Complainant is Check Into Cash, Inc. of Tennessee, United States of America, represented by Chambliss, Bahner & Stophel, P.C., United States of America.
Respondent is Korn Korn of Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2014. On July 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 7, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 4, 2014.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on August 22, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is engaged in the financial services business in the United States offering payday and short terms loans and other financial services under the service mark LOANBYPHONE.
Complainant registered the domain name in 1999.
Complainant claims use of LOANBYPHONE as a trademark in commerce since 2000.
Complainant owns the following trademark registrations:
LOANBYPHONE.COM and Design, No. 3,023,425, Registered December 6, 2005, for financial services in the nature of check cashing services featuring cash advance, deferred presentment and delayed deposit service; and
LOANBY PHONE.COM QUICK EASY AND CONFIDENTIAL A SUBSIDIARY OF CHECK INTO CASH PAYDAY ADVANCE CENTERS and Design, No. 3,737,796, Registered January 12, 2010, for financial services in the nature of check cashing services featuring cash advance, deferred presentment and delayed deposit services; stored value card services.
Respondent registered the Domain Name on April 30, 2013.
The Domain Name resolves to a website that advertises and offers on-line payday advance services and short term payday loans.
Complainant attempted to contact Respondent by email but received no response. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name is identical or confusingly similar to trademarks in which Complainant has rights by reason of its registrations of those trademarks in the United States and as a matter of common law based upon long-term use, number of loans processed and advertising expenditures.
Respondent's use of the Domain Name is likely to cause deception, mistake and confusion among consumers. The Domain Name is nearly identical to Complainant’s LOANBYPHONE trademarks, using the distinctive part of those trademarks. The addition of “www-” does not dispel confusion but instead adds to the potential confusion.
Complainant further contends that Respondent has no rights or legitimate interests in the Domain Name. Complainant has not licensed Respondent to use Complainant’s trademarks.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, because Respondent is a direct competitor of Complainant who is using the confusingly similar Domain Name to attract users to Respondent’s own website.
Respondent is not making a noncommercial or fair use of the Domain Name. Respondent is using the Domain Name to compete directly with Complainant and generate revenue for itself by using Complainant’s trademarks to attract Internet traffic to Respondent’s website.
Finally, Complainant contends that Respondent registered and used the Domain Name in bad faith in that:
Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor;
Respondent is using the Domain Name to attract, intentionally for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of Respondent's website;
Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to Complainant or to a competitor of Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name;
Respondent failed to stop using the Domain Name after Complainant sent Respondent cease and desist emails and letters. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Respondent did not respond to the Complaint. The Panel therefore considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondent at the addresses provided in the Complaint and in Respondent’s registration information available in the publicly available WhoIs database and from the Registrar. Certain of Respondent’s contact information on record proved to be inaccurate. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and administrative proceeding.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has rights in its LOANBYPHONE trademark by reason of its registrations on the Principal Register of the United States and as a matter of common law by reason of established use in commerce in the United States over a period of some 14 years.
The Panel considers the Domain Name to be confusingly similar to Complainant’s trademarks. The “” parts of the trademarks and the Domain Name are identical. The addition in the Domain Name of “www-”, which mimics the prefix for connecting to the World Wide Web, is not distinctive in this context and is clearly intended to create or even exacerbate user confusion, not to dispel or negate confusion or outright deception. See, Scania CV AB (Publ) v. Unaci, Inc.,WIPO Case No. D2005-0585).
Complainant has established the first element of its case. B. Rights or Legitimate Interests
Complainant bears the overall burden to prove that Respondent has no rights or legitimate interests in the Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. However, where complainant makes a prima facie case that respondent does not possess such rights or interests, the burden of production shifts to respondent to demonstrate that he does in fact possess such rights or legitimate interests. Id. Where, as here, respondent fails to come forward with allegations or evidence to demonstrate that he possesses such rights or interests, complainant’s prima facie case will usually be found sufficient to meet complainant’s overall burden of proof. Id.
Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant can make out a prima facie case by negating such circumstances, see Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364, which Complainant has done in this case.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). Respondent’s use of a domain name that is nearly identical to Complainant’s trademarks in order to compete directly with Complainant does not constitute a bona fide service and does not, therefore, confer rights or create legitimate interests in the Domain Name for Respondent. See, The Cyberbingo Corporation v. Global Gaming Entertainment N.V.,WIPO Case No. D2006-0973.
There is nothing in the record to suggest that Respondent has ever been commonly known by the Domain Name, and Complainant has not granted Respondent authority or license to use Complainant’s name or trademarks in a Domain Name. Policy, paragraph 4(c)(ii).
Respondent’s creation and use of an intentionally confusing Domain Name based on Complainant's trademarks for a plainly commercial, competitive purpose does not constitute either a noncommercial or a fair use of the Domain Name. Policy, paragraph 4(c)(iii).
Respondent having failed to come forward with facts or argument to rebut Complainant’s prima facie case, Complainant’s case is accepted. Complainant has established the second element of its case. C. Registered and Used in Bad Faith
Complainant must show that the Domain Name was registered and is being used in bad faith, and has clearly done so here.
Paragraph 4(b)(iv) of the Policy provides that the following is evidence of registration and use in bad faith:
By using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel considers the evidence of record more than sufficient to establish that Respondent registered and is using the Domain Name intending to exploit Complainant’s trademarks and Complainant’s goodwill in those marks to create confusion and divert Internet traffic to web pages that would then generate revenue for Respondent. Respondent appears to be competing directly with Complainant with a Domain Name that incorporates Complainant’s trademark, is plainly intended to confuse the Internet user and to divert traffic from Complainant to Respondent, opens to a web site offering the same type of financial service as Complainant, has a look and feel similar to that of Complainant’s site, and offers its services for sale. See, Beemak Plastics, Inc. v. WestRep Group,WIPO Case No. D2001-1023; E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319.
Complainant’s case is sufficient at this point. The Panel will note additional indicators of bad faith in that Respondent failed to respond to Complainant’s cease and desist communications, failed to maintain accurate or complete contact information with the Registrar, and failed to respond to the Complaint in this case.
The Panel does not find evidence sufficient to sustain Complainant’s assertions that Respondent’s primary purpose was to disrupt Complainant’s business (as opposed to diverting business to itself) or that Respondent’s purpose was to sell or otherwise transfer the Domain Name to Complainant or a competitor of Complainant.
The Panel concludes that Respondent registered and used the Domain Name in bad faith and that Complainant therefore has established the third and final element of its case. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to Complainant.
John R . Keys, Jr.
Sole Panelist
Date: September 5, 2014
Full & Egal Universal Law Academy