Domain Name - Domain name dispute resolution policy - Confusingly similar - No rights or legitimate interests - bad faith- Respondent not responding to Complaint - Paragraph 2(e) of Uniform Rules

Complainant provides consumers with small "payday loans" using it's registered mark CASH UNTIL PAY DAY and CASH ‘TIL PAYDAY and uses the domain name <cashtilpayday.com> to market its services on the Internet.  Respondent registered the domain name "CASHUNTILPAYDAY.COM" to market short term consumer loans.  

Held, Name Transferred to Complainant

Respondent's domain name is identical to Complainant's pseudo mark, except for the addition of the domain name level designation "com".

The domain name is not a designation by which Respondent is commonly known and was registered to divert Internet consumers and capitalize on Complainant's established mark.  Respondent has no rights or legitimate interests in the domain name.

Respondent registered the domain name with the intent of disrupting the business of Complainant, which offers competing services.  Respondent knew of Complainant's service and mark, registered a similar domain name and began offering competitive services on the website.  Respondent is using Complainant's mark to attract Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Complainant's mark and corresponding services.

The Forum has discharged its responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Because Respondent failed to submit a response in this matter, all reasonable inferences of fact in the Complaint shall be deemed to be true.
 

Cases referred to:

Hewlett-Packard v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000).
Youtv Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum April 25, 2000).
 

Honorable Carolyn Marks Johnson, Panelist -
 

PARTIES

The Complainant is Dollar Financial Group, Inc., Berwyn, PA, USA ("Complainant"). The Respondent is Great American Credit, Alpharetta, GA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is "CASHUNTILPAYDAY.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

Honorable Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/08/2000; The Forum received a hard copy of the Complaint on 06/09/2000. 

On 06/08/2000, NSI confirmed by e-mail to The Forum that the domain name "CASHUNTILPAYDAY.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On 06/12/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/05/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by email. 
On 07/05/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default. 

On 07/07/2000, pursuant to Complainant's request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 Forum's Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES' CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is confusingly similar to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name and is using the domain name in bad faith.

B. Respondent

The Respondent failed to submit a response in this matter and, accordingly, all reasonable inferences of fact in the Complaint will be deemed to be true.

FINDINGS

The Complainant (formerly known as Monetary Management Corporation) provides consumers with small "payday loans", using the mark CASH ‘TIL PAYDAY. This mark is registered with the United States Patent and Trademark Office (registration 07/16/1996; No. 1,987,764). The trademark is registered under the Pseudo Mark CASH UNTIL PAY DAY. The Complainant uses the domain name <cashtilpayday.com> to market its services on the Internet.

The Respondent registered the domain name "CASHUNTILPAYDAY.COM" on 12/17/1999. The Respondent is using the domain name to market short term consumer loans.

On 01/16/2000 and 02/26/2000, the Complainant sent the Respondent "cease and desist" letters. However, the Respondent ignored such requests and has continued to use the domain name.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 

(2) the 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

The Complainant has rights in the marks CASH TIL PAYDAY and CASH UNTIL PAY DAY. The Respondent's domain name is identical to the Complainant's pseudo mark, except for the addition of the domain name level designation "com". When potential clients seek the Complainant's services on the Internet, the Complainant's pseudo mark is one of the first domain names entered. This association is vital in maintaining a business in today's e-commerce society. 

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in question. The Respondent does not assert any rights or legitimate interests to the domain name in question.

The domain name is not a designation by which the Respondent is commonly known. Policy  4(c)(ii). Rather, the Respondent recently registered the domain name to divert Internet consumers and capitalize on the Complainant's established mark. 

The Respondent has not made the claim that it is using the domain name in connection with a bona fide offering of goods and services nor for a legitimate or fair use. Policy  4(c)(i), (iii). Instead, the Respondent's site offers services, which complete with the Complainant's business. See Hewlett-Packard v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the Respondent had no legitimate interest in the domain name, <openmail.com>, that was being used to compete with the Complainant's e-mail services).

Based on the above, the panel finds that the Respondent has no rights or legitimate interests in the domain name in question.

Registration and Use in Bad Faith

The Complainant asserts that the Respondent acted and is acting in bad faith. The Respondent does not deny that its actions were taken in bad faith.

The Respondent registered the domain name with the intent of disrupting the business of the Complainant, which offers competing services. Policy  4(b)(iii). The Respondent knew of the Complainant's services and mark, registered a similar domain name, and began offering competitive services on the website. This is evidence of bad faith. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum April 25, 2000) (finding that the Respondent acted in bad faith when he used the Complainant's marks to develop an Internet business in competition with the Complainant).

The Respondent is also using the Complainant's mark to attract Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant's mark and corresponding services. Policy  4(b)(iv).

The panel concludes that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "CASHUNTILPAYDAY.COM" be transferred from the Respondent to the Complainant.