Ocwen Financial Corporation
v. Robbie Viera
Claim Number: FA0707001048760
PARTIES
Complainant is Ocwen Financial Corporation (“Complainant”), represented by Halle
B. Markus, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ocwen.org>, registered with eNom, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 30, 2007; the
National Arbitration Forum received a hard copy of the Complaint on July 31, 2007.
On July 31, 2007, eNom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <ocwen.org> domain name is registered
with eNom, Inc. and that the Respondent
is the current registrant of the name. eNom, Inc. has verified that Respondent is
bound by the eNom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On August 7, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 27, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@ocwen.org by e-mail.
A timely Response was received and determined to be complete on August 27, 2007.
A timely Additional Submission was received from Complainant on
September 4, 2007, in accordance with The Forum’s Supplemental Rule 7.
On September 7, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant contends that it owns numerous
registrations in the
a) OCWEN (U.S. Registration No.
2,330,061; registered March 14,2000) (Incontestable) for cash management; check
cashing; check processing; financial analysis and consultation; financial
investment in the fields of real estate and securities; lease-purchase
financing; loan financing; financing services; home equity loans; installment
loans; investment of funds for others; mortgage lending; loan collection
services; real estate foreclosure trustee services; financial evaluation of
real estate; loan servicing; real estate investment in low income housing tax
credit partnerships, in Class 36;
b) OCWEN & Design (U.S. Registration No.
2,333,474; March 21, 2000) (Incontestable) for cash management; check cashing;
check processing; financial analysis and consultation; financial investment in
the fields of real estate and securities; lease-purchase financing; loan
financing; financing services; home equity loans; installment loans; investment
of funds for others; mortgage lending; loan collection services; real estate
foreclosure trustee services; financial evaluation of real estate; loan
servicing; real estate investment; real estate investment in low income housing
tax credit partnerships, in Class 36;
c) OCWEN FINANCIAL CORPORATION (U.S. Registration
No. 2,330,062; registered March 14, 2000) (Incontestable) for cash management;
check cashing; check processing; financial analysis and consultation; financial
investment in the fields of real estate and securities; lease-purchase
financing; loan financing; financing services; home equity loans; installment
loans; investment of funds for others; mortgage lending; loan collection
services; real estate foreclosure trustee services; financial evaluation of
real estate; loan servicing; real estate investment in low income housing tax
credit partnerships, in Class 36.
2. Complainant further contends that it has also established common
law rights in the OCWEN Marks. Complainant is one of the largest third-party
service providers in the
3.
According
to Complainant it is the only party with an active
4. Complainant has invested substantial sums of money in developing
and marketing the OCWEN Marks. The OCWEN
Marks have been and continue to be widely publicized through advertising
throughout the
5. Complainant owns and uses the domain names <ocwen.com>,
<ocwencustomers.com>, and <ocwenbusiness.com> to advertise and
facilitate mortgage servicing, real estate asset management, asset recovery,
and technology services. These domains
represent an important marketing channel for the company. Complainant's use of the OCWEN Marks in
connection with mortgage servicing, real estate asset management, asset
recovery, and technology services is documented by its use on its web sites at
<ocwen.com>, <ocwencustomers.com>, and <ocwenbusiness.com>.
6. Many years after Complainant adopted and first used the OCWEN
Marks, and long after these marks became famous, Respondent registered the domain
name <ocwen.org> on May 10,
2004, without authorization from Complainant. Respondent registered the disputed domain name
well after Complainant's first use of the OCWEN Marks and well after the OCWEN
Marks became well known to consumers as signifying the source of Complainant's
services. Respondent uses the domain
name <ocwen.org> in connection
with a commercial web site that provides multiple links to web sites offering
services related to those of Complainant, in addition to a variety of other links.
7. Complainant initially attempted to contact Respondent regarding
his unauthorized use of the domain name <ocwen.org>
by certified mail, return receipt requested on October 12, 2006. Complainant received confirmation that the
letter was received by Respondent on October 18, 2006, but received no response
from Respondent. Complainant made
additional attempts to contact Respondent via the email address listed in the WHOIS
records for the disputed domain name, ToastyX@ToastyX.net, on November 8, 2006 and
thereafter, but as of the date of filing, Complainant has not received a
response from Respondent. To date,
Respondent has refused to transfer and continues to use the domain name <ocwen.org>.
8.
Complainant
owns U.S. Trademark Registrations and common law rights in the OCWEN Marks in
connection with mortgage servicing, real estate asset management, asset
recovery, and technology services. The
U.S. Trademark Registrations for the OCWEN Marks constitute conclusive evidence
- by virtue of their incontestability under Section 15 of the Lanham Act, 15
USG Section 1065 - of the validity of the marks as a distinctive indicator of
source and of the Complainant's ownership of and exclusive right to use the
OCWEN Marks in connection with the services specified in Complainant's
registrations.
9.
Respondent's
domain name is identical to and wholly incorporates Complainant's OCWEN mark. The <ocwen.org>
domain name only deviates with the addition of the generic top-level domain
".org” which is immaterial when analyzing ICANN Policy ¶ 4(a)(i).
10.
According
to Complainant there is no evidence that Respondent owns any trademark or
service mark rights or registrations that are identical, similar, or in any way
related to the disputed domain name.
