The Complainant is Amscot Financial, Inc. of Tampa, Florida, United States of America ("United States"), represented by GrayRobinson, P.A., United States.
The Respondent is Andy Tang of Deerfield Beach, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2014. On November 12, 2014 and November 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 13, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on November 17, 2014.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on November 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 12, 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.
The language of the proceeding is English. 4. Factual Background
The Complainant is an American financial services company based in Tampa, Florida. The Complainant's company name is taken from the words America and Scotland, the Complainant's founder's current and ancestral homes. The Complainant provides non-bank financial services to consumers via a network of retail branch locations located throughout the state of Florida. As of September 1, 2012, the Complainant operated more than 200 branch locations in the Tampa Bay, Orlando and Miami areas.
The Complainant's services include, among other things, small, short-term cash advances, check cashing and bill payment. The Complainant does not franchise any of its branches.
The Complainant is the owner of United States Registration No. 2,889,003 for the word mark AMSCOT (the "AMSCOT Mark"). The AMSCOT Mark was registered on September 28, 2004 in International Class 36 for financial services, namely check cashing, deferred deposit transaction and money order services; and in International Class 35 for tax preparation services. The Complainant's first use and first use in commerce for the AMSCOT Mark was June 30, 1989. The Complainant has registered and uses as the domain name for its official website, "www.".
The Respondent registered the Disputed Domain Name on January 26, 2014. According to the Complainant's submission, after clicking on "www.", the Disputed Domain Name resolved to a website entitled "Amscot Cash Advance". 1 The website provided ways in which consumers could receive cash loans and advances. 5. Parties' Contentions A. Complainant
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name was registered and is being used in bad faith; and
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the AMSCOT Mark based on longstanding use. The Disputed Domain Name consists of the AMSCOT Mark followed by the descriptive words "cash advance" connected by a hyphen, and followed by the generic Top-Level Domain ("gTLD") ".com".
The Panel finds that the Disputed Domain Name is nearly identical, or if not identical, is confusingly similar to the Complainant's AMSCOT Mark. The words "cash advance" in the Disputed Domain Name are descriptive and indicate that the website provides cash advances and other similar financial services. It is well established that the addition of a descriptive or generic word to a mark does not avoid confusing similarity to a complainant's trademark. See Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 (the panel found confusing similarity where the word "shop" was added to the trademark of the complainant in the disputed domain name); PRL USA Holdings, Inc. v. Unasi Management Inc.,WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (same).
This is especially true where, as in the present case, the descriptive or generic words "cash advance" are associated with the Complainant and its services. See, e.g., Gateway, Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Further, although the Disputed Domain Name contains a hyphen between the AMSCOT Mark and the words "cash advance", this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew,WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc.,WIPO Case No. D2003-0214 (hyphens do not "serve to dispel Internet user confusion here")); Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 ("[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY").
Finally, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Once a complainant establishes that a respondent's domain name is identical or confusingly similar to complainant's mark, and that the complainant has made a prima facie case of lack of rights or legitimate interests, the burden shifts to the respondent to establish some rights or legitimate interests in respect of the domain name.
There is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent has any authority, license or permission to use the AMSCOT Mark, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Respondent is using the Disputed Domain Name to offer the Complainant's services without permission or authorization.
Furthermore, by not submitting a response, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds rights or legitimate interests in the Disputed Domain Name. See Ahead Software AG v. Leduc Jean,WIPO Case No. D2004-0323. See also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis,WIPO Case No. D2000-1563 (the respondent's default is further evidence to conclude that it had no rights or legitimate interests in the domain name).
Moreover, the Respondent used the AMSCOT Mark on the website to which the Disputed Domain Name resolved. Therefore, the Panel infers that the Respondent was using the Disputed Domain Name to divert consumers searching for the Complainant's website to its own website by capitalizing on the fame and goodwill of the Complainant. This use does not constitute a legitimate interest in a domain name.
Finally, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith because the Respondent was attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's AMSCOT Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Respondent's registration and use of the Disputed Domain Name indicate that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its AMSCOT Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.").
Second, the Respondent's action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant's business, deceive customers and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's AMSCOT Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552.
Third, the Respondent's registration of the Disputed Domain Name after the Complainant began to use and widely promote its AMSCOT Mark is evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademark).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Disputed Domain Name, , be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: December 18, 2014
1 The Complainant submitted screen shots of several pages of the Respondent's website as an annex to its Complaint. As of the writing of this decision, however, the pages were no longer available online.
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