Dollar Financial Group, Inc. v. Di Wu
Claim Number: FA2302002033021
Complainant is Dollar Financial Group, Inc. (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Di Wu (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xmoneymart.com>, registered with Porkbun 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on February 23, 2023; Forum received payment on February 23, 2023.
On February 23, 2023, Porkbun LLC confirmed by e-mail to Forum that the <xmoneymart.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 February 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2023 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@xmoneymart.com. Also on February 27, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 26, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
A. Complainant
Complainant made the following contentions.
Complainant, Dollar Financial Group, Inc., provides financial services. Complainant has rights in the MONEY MART mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,244,158, which was registered on May 11, 1999). See Compl. Exhibits 1-7. Respondent’s <xmoneymart.com> domain name is identical or confusingly similar to the MONEY MART mark as it includes the entire mark while merely adding a single letter and a generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <xmoneymart.com> domain name since Respondent is not licensed or authorized to use Complainant’s MONEY MART mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent seeks to divert Complainant’s customers to an inactive site.
Respondent registered and uses the <xmoneymart.com> domain name in bad faith. Respondent does not provide evidence of intended good faith use; the disputed domain name resolves to an inactive site. Further, Respondent failed to respond to Complainant’s cease-and-desist letter. Finally, Respondent registered the disputed domain name through a privacy service and with actual knowledge of Complainant’s rights in the MONEY MART mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent sent the following email communication dated March 20, 2023 to Complainant.
“Thank you for bringing your concerns to our attention. We take all complaints seriously and appreciate the opportunity to address them.
Regarding the domain name XMONEYMART.COM, we believe that our registration and use of the domain name was made in good faith, for the following reason:
We had no intention of causing harm to the complainant's business or reputation by registering the domain name XMONEYMART.COM. Our registration of the domain name was solely for the purpose of promoting our legitimate business interests in the blockchain decentralize exchange (cryptocurrency exchange pare), and we did not intend to compete with or harm the complainant in any way.
In light of these factors, we respectfully submit that our registration and use of the domain name XMONEYMART.COM was not intended to cause harm to your business or reputation, but rather to promote our legitimate business interests. We are open to discussing the potential sale of the domain name XMONEYMART.COM and are committed to reaching a fair and mutually agreeable resolution.
Please let us know if you have any further questions or concerns. Sincerely,”
That communication is not a formal Response. But the Panel has taken it into account in reaching its decision.
1. Complainant is a United States company engaged in the provision of goods and services in connection with payday loan services, check cashing services, and related financial services in which it has been engaged since 1984.
2. Complainant has established its rights in the MONEY MART mark through its registration of the mark with the United States Patent and Trademarks Office ( “USPTO”) (e.g., Reg. No. 2,244,158, which was registered on May 11, 1999).
3. Respondent registered the <xmoneymart.com> domain name on January 4, 2023.
4. Respondent has caused the disputed domain name to be used to divert Complainant’s customers to an inactive website.
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 formal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MONEY MART mark through registration of the mark with the USPTO (e.g., Reg. No. 2,244,158, which was registered on May 11, 1999). See Compl. Exhibits 1-7. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the MONEY MART mark with the USPTO, the Panel finds that Complainant has demonstrated rights in the MONEY MART mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MONEY MART mark. Complainant argues that the <xmoneymart.com> domain name is identical or confusingly similar to its MONEY MART mark since it uses the entire mark, merely adding the letter “x” to the beginning of the mark and the “.com” gTLD. When a disputed domain name is wholly incorporated into another’s mark, Panels have held that adding a single letter is insufficient to defeat a finding of confusing similarity and probably confirms that conclusion. See ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Given that Respondent only adds a letter and a gTLD to the MONEY MART mark, the Panel finds that the <xmoneymart.com> domain name is confusingly similar to Complainant’s MONEY MART mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MONEY MART mark and to use it in its domain name, adding a single letter to the mark;
(b) Respondent registered the <xmoneymart.com> domain name on January 4, 2023;
(c) The disputed domain name does not resolve to an active web site;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <xmoneymart.com> domain name because Respondent is not commonly known by the disputed domain name, possesses no rights in the disputed domain name, and Complainant has never licensed rights to or authorized Respondent to use the MONEY MART mark. In the absence of a formal response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support for a finding that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”. The WHOIS information for <xmoneymart.com> lists the registrant as “Di Wu”. See Registrar Email Verification. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the MONEY MART mark, or that Respondent has independent rights in the domain name. See Compl. Appendix A, Decl. ¶ 6. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent seeks to mislead internet users and divert Internet traffic away from Complainant. Previous Panels have found that use of a domain name to divert customers away from a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant notes that its legitimate website domain name is <moneymart.com>, which, based on the similarity, increases the likelihood that Respondent intended to divert Internet traffic. See Compl. Exhibit 8. As the Panel agrees that Respondent intends to divert Complainant’s customers away from Complainant, it finds that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the <xmoneymart.com> domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant submits that the <xmoneymart.com> domain name resolves to an inactive site. Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent fails to use a domain name actively and it instead resolves to an inactive site. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’). There is no direct evidence in the present proceeding of a resolving website for the <xmoneymart.com> domain name. However, that submission is contained in the Complaint and Complainant’s authorized representative has certified that the information submitted is correct. Accordingly, the Panel finds that the <xmoneymart.com> domain name resolves to an inactive site and that Respondent has therefore not shown a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name.
