Dollar Financial Group, Inc. v. Oakridge

[Indexed as: Dollar Financial Group v. Oakridge]
[Indexed as: TILLPAYDAYLOAN.COM et al.]

National Arbitration Forum
Administrative Panel Decision

Forum File No.: FA0006000094977
Commenced: 15 June, 2000
Judgment: 17 July, 2000

Presiding Panelist: Judge Harold Kalina

Domain name - Domain Name Dispute Resolution Policy - U.S.Trademark - Identical - Confusingly similar - Likelihood of confusion - Commercial use of the mark- Bad faith use - Bad faith registration - Rights or legitimate interests in respect of domain name.

Complainant is the user and registrant of the mark “CASH ?TIL PAYDAY” and the logo “CASH?TIL PAYDAY LOANS” and uses the said mark to offer short term loans to consumers.  Respondent has registered the four domain names “TILLPAYDAYLOAN”, “TILLPAYDAYLOANS”, “UNTILPAYDAYLOAN” and “UNTILPAYDAYLOANS”.  Complainant requests that these domain names be transferred from Respondent to Complainant because the former has no legitimate interest in respect to the domain names.

Held, Names not Transferred to Complainant.

The four domain names are not identical or confusingly similar to Complainant’s word mark or logo.  There is no evidence to show that Respondent has registered the domain names in order to create a likelihood of confusion with the Complainant’s logo or to  disrupt business of Complainant.  Neither has Respondent made any use of domain name in connection with a bona fide offering of goods and services.  Hence, Complainant has failed to demonstrate that Respondent has no rights or legitimate interests in the use of the domain name.  Furthermore, the panel is satisfied that there is no pattern of bad faith registration or use of the domain names on the part of Respondent.

Policies Referred to
ICANN Uniform Dispute Resolution Policy

Kalina, Panelist:-

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/07/2000; The Forum received a hard copy of the Complaint on 06/07/2000.
On 06/15/2000, confirmed by e-mail to The Forum that the domain names "TILLPAYDAYLOAN.COM", "TILLPAYDAYLOANS.COM", "UNTILPAYDAYLOAN.COM", and "UNTILPAYDAYLOANS.COM" are registered with and that the Respondent is the current registrant of the name.
On 06/15/2000, 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 July 6, 2000, pursuant to Complainant’’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) as Panelist.

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

A. Complainant:
Complainant, Dollar Financial Group, formerly known as "Monetary Management Corporation", is the senior user of the mark CASH ‘‘TIL PAYDAY®® and the logo CASH ‘‘TIL PAYDAY LOANS, and have been continuously using the said mark and the logo in various form in interstate commerce to describe its short term consumer loan services since 1995. The word mark CASH ‘‘TIL PAYDAY (indexed under the pseudo mark CASH UNTIL PAYDAY), was granted registration by the US Patent and Trademark Office on July 16, 1996, Reg. #1987764.
Complainant states that since 1995 it has spent millions of dollars advertising its consumer financial services, and has originated over $310,000,000 in consumer loans using a three line logo reading-

Cash ‘‘Til______


Complainant alleges that Respondent has made no commercial use of the mark, and has sold no goods or services under the mark CASH ‘‘TIL PAYDAY®® (or any colorable similar mark), or using the mark PAYDAYLOAN in any jurisdiction, and has no rights, or legitimate interest in the domain names in dispute. Complainant conducted an extensive business name, common-law and state and federal trademark search, and has discovered no evidence of use of the phrase PAYDAYLOAN by Respondent in any trade or business. Complainant contends the Respondent has no legitimate interests in respect to the domain names.
Complainant states that Respondent’’s registration of four domain names which are colorably, confusingly, and/or substantially similar to Complainant’’s registered service mark and logotype constitutes a "pattern" of conduct which renders such registration in bad faith. Further that Respondent’’s registration of the domain names in dispute precludes Complainant from registering the corresponding domain names.
B. Respondent:
Respondent contends the domain names in dispute are not identical to, or confusingly similar to Complainant’’s registered word mark CASH ‘‘TIL PAYDAY and pseudo mark CASH UNTIL PAYDAY because the word "LOAN" does not appear in the registration granted by the US Patent and Trademark Office.
Respondent takes the position that Complainant by adding the word "LOAN" to its logo is of no consequences, because Complainant’’s contention is that Respondent has infringed on Complainant’’s registered word mark which does not include the word "LOAN". Respondent argues that if Complainant had determined that the word "LOAN" was important for its purpose, Complainant would have included it in the word mark registration That the issue of the logo is not an issue for this panel to determine.
Respondent argues that the only similarity between Complainant’’s word mark and Respondent’’s domain names is the single word "PAYDAY". The word "CASH" used by Complainant. And the word "LOAN" used by Respondent have totally different meanings. The words "CASH" and "LOAN" are clearly different and distinguishable. 

Complainant has been in business of offering short term loans to consumers since 1995 using the word mark "CASH ‘‘TIL PAYDAY®®" and the logo-graphic ‘‘CASH ‘‘TIL PAYDAY LOANS" under US Trademark and Patent Office Reg. #1987764. Complainant has used the word mark and logo in business since 1995, and has generated consumer loans in excess of $310,000,000.

Respondent registered the four domain names with Bulk on May 20, 2000.
Respondent since registering the domain names has made no use of, or demonstrable preparations to use, the domain names, or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
There was no credible evidence offered to establish that:
Respondent registered the domain names primarily for selling, renting or otherwise transferring the domain names to the Complainant or to a competitor of Complainant; 
Respondent registered the domain names in order to disrupt the business of Complainant; 
Respondent intentionally attempted to create a likelihood of confusion with Complainant’’s word mark or logo; 
Respondent registered the domain names to preclude Complainant form registering the corresponding domain names; 
Respondent has conducted a pattern of conduct which renders the registration to have been in bad faith. 
The domain names and Complainant’’s word mark and logo are not identical, and are 
not confusingly similar to one another.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs 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 domain names,,, and, are found not to be identical or confusingly similar to Complainant’’s word mark or logo.
Rights or Legitimate Interests

Complainant has failed to prove that Respondent has no rights or legitimate interests in the use of the domain names.
Registration and Use in Bad Faith
Complainant has failed to prove that Respondent registered the domain names in bad faith.

The undersigned certifies that he has acted independently, and has no known conflict of interest to serve as the arbitrator in this proceeding. Having been duly selected, and being impartial, I make the following determination:
Based upon the above, I find in favor of the Respondent. Therefore, the remedy requested by Complainant pursuant to Paragraph 4.i of the Policy is denied. The Respondent shall not be required to cancel or transfer to the Complainant the four domain names in dispute. 

Domain Names Not Transferred