WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AARC Inc. v. Jayashankar Balaraman
Case No. D2007-0578
1. The Parties
The Complainant is AARC Inc., Spantanburg, of United States of America, represented by Chambliss, Bahner & Stophel, Tennessee, of United States of America.
The Respondent is Jayashankar Balaraman, Bangalore, of India.
2. The Domain Name and Registrar
The disputed domain name <advanceamericacash.net> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2007. On April 18, 2007, the Center transmitted by email to Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On April 19, 2007, Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 1, 2007. The Center verified that the Complaint together with the amendment to the Complaint (together referred to as the “Complaint” below) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2007.
The Respondent did not submit a formal response. However, on May 21, 2007, the Respondent sent an email to the Center in connection with the allegations made against it in the Complaint. That email purported to forward a previous email sent in response to correspondence from the Complainant. The Center acknowledged its receipt of this communication (referred to below and treated by the Panel as the “Response”) on May 30, 2007. Although the Response did not comply with the formal requirements of the Rules, the Panel has considered it under paragraph 10 of the Rules, to ensure that both parties have had a fair opportunity to present their substantive case.
The Center appointed James A. Barker, Douglas M. Isenberg, and Harini Narayanswamy as panelists in this matter on June 26, 2007. The Panel finds that it was properly constituted. Each member of 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
The following facts are not contested.
The Complainant and its licensees operate payday advance businesses across the United States of America under the marks ADVANCE AMERICA and ADVANCE AMERICA CASH ADVANCE. There are currently over 2800 ADVANCE AMERICA centers across the United States of America.
The Complainant or its predecessors have used the mark ADVANCE AMERICA to advertise its financial services since 1997.
The Complainant is the owner of registered marks, on the principal register of the United States Patent and Trademark Office, for ADVANCE AMERICA and ADVANCE AMERICA CASH ADVANCE, for services in the nature of check cashing, deferred deposits and short-term consumer loans.
The Complainant maintains a website at “www.advanceamerica.net” and “advanceamericacash.com”. The Complainant registered those domain names in 1999.
The disputed domain name was registered on October 14, 2005.
On March 6, 2007 (evidenced in the Complaint) and May 7, 2007 (evidenced in the case file) the disputed domain name reverted to a website titled “piggy bank cash loans” which advertised “payday loans”. On May 7, 2007, the website included a disclaimer, stating that the website was not affiliated with “AdvanceAmerica.Net” and giving the Complainant’s website address.
At the date of this decision, the disputed domain name reverted to substantially the same website, however without that disclaimer. Instead, the website’s front page including statements such as “Features of Advance America Cash:” with a dot point list of such things as “Cash Advance up to $1500” and “Payday loans direct to your account”. That website also included a list of links all starting with the words “Advance America Cash”: including “Advance America Case Home” and “Advance America Cash How it Works”, most of which led to other pages within the Respondent’s website.
5. Parties’ Contentions
The following contentions are summarized from the Complaint, in relation to each of the relevant elements of paragraph 4(a) of the Policy:
Identical or confusingly similar
The Complainant has common law and statutory rights in the marks ADVANCE AMERICA and ADVANCE AMERICA CASH ADVANCE.
The disputed domain name is confusingly similar to the Complainant’s marks. The Respondent’s use of the disputed domain name is likely to cause deception, mistake and confusion among consumers seeking information with regard to the services of the Complainant. The only difference with its first mark is the addition of the word “cash”, and with its second mark, the omission of the second word “advance”. In Oki Data Americas, Inc. v ASD, Inc., WIPO Case No. D2001-0903 a previous panel held that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.”
Rights or legitimate interests
Consistent with the Lanham Act, the Complainant cannot have any legitimate rights in the disputed domain name because any such rights are contrary to well-established principles of trademark law. The Respondent does not have a right to the disputed domain name because it is not licensed by the Complainant.
The Respondent cannot show that it is using the disputed domain name in connection with a bona fide offering of goods or services, because it is an affiliate of direct competitors of the Complainant, and is using the disputed domain name to attract Internet users to its website.
Neither can the Respondent show that he is making a legitimate non-commercial or fair use of, or is known by, the disputed domain name.
The Respondent’s actions fall within paragraph 4(b)(iv) of the Policy. This paragraph provides (in part) that there is evidence of bad faith registration and use where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. This is supported by evidence that the Respondent has used the disputed domain name to compete with or link to the Complainant’s competitors. Further evidence of such bad faith is a Google Ad which appears at the top of the “Sponsored Links” when a user types in “advance america”.