Respondent’s email of March 20, 2023
The conclusion that Respondent has no right or legitimate interest in the disputed domain name and, indeed, the conclusion that it has no defense to any aspect of this proceeding, is enhanced by Respondent’s email of March 20, 2023. Respondent maintains that its registration and use of the domain name was motivated by good faith. That seems highly unlikely, as it has in effect taken another party’s well-known mark and added an “x” to it, which is a clear attempt to copy it. Respondent has then not used it for a legitimate purpose.
Respondent then says that its intention was to promote its legitimate business interests in the blockchain process. But there is no sign of its ever having taken even a tentative first step towards that end after acquiring the domain name and the Panel does not accept that this was ever the intention of Respondent.
Its assertion that it did not want to compete with Complainant is contrary to the obvious fact that if it copied Complainant’s trademark, which the Panel finds that it did, and if the domain name had any operative effect, it would have reduced Complainant’s share of the market.
But the most conclusive fact is to be found in Respondent’s concession that it is prepared to sell the domain name to Complainant. No doubt it is. Indeed, the Panel’s view is that this objective has always been the aspiration of Respondent and the sole reason why it acquired the domain name. In other words, it took Complainant’s mark and registered the domain name in the hope that this would confuse people, added the “x” to cover its tracks and to suggest it was not copying the trademark, and now tries to extort money from Complainant by a process that can only be described as blackmail.
The Panel therefore does not accept any part of Respondent’s email.
The Panel therefore finds that Complainant has made out its prima facie case against Respondent and, judging by Respondent’s email, that case now has to be taken as conclusive. Respondent therefore has no right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant does not make any specific Policy ¶ 4(b) arguments regarding Respondent’s bad faith registration and use of the <xmoneymart.com> domain name. However, the Panel may look at the totality of the circumstances, beyond the particular examples laid out in ¶ 4(b), when determining bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Therefore, the Panel may consider Complainant’s arguments below pursuant to Policy ¶ 4(a)(iii).
First, Complainant argues that Respondent’s failure to use the <xmoneymart.com> domain name actively is itself evidence of bad faith, particularly given that Respondent fails to provide evidence of intended good faith use. Panels have generally agreed that a Respondent’s failure to use a disputed domain name actively may show bad faith. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Further, where a respondent does not submit a response and show an intended good faith use, this may support a finding that an inactive site is evidence of bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). As noted, Complainant does not provide evidence of a resolving site for the <xmoneymart.com> domain name. The Panel therefore finds in all the circumstances that Respondent registered and used the disputed domain name in bad faith.
Secondly, Complainant submits that Respondent’s registration of the <xmoneymart.com> domain name with a privacy service shows bad faith. A respondent’s use of a privacy service in an attempt to conceal its identity may support a finding of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Complainant does not provide the publicly available WHOIS information to demonstrate that the disputed domain name’s registration information was concealed by a privacy shield. The Panel may choose to disregard this argument or find additional support for bad faith.
Thirdly, Complainant submits that Respondent has failed to respond to Complainant’s cease-and-desist letter. Panels have found that where a respondent does not respond to or acknowledge a complainant’s cease-and-desist letter, there is a basis for finding bad faith. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides a copy of the letter sent to the privacy service with which Respondent registered the <xmoneymart.com> domain name on January 20, 2023. See Compl. Exhibit 9. As the Panel agrees, it may finds that in all the circumstances that Respondent and used the disputed domain name in bad faith.
Fourthly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the MONEY MART mark when registering the <xmoneymart.com>domain name. Actual knowledge is sufficient to establish a respondent’s bad faith registration. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support this submission, Complainant points to the widespread and extensive use of the MONEY MART mark and its reputation in the provision of financial services. As the Panel determines that Respondent had actual knowledge of Complainant and its trademark, it finds bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xmoneymart.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 31, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page