Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 03223

B E T W E E N:

MYCASHNOW.COM, INC

Complainant

- and -

DAVID WHITT

Respondent

Decision of Independent Expert

1. Parties

Complainant: MyCashNow.com, Inc.

Country: GD

Respondent: David Whitt

Country: GB

2. Domain Name

mycashnow.me.uk

3. Procedural Background

3.1.1 The Complaint, which is a complaint of Abusive Registration under the Dispute Resolution Procedure ("the DRS") of Nominet UK ("Nominet"), and is dated 13 December 2005, was posted by Nominet to the Respondent under cover of a letter dated 19 December 2005. The covering letter included the following paragraphs:-

"A copy of the complaint is attached to this letter, which is deemed to have been received by you on 20 December 2005 (please refer to paragraphs 2(a) and 2(e) of the Procedure).

In accordance with the Procedure, you have 15 working days, ie until 12 January 2006 to respond to the complaint. In order to be valid, your response must comply with the Procedure, and must be received by Nominet in both hard copy and electronic form."

3.1.2 The Respondent did not respond by 12 January 2006 or at all. In a letter dated 17 January 2006 Nominet wrote again to the Respondent, referring to the letter dated 19 December 2005 and to the failure of the Respondent to submit a response within the deadline, and communicating that in the circumstances, this dispute would not go through the Informal Mediation stage of the Dispute Resolution Service, but would be referred to an independent expert for a decision if MyCashNow.com, Inc paid the appropriate fees by 1 February 2006 - a condition which was fulfilled.

3.1.3 By letter dated 3 March 2006 I was appointed with effect on 9 March 2006 to provide a Decision under Nominet UK's Dispute Resolution Policy ("the Policy"). I am required to send my decision to Nominet no later than 23 March 2006.

3.1.4 I have been provided with the following materials:-

Dispute History

Complaint

Standard correspondence between Nominet and the parties

Non standard correspondence between Nominet and the parties.

Register entry for mycashnow.me.uk.

Nominet WHOIS query result for mycashnow.me.uk

Printout of website at www.mycashnow.me.uk.

Copy of Nominet UK's Policy and Procedures.

4. Outstanding Formal Procedural Issues

4.1 There are no outstanding formal or procedural issues.

5. The Facts

5.1 The domain name was registered by the Respondent on 21 September 2005.

6. The Parties' Contentions

Complainant

6.1 The Complaint of Abusive Registration is in the following terms:-

The Complaint

I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

1. The Complainant has rights in the Domain Name because:

a. The Complainant trades and does business on the internet under the name mycashnow.com and has done so since December 19, 2000. (See print out from Register.com, Inc. attached hereto as Exhibit A).

b. The Complainant has been incorporated under the name "Mycashnow.com, Inc." since March 6, 2001. (See Certificate of Incorporation dated March 6, 2001 which is attached hereto as Exhibit B.) (See Memorandum of Association dated March 5, 2001 which is attached hereto as Exhibit C.).

c. The Complainant provides payday loans and payday loan services in the United States under the mycashnow brand name. The Complainant has spent in excess of TEN MILLION DOLLARS ($10,000,000) promoting and advertising said brand and web site since 2001. (See Declaration of Sherry Huff attached hereto as Exhibit D and attached sample advertising invoices attached hereto as Exhibit D-1.) (See Video of a television commercial attached hereto as Exhibit E).

d. By virtue of Complainant's use of the marks "mycashnow" and "mycashnow.com", the Complainant has acquired common law trademark rights in the United States where both the Complainant and the Respondent operate exclusively.

2. The Complainant discovered the existence of mycashnow.me.uk on or about November 28, 2005. It was confirmed that mycashnow.me.uk is also in the business of providing payday loans in the United States. Mycashnow.me.uk is not someone's personal name and it does not do business in the United Kingdom. (See Affidavit of David Hooks attached hereto as Exhibit F.).