The Respondent’s disclaimer is insufficient to remedy consumer confusion and therefore will not negate bad faith.
In addition, the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant who is the owner of the trademark. It is reasonable to infer that the Respondent knew of the Complainant, and that a primary purpose of the registration was to resell the disputed domain name for a profit.
The following contentions are summarized from the Response (which did not set out its claims explicitly against paragraph 4(a) of the Policy).
The Respondent registered the disputed domain name with the intention to selling cash advance in America.
The Respondent added a prominent disclaimer to his website which should avoid any confusion among Internet users. The Respondent’s intention was not to divert bona fide customers of the Complainant.
The Respondent’s first intention was to register the generic terms “cash advance America”. However, since a corresponding domain name was not available, the Respondent registered the disputed domain name instead. The Complainant was unknown to the Respondent at that time. It was not an obvious brand name, and certainly unknown to the Respondent in India.
The Complainant has falsely claimed that it did not respond to its correspondence. The Respondent did respond to that correspondence in the terms set out above.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 in bad faith and is being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn below.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the registered trademark in which the Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy.
The Complainant provided evidence of its registered rights in both the trademarks ADVANCE AMERICA and ADVANCE AMERICA CASH ADVANCE.
The disputed domain name is confusingly similar to both of those marks. It incorporates the first mark entirely and adds the word “cash”. Many panels have held that a domain name which wholly incorporates a trademark may be confusingly similar to that mark for purposes of the Policy, despite the addition of common or generic words. (See, for example: Oki Data Americas, Inc. v ASD, Inc., WIPO Case No. D2001-0903, cited by the Complainant; in addition see e.g.: Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Playboy Enterprises International, Inc. v. Hector Rodriguez, WIPO Case No. D2000-1016.) See also Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”).
The Panel notes that this conclusion is not affected by the fact that the first mark is registered subject to the disclaimer (in the record of the registration) that “no claim is made to the exclusive right to use ‘advance’ apart from the mark as shown”. This is because the confusing similarity is measured against the mark as a whole, rather than any particular generic element of it.
The disputed domain name is also confusingly similar to the second of the Complainant’s marks (ADVANCE AMERICA CASH ADVANCE). It is only relevantly different in that it does not include the last repeated word “advance”. That is, the more dominant elements of this mark appear to be the first three words; since the last word only repeats the first. The disputed domain name incorporates this dominant element entirely, and so can be treated as confusingly similar for this reason.
This is so even though the Complainant’s second mark is a design mark. It is well-established that device elements are not to be considered in determining confusing similarity – rather, as only the textual elements are relevant. (See e.g. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.)
In any case, it is not necessary for the Complainant to establish that the disputed domain name is confusingly similar to both of the marks in which it has rights. It is sufficient for the Complainant to establish that the disputed domain name is confusingly similar to “a trademark” in which it has rights (emphasis added) under the Policy, paragraph 4(a)(i).
For these reasons, the Panel finds that the Complainant has established this first element of the Policy.
B. Rights or Legitimate Interests
The Panel finds that there is no sufficient evidence that the Respondent has rights or legitimate interests in the disputed domain name.
The Respondent’s apparent contentions in this respect are as follows.
Firstly, the Respondent suggests that the elements of the disputed domain name are generic. The Panel has inferred from these statements that the Respondent is arguing that, because those words are generic, he has a right to register them as a domain name.
If so, this argument is misplaced. Although each of the constituent elements of the mark (taken alone) may be generic in some usages, there is no evidence that their combination as a whole is generic as used here. It is in relation to the combination that the Complainant has trademark rights.
Even if the mark were considered generic as a whole, there would “generally need to be evidence that the term is in fact being used in that generic sense; for example, to sell a product generally described by, as distinct from merely taking advantage of third party rights in, that term.” (CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints, WIPO Case No. D2007-0407.) For the reasons set out below, there is no such evidence.
Secondly, the Respondent claims that his purpose in registering the disputed domain name was to “sell cash advance to America”. It is apparent, and the Complainant does not dispute, that the Respondent has made an offering of cash advance loans via his website at the disputed domain name. But whether this gives the Respondent a right or legitimate interest depends on whether this use is bona fide. Relevantly, paragraph 4(c)(i) of the Policy provides that a respondent may demonstrate that it has a right or legitimate interest where the Panel finds that it has used the disputed domain name in connection with a bona fide offering of goods or services.
