LLP,
1180 Avenue of the
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moneystore.com>, registered with Moniker
Online Services, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding:
Jeffrey M. Samuels
Calvin A. Hamilton
Linda M. Byrne
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 10, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 13, 2007.
On April 11, 2007, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <moneystore.com> domain
name is registered with Moniker Online Services,
Inc. and that Respondent is the current registrant of the name. Moniker Online
Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 April 17, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 7, 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@moneystore.com by e-mail.
A timely Response was received and determined to be complete on May 4, 2007.
A timely Additional Submission was submitted by Complainant and
determined to be complete on May 9, 2007.
A timely Additional Submission was submitted by Respondent and
determined to be complete on May 14, 2007.
On May 17, 2006, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Jeffrey M. Samuels,
Calvin A. Hamilton, and Linda M. Byrne as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant MLD Mortgage Inc. (hereinafter MLD) is a financial services
company that provides mortgage lending services, products and information to
consumers in 38 U.S. states. Since 1972,
MLD and its predecessors in interest have used the names and marks MONEY STORE
and THE MONEY STORE in connection with mortgage lending services. These marks are the subject of U.S.
Registration Nos. 2361254 and 1401559, respectively. According to Complainant, “[y]ears of
national television advertising with famous sports celebrities Phil Rizzuto and
Jim Palmer made the MONEY STORE name ubiquitous throughout the
Complainant contends that the disputed domain name moneystore.com is
identical to its registered mark MONEY STORE given that a top-level domain such
as “.com” does not affect the overall domain name for the purpose of determining
whether it is identical or confusingly similar to a mark.
Complainant further argues that Respondent has no rights or legitimate
interest in the disputed domain name.
Complainant notes that Respondent is using the domain name in connection
with a website that provides links to various financial institutions that offer
services that compete with Complainant.
Complainant indicates that Respondent, himself, does not provide any
lending or financial services.
Complainant also maintains that there is no evidence that Respondent
has been commonly known by the domain name <moneystore.com> and that the
misuse of the domain name in promoting the lending services of others precludes
a determination that Respondent is making a legitimate noncommercial or fair
use of the domain name without intent for commercial gain by misleadingly
diverting consumers.
“Respondent’s use and registration of the domain name moneystore.com as
a means to divert consumers seeking Complainant’s services to the web site of
Respondent, and, in turn, to the web sites of others, including competitors of
Complainant, demonstrates Respondent’s bad faith,” Complainant asserts. Complainant submits that the evidence
establishes that Respondent is engaged in an ongoing bad faith effort to
intentionally attract and misleadingly divert consumers to his website with
intent for commercial gain by creating a likelihood of confusion with
Complainant’s MONEY STORE mark as to source, sponsorship, affiliation, or
endorsement of Respondent’s website.
B. Respondent
Respondent, Grabiel Gomez Rojo, is a Spanish citizen. Rojo points out that the disputed domain name
was first registered in March 1998, and was acquired by him in November 2006,
for the sum of $20,000. Thus, Rojo
declares, the disputed domain name has been active for more than nine years
without any objection from Complainant.[1]
Rojo argues that Complainant does not have rights in the phrase MONEY
STORE because such phrase is comprised of generic terms. Respondent further indicates that none of
Complainant’s marks is registered or “even slightly known” in
Respondent maintains that the purpose of the disputed domain name was
to develop an online exchange within Europe to enable users to exchange
currency between e-Gold, E-Buillon, Paypal, and Money Bookers for a fee through
the company Gestores del nombre de Internet, S.L., which is owned by
Respondent. Attached as Exhibit 4 to the
Response is a copy of a contract regarding the design of such website project.
Finally, Respondent contends that he did not register and is not using
the domain name in bad faith. In support
of such assertion, he points out that he did not originally register the domain
name and that it is “absurd” that he should have known before purchasing the
domain name of the existence and eventual popularity of the Complainant’s
marks. Respondent emphasizes that “while
the Complainant may be well-known within the
C. Additional Submissions
In its Additional Submission, MLD asserts that Respondent’s claim that
the MONEY STORE marks are not “even slightly known” in
Complainant also argues that Respondent’s claim of good faith use of
the domain name in Europe “rings hollow” in light of the fact that the only
links on the site are to Complainant’s competitors in the
Complainant further maintains that a minimal amount of due diligence on
Respondent’s part would have revealed Complainant’s
There is also no basis for a claim that the MONEY STORE marks are
generic, Complainant asserts. It points
out that the marks are the subject of incontestable registrations and that THE
MONEY STORE mark was held to be suggestive in Money Store v. Harriscorp Finance, Inc., 689 F.2d 666 (7th
Cir. 1982).
