Dollar Financial Group, Inc. and National Money Mart Company v. 1604140 Ontario Inc.
Claim Number: FA1208001456816
Complainant is Dollar Financial Group, Inc. and National Money Mart Company (“Complainant”), represented by Hilary B. Miller, Connecticut, USA. Respondent is 1604140 Ontario Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moneymartpaydayloans.com>, registered with Wild West Domains, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2012; the National Arbitration Forum received payment on August 6, 2012.
On August 7, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <moneymartpaydayloans.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@moneymartpaydayloans.com. Also on August 8, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” There are two Complainants in this matter: Dollar Financial Group, Inc. and National Money Mart Company. Complainant National Money Mart Company is a subsidiary of Complainant Dollar Financial Group, Inc., a New York Corporation. Both Complainants advertise and sell services under the MONEY MART mark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208584 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
This Panel accepts that the evidence submitted in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. Thus, the Complainants will hereinafter be collectively referred to as “Complainant”.
A. Complainant’s Contentions
Complainant uses the MONEY MART mark in its business as a vendor of subprime consumer loans, check cashing, electronic funds transfer services and payday loans. Complainant owns rights in the MONEY MART mark through a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,244,158 registered May 11, 1999) for services including extension of loans. Complainant also owns trademark rights for its MONEY MART mark through a trademark registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA297783 registered December 7, 1984). Complainant has used the MONEY MART mark in commerce since 1982.
Respondent registered the <moneymartpaydayloans.com> domain name on June 10, 2012, and previously used the domain name to host a “spoof” website that was essentially identical to Complainant’s website at <moneymart.ca>. Respondent has since removed the spoof website and currently “parks” the domain name at a placeholder website. The <moneymartpaydayloans.com> domain name is confusingly similar to Complainant’s MONEY MART mark. Respondent had knowledge of Complainant’s rights in the MONEY MART mark at the time it registered the disputed domain name. Respondent is not commonly known by the <moneymartpaydayloans.com> domain name and has no rights or legitimate interests in the domain name. Respondent’s previous and current use of the disputed domain name demonstrate bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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."
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.
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.”).
Complainant claims to own trademark rights in its MONEY MART mark via its trademark registration with the USPTO (Reg. No. 2,244,158 registered May 11, 1999) and with the CIPO (Reg. No. TMA297783 registered December 7, 1984). The panel in Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007), concluded that the complainant’s trademark registrations with the USPTO and CIPO sufficiently established rights in the mark. This Panel similarly finds that Complainant’s trademark registrations with the USPTO and the CIPO demonstrate Complainant’s rights in the MONEY MART mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <moneymartpaydayloans.com> domain name is confusingly similar to its MONEY MART mark, due to the fact that Complainant provides payday loans under its mark. The Panel finds that the addition of descriptive term “paydayloans” does not change the confusing similarity of the <moneymartpaydayloans.com> domain name to Complainant’s MONEY MART mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known by the <moneymartpaydayloans.com> domain name. The Panel notes that the WHOIS information associated with the disputed domain name identifies the registrant as “1604140 Ontario Inc.” The Panel finds that the WHOIS information and lack of other supporting information leads to the conclusion that Respondent is not commonly known by the <moneymartpaydayloans.com> domain name and therefore does not possess rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant contends, and the Panel accepts, that Respondent’s current use of the <moneymartpaydayloans.com> domain name is to maintain a “parked” webpage and alleges that such use constitutes a passive holding of the domain name. The Panel finds that Respondent’s “parked” webpage is further evidence that Respondent has no rights or legitimate interests in the <moneymartpaydayloans.com> domain name, because passive holding of a domain name is not a bona fide offer of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent had actual knowledge of Complainant’s MONEY MART mark, as evidenced by Respondent’s combination of the term “money mart” with “payday loans”, a service which Complainant provides under the mark. Thus, the domain name <moneymartpaydayloans.com> was registered in bad faith.
The Panel further finds that Respondent’s failure to actively use the <moneymartpaydayloans.com> domain name is evidence that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfied the requirement of ¶ 4(a)(iii) of the Policy).
Thus, Complainant has satisfied 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 <moneymartpaydayloans.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 19, 2012
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