Previous panels have considered that a bona fide offering is essentially one that is done in “good faith”. (See e.g. First American Funds Inc v. Ult.Search, Inc., WIPO Case D2000-1840, UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES, WIPO Case No. D2000-0416.) Accordingly, panels have found that an offering in connection with a domain name will not be done in good faith, if the respondent was motivated by a desire to benefit from the reputation of the complainant’s mark. (See e.g. Cattlecare Limited v. Wairua Holdings Pty Ltd t/a Poplar Pastoral Co, D2001-1373.)
Such a motivation clearly requires that the Respondent was aware of the Complainant’s mark. It would also require that the Respondent was aware of the likelihood of confusion and sought to benefit from that likelihood. (In these respects, see e.g. Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128, and as cited by the Complainant: Cyberbingo Corporation v. Global Gaming Entertainment N.V., WIPO Case No. D2006-0973.)
The Panel finds that the Respondent was motivated, in registering and using the disputed domain name, by a desire to benefit from the likelihood of confusion with the Complainant’s marks.
The evidence supports a finding that the Respondent was aware of the Complainant’s mark when it first registered it. The disputed domain name is (as found above) confusingly similar to the Complainant’s. It is also relevantly identical to the Complainant’s registered domain name <advanceamericacash.com>. In the circumstances of this case, the Panel considers it unlikely that the Respondent would have registered the disputed domain name without first checking the availability of that domain name in the popular “.com” space, and then being alerted to the prior rights of the Complainant.
Further, both the Complainant and Respondent operate in the business of offering short-term consumer loans (or, “payday cash advance”). The Respondent also admits that its purpose in registering the disputed domain name was to direct that business at an American market – the same market in which the Complainant operates. As the Respondent targeted the same audience, in the same field of business, it is unlikely that the Respondent was not aware of the Complainant when he registered the disputed domain name.
The evidence also supports a finding that the Respondent was aware of the likelihood of confusion that the disputed domain name would create. The Panel believes that the Respondent would have known of the likelihood that Internet users would assume that the disputed domain name was in some way associated with the Complainant. As noted above, the disputed domain name is confusingly similar to the Complainant’s marks. It is also identical to a domain name in the “.com” space through which the Complainant does business. It is unlikely that the Respondent intended the opposite of the confusion that these circumstances would naturally create.
It is likely that the Respondent sought to benefit from the creation of confusion with the Complainant’s mark. The Respondent registered the disputed domain name more than 5 years after the Complainant apparently established its own online business in the same field, and around 10 years after the first use in commerce of the Complainant’s marks. As noted above, the Respondent would have been aware of the likelihood of confusion with the Complainant’s mark. He would, therefore, have been similarly aware of the likelihood that Internet traffic, looking for the Complainant, might be mistakenly diverted to the Respondent’s website.
There is no other evidence of the Respondent rights or legitimate interests in the disputed domain name, within the meaning of paragraph 4(c)(ii) or (iii) of the Policy.
In relation to paragraph 4(c)(ii), there is no evidence that the Respondent is commonly known by the domain name. Rather, the Respondent is named Jayashankar Balaraman, and the website to which the disputed domain name reverted (on the dates noted above in the factual background) was titled “Piggy Bank Cash Loans”.
In relation to paragraph 4(c)(iii), there is otherwise no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. Rather, the evidence is that the Respondent is using the disputed domain name with intent to profit from the same kind of business as the Complainant.
The circumstances set out in paragraph 4(c) are not exhaustive of evidence which might demonstrate a right or legitimate interest. However, there is no other such evidence. The Respondent has not provided any.
For all these reasons, the Panel finds that the Complainant has established this second element under the policy.
C. Registered and Used in Bad Faith
For similar reasons to those above, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith, under paragraph 4(b)(iv) of the Policy. That paragraph provides that there is evidence of bad faith where the Respondent:
“by using the domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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…”
The Panel notes that the likelihood of such confusion is not removed by the disclaimers that appeared, at least at one point, on the Respondent’s website. As noted in item 3.5 of the WIPO Overview of Selected UDRP Questions, the consensus view of panelists is that:
“The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. However a disclaimer is sometimes found to support other factors indicating good faith or legitimate interest.”
There is no compelling evidence before the Panel of any other factors that might indicate good faith or legitimate interest.
As such, the Panel finds that the Complainant has established this third element
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <advanceamericacash.net>, be transferred to the Complainant.
James A. Barker
Douglas M. Isenberg
Dated: July 10, 2007