3. The domain name in the hands of the Respondent is abusive because:

a. It is one of at least three (3) registrations made which because of the sequence, type and pattern of registration prove that the Respondent or his affiliates is in the business of making registrations of domain names which correspond to trademarks of other well known names in the payday loan industry in which the Respondent has no apparent interest. The three (3) are as follows:

(1) The domain name "mycashnow.me.uk" was registered on September 21, 2005 by David Whitt. (See Exhibit G.) That site is also in the business of providing payday loans and/or payday loan services. (See Exhibit H.) The privacy policy for said site reflected on 11/29/05 that AAP Financial Group, LLC., of Aberdeen South Dakota was the owner. (See Exhibit I) The copyright notice on Exhibit I indicates that the copyright for the site is owned bycashnow.me.uk. Mycashnow.me.uk obviously sought to take advantage of the brand name for which Complainant has spent millions of dollars to promote.

(2) Similarly, AAP Financial Group, LLC is the apparent owner or operator of a site called americaadvance.com, a domain that was updated at or about the same time on September 20, 2005. (See Exhibit J). It is also in the business of providing payday loans and/or payday loan services. (See Exhibit K) Advance America is a well known public company in the payday loan industry. (See http://advanceamerica.net/index.php) with a U.S. federal trademark registration for the mark "Advance America." (See Exhibit L.) In spite of this trademark registration, Respondent or his affiliates flipped the words around and is now doing business under that name as well.

(3) AAP Financial Group, LLC, also operates a site under the domain name "BigCashMoney.com." (See Exhibit M.) It is also in the business of providing payday loans and/or payday loan services. (See Exhibit N.) According to the registration for that domain, it was also updated on September 20, 2005. (See Exhibit O.) This site takes advantage of the federally registered trademark "CashMoney" owned by Cash Money Cheque Cashing, Inc. (See Exhibit P). All of these sites have connections to AAP Financial Group, LLC. and it is obvious from their actions that the Respondent and/or their affiliates had the intent to take advantage of the goodwill associated with existing notorious marks which are well known in the industry, so that they don't have to spend the enormous funds and resources necessary to build their own brand names.

b. It is also apparent that David Whitt registered with incorrect name and address details. The registrant is David Whitt (see Exhibit G), however, the privacy policy on the site when first viewed on 11/29/2005 was that of AAP Financial Group, LLC. (See Exhibit I) The privacy policy has not been changed and is now, as of 12/8/05, in the name of MyCashNow.me.uk without any physical address. (See Exhibit Q) AAP Financial Group, LLC. is a South Dakota company with an address at 1020 6^th Ave. SE, ste. 252, Aberdeen, South Dakota 57401. (See Exhibit R.).

c. AAP Financial Group, LLC. has also drawn scrutiny because its use or illegal spam in attracting customers to its web site. (See JeremiahJacobs.com blog attached hereto as Exhibit M). The Complainant's business is at risk of being connected to such illegal conduct by association.

6.2 The Complainant requests the transfer of the Domain Name.

Respondent

6.3 As stated above, the Respondent has not submitted any Response.

7. Discussion and Findings:

General

7.1 Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that

"i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration."

7.2 Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

7.3 Paragraph 1 of the Policy defines "Rights" as including but not being "limited to, rights enforceable under English law". This definition is subject to a qualification which is not material.

Complainant's Rights

7.4 The Complainant (which is signed and includes a statement of truth and to which there is no challenge) and the documentation provided with, in my opinion :-

7.4.1 shows that the Complainant was incorporated in Grenada under the name MyCashNow.com, Inc on March 6 2001, and accordingly that the Complainant has "rights" in its registered name;

7.4.2 establishes, on the balance of probabilities, that before the date of registration of the Domain Name the Complainant had acquired common law rights in the names ("marks") "mycashnow" and "mycashnow.com".

