Ace Cash Express, Inc. v. Shlomo Icik
Claim Number: FA1308001516485
Complainant is Ace Cash Express, Inc. (“Complainant”), represented by Jason R. Fulmer of Gardere Wynne Sewell LLP, Texas, USA. Respondent is Shlomo Icik (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aceamericascashexpress.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd. d/b/a hebeidomains.com.
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 23, 2013; the National Arbitration Forum received payment on August 26, 2013. The Complaint was submitted in English and Slovak.
On August 28, 2013, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <aceamericascashexpress.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd dba hebeidomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd dba hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd dba hebeidomains.com 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 September 3, 2013, the Forum served the Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of September 23, 2013 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@aceamericascashexpress.com. Also on September 3, 2013, the Slovak language 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 25, 2013, 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.
The Registration Agreement is written in Slovak, thereby making Slovak the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Policy ¶ 4(a)(i)
· Complainant uses the ACE AMERICA’S CASH EXPRESS mark in connection with Complainant’s short-term consumer loans and prepaid debit card services. Complainant has a network of 1,731 stores in 36 of the United States. Complainant has registered the ACE AMERICA’S CASH EXPRESS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,831,546 registered on April 19, 1994).
· Respondent has registered the <aceamericascashexpress.com> domain name. This domain name is identical to the mark, as the only addition is the mandatory generic top-level domain (“gTLD”), in this instance “.com.” Policy ¶ 4(a)(ii)
· Respondent’s WHOIS information lists “Shlomo Icik” as the registrant, a name that bears no semblance to the <aceamericascashexpress.com> domain name. Respondent has no affiliation or licensing arrangement that would enable Respondent to make legal use of Complainant’s marks in domain names.
· Respondent uses the <aceamericascashexpress.com> domain name to host a website that links Internet users to various third-party websites, including competing financial websites, all so that Respondent can amplify its advertising revenue.
Policy ¶ 4(a)(iii)
· Respondent is attempting to divert Internet users to Respondent’s own website in an attempt to disrupt Complainant’s business.
· Respondent sought to capitalize on the likelihood that Internet users would be confused into believing that Complainant was the source or origin of the <aceamericascashexpress.com> domain name, and thus click on the hyperlinks therein in the belief that they would be visiting websites associated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes, however, that Respondent registered the <aceamericascashexpress.com> domain name on August 27, 2005.
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 uses the ACE AMERICA’S CASH EXPRESS mark in connection with its short-term consumer loans, cash advance, and prepaid debit card services. Complainant states that it has a network of 1,731 stores in 36 U.S. states. Complainant has registered the ACE AMERICA’S CASH EXPRESS & DESIGN mark with the USPTO (Reg. No. 1,831,546 registered on April 19, 1994). Complainant’s USPTO registration demonstrates Policy ¶ 4(a)(i) rights in the mark, regardless of where Respondent is truly located. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The Panel notes that all of the spacing in the mark was removed in forming this domain name, and that the mark’s apostrophe was also removed. The Panel determines that these modifications mark are not relevant. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”). The Panel therefore finds that the <aceamericascashexpress.com> domain name is identical to Complainant’s ACE AMERICA’S CASH EXPRESS mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s WHOIS information lists “Shlomo Icik” as the registrant, a name that bears no semblance to the <aceamericascashexpress.com> domain name. Complainant attests that Respondent has no affiliation or licensing arrangement that would enable Respondent to make legal use of Complainant’s marks in domain names. The panel in Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), found that when the WHOIS information indicated that the respondent was not known by a domain name, and the respondent failed to provide any evidence, there was no basis to make a finding for the respondent under Policy ¶ 4(c)(ii). This Panel likewise finds that there is nothing in the record to suggest that Respondent is known as the <aceamericascashexpress.com> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent uses the <aceamericascashexpress.com> domain name to host a website that links Internet users to various third-party websites, including competing financial websites, all so that Respondent can amplify its advertising revenue. The Panel notes that the <aceamericascashexpress.com> domain name resolves to a website promoting an array of financial and monetary services, including lending and cash advances. Respondent’s use of the <aceamericascashexpress.com> domain name fails to give rise to a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use because the domain name’s function is to promote related and competing advertisements.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant submits that Respondent is attempting to divert Internet users to Respondent’s own website in an attempt to disrupt Complainant’s business. The Panel notes that the <aceamericascashexpress.com> domain name’s website includes advertisements that purportedly resolve to websites providing “Fast Cash,” “Check Cashing,” “Cash Advances,” “Wire Transfers” and other services. Previous panels have held that the use of a confusingly similar domain name causes bad faith disruption when the domain name’s website hosts content advertising good or services that compete with those goods or services offered under the complainant’s mark. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel agrees and finds that Respondent’s use of the domain name evidences Policy ¶ 4(b)(iii) bad faith commercial disruption.
Complainant contends that Respondent sought to capitalize on the likelihood that Internet users would be confused into believing that Complainant was the source or origin of the <aceamericascashexpress.com> domain name, and thus click on the hyperlinks therein in belief that the Internet user would be visiting websites associated with Complainant. Complainant alleges that Respondent receives advertising revenues as a result. The Panel notes that many of the businesses advertised through the <aceamericascashexpress.com> domain name’s website offer services that are either related to, or identical to, the kinds of services that Complainant offers under the ACE AMERICA’S CASH EXPRESS mark. The Panel finds that the use of the domain name to promote goods and services that are identical and competitive with the goods and services provided under the ACE AMERICA’S CASH EXPRESS mark illustrates Respondent’s attempt to generate advertisement revenues by creating a likelihood that Internet users may mistake Complainant to be as the source, origin, or endorsee of the hyperlinks promoted on the domain name’s website. See, e.g., Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Similarly, this Panel concludes that there is evidence of Policy ¶ 4(b)(iv) bad faith on behalf of Respondent.
Lastly, Respondent’s incorporation of the entirety of the wording in Complainant’s mark shows that Respondent had actual knowledge of Complainant's mark and rights as the time of registration. Respondent therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also 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 <aceamericascashexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 9, 2013
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