WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amscot Corporation v. Derrick Richardson
Case No. D2017-1024
1. The Parties
The Complainant is Amscot Corporation of Tampa, Florida, United States of America (“USA” or “United States”), represented by Trenam Kemker, USA.
The Respondent is Derrick Richardson of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <amscotloans.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2017. On May 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2017, 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. On May 30, 2017, the Center transmitted an email in English and Japanese regarding the language of proceeding. The Complainant requested that English be the language of proceeding on the same day. The Respondent did not comment on the language of proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on June 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2017.
The Center appointed Masato Dogauchi as the sole panelist in this matter on July 4, 2017. 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.
In accordance with the Rules, paragraph 11(a), in respect of the language to be used in the administrative proceeding, in principle, the language of the administrative proceeding shall be the language of the registration agreement. However, the proviso of the same provision allows the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Panel determines that the language of this proceeding shall be English rather than Japanese which is used in the registration agreement for the disputed domain name, on the following grounds:
- The Complainant requested to that effect;
- The Respondent did not reply to the notification in both English and Japanese by the Center that the Respondent was invited to indicate its objection, if any, to the Complainant’s request for the language by the specified due date and, if the Respondent did not respond by this date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request; and
- The text on the disputed domain name is written in English and no other indication is found which shows any connection to the Japanese language in addition to the registration agreement.
- The use of Japanese language would produce undue burden on the Complainant in consideration of the absence of a Response from the Respondent.
4. Factual Background
Whereas the Respondent has not submitted any formal response, the followings are found to be the factual background of this case.
The Complainant founded in 1989 in Florida is a non-bank consumer financial services company. Its core services include check cashing, bill payment, prepaid access cards, short-term cash advances, money orders, ATMs in every branch, wire transfers, notary services, fax services, and postage. It has 238 branch locations in Florida, but also provides services both nationally and internationally in connection with money orders and wire transfers.
The Complainant owns trademark registrations for AMSCOT in numerous jurisdictions, including United States trademark no. 2,889,003 registered on September 28, 2004.
The disputed domain name was registered by the Respondent on March 6, 2017 and resolves to a website offering loan services in competition with the Complainant.
5. Parties’ Contentions
The Complainant owns the AMSCOT trademark registrations in the United States, the European Union, and Canada. It is also the registered owner of many domain names including the word “amscot”.
The Complainant has prominently and extensively used, promoted and advertised the Complainant’s marks, including the word “amscot”, in the United States and internationally for over twenty seven years. By virtue of these efforts to establish the Complainant’s marks, and use of the domain name incorporating the trademark, AMSCOT has become well recognized by consumers as designating the Complainant as an ethical, reliable and efficient source of the financial services so marketed. Accordingly, the Complainant’s marks are extremely valuable to the Complainant.
The disputed domain name, <amscotloans.com>, is virtually identical, subsumes the Complainant’s trademark AMSCOT in its name, and is confusingly similar to the Complainant’s marks and domain name, <ascot.com>. Numerous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that it is sufficient to establish the requirement that disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent’s addition of “loans” to the end of the disputed domain name after the initial use of the AMSCOT trademark as the first word of the disputed domain name is simply a more specific description of the types of services offered under the Complainant’s marks.
The Respondent registered the disputed domain name long after the Complainant began using the mark in 1989 in commerce in the United States and other jurisdicitons and well after the Complainant began using the domain name <amsot.com> and it registered the AMSCOT mark with many jurisdictions.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not associated or affiliated with the Complainant in any way. The Respondent does not have any trademarks applications or registrations in the name “Amscot,” nor is the Respondent’s business generally recognizable by that name nor is it commonly known by the disputed domain name.
From its website, the Respondent seems to be a direct competitor of the Complainant’s and offers services under the trade name “AmscotLoans.com.” The disputed domain name resolves to a site with the header “AmscotLoans.com” with an online application and information regarding applying for cash loans that are unconnected with the Complainant or the trademark AMSCOT.
In light of the above facts, the Respondent has undoubtedly registered the disputed domain name primarily for the purpose of exploiting the Complainant’s well-known history as a rapidly growing, ethical financial services business and its trademark while also disrupting the Complainant’s business and it intentionally seeking to attract, for commercial gain, Internet users to the Respondent’s web site for loans by creating a likelihood of confusion with the Complainant’s marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the following decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the Complainant.
ln accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has had rights in trademarks containing the term “amscot” for many years.
The word “amscot” is found in the disputed domain name. The rest of the dominant part of the disputed domain name is “loans”. This word is a very common noun. No other meaningful combination of words can be found. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the words “amscot” and “loans” and is therefore irrelevant in the determination of the confusing similarity between the disputed domain name and the AMSCOT trademark.
Therefore, having considered the above differences, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The above requirement provided for in paragraph 4(a)(i) of the Policy is accordingly satisfied.
B. Rights or Legitimate Interests
There is no evidence at all that shows the Respondent is not commonly known by the name “amscot”. The Respondent is not in any way affiliated with the Complainant, nor authorized or licensed to use the AMSCOT mark, or to register a domain name incorporating the mark. In addition, the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the disputed domain name resolves to a website offering similar services as done by the Complainant.
Since the Respondent did not reply to the Complaint in this proceeding, the Panel finds on the available record that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The above requirement provided for in paragraph 4(a)(ii) of the Policy is accordingly satisfied.
C. Registered and Used in Bad Faith
ln consideration of the Complainant’s business using the trademark AMSCOT, it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the trademark at the time of the disputed domain name’s registration. ln addition, in light of the fact that nothing in the disputed domain name bears a reasonable relevance to the name or other characteristics of the Respondent, there can be found no reasonable possibility of fortuity in the Respondent’s use of the disputed domain name.
Furthermore, the Respondent is using the disputed domain name in order to have it resolve to a website doing business similar to that of the Complainant, which in the circumstances of this case is evidence of bad faith as per paragraph 4(b) of the Policy.
The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. The above requirement provided for in paragraph 4(a)(iii) of the Policy is accordingly satisfied.
ln conclusion, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are determined to be satisfied.
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 <amscotloans.com> be transferred to the Complainant.
Date: July 12, 2017