With respect to Respondent’s assertion regarding the failure to take
any prior action against the <moneystore.com> domain name, Complainant
explains that such is not surprising since, for most of the past nine years,
there has not been any substantive content on such site.
In his Additional Submission, Respondent notes that he did not choose
the links within the site. “Instead,
this work is developed thr[ough] the automated system
of google ‘ad sense,’ something usual when the domain name is not in an
effective use.”
FINDINGS
The Panel finds that: (1) the domain name <moneystore.com>
is identical or confusingly similar to Complainant’s MONEY STORE marks; (2)
Respondent has no rights or legitimate interests in the disputed domain name;
and (3) the domain name was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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
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;
(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.
The Panel finds that the domain name in
dispute, <moneystore.com>, is, for all intents and purposes, identical to
Complainant’s MONEY STORE mark. The
omission of spaces separating terms of a mark and the addition of the generic
top-level domain “.com” are insignificant in determining whether a domain name
is identical or confusingly similar to a mark.
See
The Panel also finds that the disputed domain
name is identical or confusingly similar to Complainant’s THE MONEY STORE
mark. See
The Panel concludes that that Complainant has
met its burden of establishing that Respondent lacks rights or legitimate interests
in the domain name. The Panel finds that
Respondent is not using the domain name in connection with a bona fide offering
of goods or services, given the identicalness or confusing similarity of the
domain name with Complainant’s MONEY STORE marks and the use of the domain name
in connection with a site that provides links to financial institutions that
compete with Complainant.[2] In view of the commercial nature of the
challenged domain name and site, the Panel further determines that Respondent
is not making a legitimate noncommercial or fair use of the domain name, within
the meaning of paragraph 4(c)(iii) of the Policy.
The Panel holds that the disputed domain name
was registered[3] and is
being used in bad faith. More
specifically, the Panel finds that Respondent, through his use of the <moneystore.com>
domain name, has intentionally attempted to attract, for commercial gain, Internet
users to his site by creating a likelihood of confusion with Complainant’s MONEY
STORE marks as to the source, sponsorship, affiliation, or endorsement of such
site. Even if, as Respondent contends,
Complainant’s MONEY STORE marks are virtually unknown in
The Panel rejects Respondent’s contention
that the contents of its site are dictated by a Google ad service. Based on Google’s description of such
service, the Panel understands that the service generates ads based on the
contents of a site and does not generate content itself.
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 <moneystore.com> domain name be TRANSFERRED
from Respondent to Complainant.
Jeffrey M. Samuels, Chair
Calvin A. Hamilton, Panelist
Linda M. Byrne, Panelist.
Dated: May 29, 2007
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[1] To the extent Respondent may be arguing that the instant Complaint should be dismissed on grounds of laches, the Panel rejects such defense. The applicable Policy makes no mention of laches as a defense. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy); Disney Enters. Inc. v. Meyers, FA 696818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy).
[2] Inasmuch as the domain name is currently in use, the Panel need not address Respondent’s argument regarding his demonstrable preparations to use the domain name. However, the Panel notes that the contract submitted by Respondent in support of his argument makes no reference to <moneystore.com> and that Respondent’s evidence on this issue falls woefully short. Respondent, for example, did not submit a business plan, mock-up website pages, correspondence, marketing materials, etc. to evidence its plans to establish an e-currency business in association with the <moneystore.com> name.
[3] The Panel notes that Respondent did not register the disputed domain name but acquired it from the registrant. Numerous ICANN panels, however, have held that the transfer of a domain name to a third party amounts to a new registration. Registration in bad faith must occur at the time the current registrant took possession of the domain name.
[4] Panelist
Hamilton, who resides in