Complainant was QC Holdings, Inc. from Arizona, USA. Respondent was NetIncome Ventures Inc, represented by John Berryhill.
Complainant submitted the Complaint to the National Arbitration Forum on August 24, 2012. The National Arbitration Forum appointed Jeffrey M. Samuels, Hon. Bruce E. Meyerson (Ret.), and Sir Ian Barker as Panelists on the three-member panel.
Respondent registered the disputed domain name, quikcash.com, on February 20, 2000. The domain name quickcash.com (the correct spelling of quick) is also owned by the Respondent since 1998. Complainant is using the domain name myquikcash.com which was registered in December 2006.
Complainant QC Holdings has been providing financial and loan services under the QUIK CASH and NATIONAL QUIK CASH trademarks since at least as early as February 9, 2002. Complainant owns 2 U.S. Trademark Registrations for the mark QUIK CASH (the term CASH disclaimed) and DESIGN (consisting of a dollar sign within a shaded diamond shape within another un-shaded diamond shape) and for the mark NATIONAL QUIK CASH (the terms NATIONAL and CASH disclaimed) and DESIGN (consisting of a dollar sign within a shaded diamond shape within another un-shaded diamond shape). Both registrations indicate that the date of first use of the marks is February 9, 2002.
Complainant asserted that Respondent is using the disputed domain name in bad faith by offering the domain name for sale and by using the domain name as a referral site to companies offering financial services identical, related or competitive to Complainant’s financial services. Complainant pointed out that, on August 21, 2012, it submitted an online inquiry form to Respondent informing Respondent of Complainant’s trademark rights and requesting Respondent to voluntarily transfer the domain name to Complainant. Respondent indicated that Complainant would be contacted by Respondent with a request that Complainant submit an “unsolicited offer” for the domain name.
Respondent Netincome Ventures Inc. pointed out that it acquired the disputed domain name in February 2000, two years before the date of first use asserted by Complainant with respect to its trademark registrations. According to Respondent, “[t]he singular fact of the Respondent’s seniority and priority in relation to the Complainant is sufficient for the Panel to dispense with the first two elements [of the Policy] and decide the matter on the third criterion of `bad faith registration and use’.” Respondent pointed out, Complainant’s trademark applications were not filed until April 15, 2010, the registrations did not issue until December 10, 2010, and Complainant produced no evidence of common law rights that predate either the filing or issuance dates.
In view of the Panel’s determination on the issue of bad faith registration, Panel found no need to address the first 2 elements of the UDRP: Identical and/or Confusingly Similar and Rights or Legitimate Interests.
The third element of the UDRP Policy requires Complainant to prove that Respondent both registered and is using the disputed domain name in bad faith. The Panel concluded that the disputed domain name was not registered in bad faith. The uncontroverted evidence indicated that the domain name was registered two years prior to the earliest date of first use of Complainant’s trademarks. In the view of the Panel, this fact compels a determination that the domain name in issue was not registered in bad faith.
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶3.1, the consensus view of such panels is that while a trademark can form a basis for a UDRP action under the first element irrespective of its date, “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.” While the WIPO Overview notes that the consensus view may not be applicable where the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, there is no evidence that such is the case here. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining that respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark.)
Inasmuch as the Panel interpreted the applicable Policy to require evidence of both bad faith registration and use, it concluded that Complainant did not establish this element of the Policy.
So the Panel concluded that relief shall be DENIED.
For some reason Respondent did not ask for a Reverse Domain Name Hijacking (RDNH) finding.