7.5 There is no evidence before me as to the law of either Grenada or of the United States. The Courts in England and Wales, faced with such a problem, have adopted the approach that in the absence of evidence of foreign law such law may be presumed to be the same as English law – see Dicey and Morris, The Conflict of Laws, 23^rd ed. paras. 9-001 and 9-025. It is on the basis of that approach that I have reached the conclusions expressed in paragraph 7.4 above.

7.6 I consider and find as a fact that the names in which the Complainant has rights are similar to the Domain Name. Accordingly, I am satisfied that the conditions of paragraph 2a of the Policy are satisfied.

Abusive Registration

7.7 Paragraph 1 of the Policy defines "Abusive Registration" as:

"a Domain Name which either

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights: or

ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

7.8 The Policy provides:

"3 Evidence of Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B as a blocking registration against a name or mark in which the Complainant has Rights; or

C for the purpose of unfairly disrupting the business of the Complainant;

ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

iii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv It is independently verified that the Respondent has given false contact details to us; or

v The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A has been using the domain name registration exclusively; and

B paid for the registration and/or renewal of the domain name registration.

b Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

c There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

i Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has

A used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name; or

C made legitimate non-commercial or fair use of the Domain Name; or

ii The Domain Name is generic or descriptive and the Respondent is making fair use of it.

iii In relation to paragraph 3(a)(v); that the Registrant's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or

iv In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

b Fair use may include sites operated solely in tribute to or criticism of a person or business.

c If paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

7.9      The facts asserted in paragraphs 2 and 3 of the Complaint are supported by the exhibits referred to and are not challenged. There is no reason to doubt the accuracy of those assertions, and accordingly I accept them as being factually correct.
7.1     0 It is apparent from paragraph 3 of the Complaint that the Complainant seeks to rely upon paragraphs 3(a)(iii) and 3(a)(iv) of the Policy. It is not clear whether the Complainant seeks to rely upon any specific provision in paragraph 3(a) of the Policy in relation to the contention advanced in paragraph 3(c) of the Complaint.
7.1     1 I am satisfied on the balance of probabilities and find as a fact that the Respondent is associated with AAP Financial Group LLC. Further, the unchallenged evidence does support the contention that that company has been (and in the absence of evidence to the contrary still is) engaged in a pattern of registration where it is the registrant of domain names (under UK or otherwise) which correspond to well known names or trade marks in which it has no apparent rights, and the Domain Name is part of that pattern. It may be that a Respondent who is associated with such a course of conduct is in fact "engaged" in that pattern. Alternatively it might be argued that it is only the prime mover who could be properly described as being "engaged" in the pattern If that is right, I could not conclude, on the material available, that it is the Respondent who is engaged in such pattern of registrations and therefore I could not find that the terms of paragraph 3(a)(iii) of the Policy are fulfilled. Nevertheless, it is to be remembered that the list of factors which may be evidence of an Abusive Registration is not exhaustive. I have no doubt that if a Respondent is involved (though not "engaged" in the sense of being the prime mover) in such a pattern of registrations then a registration which is a part of that pattern can be Abusive, and I am satisfied and find as a fact that that is the case here. A part of the mischief is identified in the last sentence of paragraph 3a(3.) of the Complaint.
7.1     2 In the terms of paragraph 1 of the Policy I am satisfied and find that the Domain Name:-

7.12.1 was registered in a manner which at the time when the registration took place was unfairly detrimental to the Complainant's Rights.

7.12.2 has been used in a manner which took unfair advantage of and was unfairly detrimental to the Complainant's Rights.

7.1     3 In those circumstances, it is unnecessary for me to consider whether the Complainant would also be entitled to succeed upon the other grounds which it advances.
7. Decision
8.1      For the reasons give above, I find that the Domain Name was acquired in a manner which at the time when the acquisition took place took unfair advantage of and was unfairly detrimental to the Complainant's Rights and, in the hands of the Respondent, is an Abusive Registration.
8.2      The Complainant has requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainant as it requests.

Signed…………………………

David Blunt QC

10 March 2006