11.
Complainant
contends that Respondent is not licensed or authorized to use Complainant's
OCWEN Marks or to register or use any domain name incorporating the OCWEN
Marks. Accordingly, Respondent cannot
make any good faith claim that it (as an individual business or other
organization) is named or is commonly known as OCWEN and/or the domain name <ocwen.org> or is authorized to
make use of the OCWEN Marks.
12.
Furthermore
Respondent has not made any bona fide
offering of goods or services in connection with the domain name <ocwen.org>. To the contrary, Respondent uses the <ocwen.org> domain name in
connection with a web site collecting links to third-party web sites offering
goods and services that are similar to Complainant's services, in addition to
various other links, which does not constitute a bona fide offering of goods or services.
13.
Finally
Complainant contends that Respondent registered the disputed domain name <ocwen.org> many years after
Complainant began using the OCWEN Marks and after the OCWEN Marks became well
known to consumers throughout the
14.
Through
registration and use of the domain name <ocwen.org>,
Respondent is attempting to attract, for commercial gain, Internet users by
creating a likelihood of confusion as to the source, sponsorship, affiliation,
or endorsement of Respondent’s web site. Consumers would likely believe, falsely, that
Complainant uses or authorizes the use of its mark in the domain name to
provide mortgage servicing, real estate asset management, asset recovery, and
technology services offered by Respondent. Respondent's inclusion of links to web sites
advertising and selling similar services, in addition to links of general
interest, on <ocwen.org>,
heightens the risk of consumer confusion. Because consumers associate Complainant's
OCWEN Marks with Complainant's services, Respondent's use of the disputed
domain name in connection with links to services similar to those offered by
Complainant is evidence of Respondent's bad faith intent to attract, for
commercial gain, Internet users by creating a likelihood of confusion as to the
source, sponsorship, affiliation, or endorsement of Respondent’s web site.
15.
Furthermore
Respondent cannot claim in good faith that he has made a legitimate
noncommercial or fair use of the disputed domain name. Respondent is commercially benefiting from the
disputed domain name by creating a likelihood of confusion with Complainant's
mark and redirecting unsuspecting consumers to a commercial search engine for
financial gain. As panels have
previously concluded in similar cases, using another's trademark to attract and
redirect Internet traffic to websites that promote competitive services does
not constitute a bona fide offering
of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy 4(c)(iii).
16.
Respondent’s
bad faith is further evidenced by his continued use of the disputed domain name
even after receiving a letter from Complainant demanding that Respondent cease
and desist from use of the domain name <ocwen.org>.
17.
In
addition, Respondent's pattern of registering popular domain names constitutes
bad faith under Paragraph 4(b)(ii) of the ICANN
Policy. Respondent has engaged in a
pattern of similar bad faith conduct by registering numerous domain names
containing well-known third-party trademarks and by registering common
misspellings of well-known trademarks, a practice known as
"typosquatting." Currently,
Respondent owns over 300 domain names, many of which appear to infringe upon
the rights of legitimate trademark owners. For example, Respondent has registered domain
names that incorporate the well-known third-party marks GENERAL MOTORS (<general-motors.com>);
FORD MOTOR COMPANY (<ford-motor.com>); ASHLEY FURNITURE (<ashley-furniture.com>);
FRUIT GUSHERS (<fruitgushersredoyourroom.com>); ATLANTIS (<atlantiscasion.com>);
as well as common misspellings of the marks MOZILLA and MOZILLA.ORG (<mozila.org>
and <mozzila.org>); GOOGLE (<goooooooooogle.com>); and YAHOO! (<yahoooooooooo.com>).
18.
In
conclusion, Respondent cannot in good faith claim that it had no knowledge of
Complainant's rights in the OCWEN Marks or that he made a legitimate
noncommercial or fair use of the subject domain names based on (1)
Complainant's prior adoption and use of its well-known OCWEN Marks; (2) the
fact that Respondent's domain name is identical and confusingly similar to
Complainant's OCWEN mark; (3) Respondent's lack of any rights or legitimate
interest in the domain name; (4) Respondent's intent to attract, for commercial
gain, Internet users to its web site by creating a likelihood of confusion as
to the source, sponsorship, affiliation or endorsement of Respondent's web
site; and (5) Respondent's pattern of bad faith domain name registrations,
including multiple registrations of domain names incorporating famous or
well-known third-party trademarks or misspellings thereof.
B. Respondent
1. According to Respondent the fact that the
domain name is identical or confusingly similar to the Complainant’s trademarks
cannot be disputed. However Respondent
uses the domain name at dispute in connection with a web site containing
various links of general interest to third-party web sites offering goods and
services unrelated to Complainant's services. This constitutes a bona fide offering of goods or services.
2. In addition, Complainant does not have
legitimate interests in the domain name. Complainant previously acquired the domain
name through another dispute, then allowed the
registration to expire.
3. Furthermore Respondent's web site does not
contain any reference to Complainant's OCWEN mark other than the domain name
itself and does not claim any sponsorship or affiliation with the Complainant.
4. Additionally Respondent's lack of response to
unreasonable demands with no option for negotiation is not evidence of bad
faith.
5. Respondent contends that it does not own many
of the domain names listed in the Reverse WHOIS Report. Respondent's domain names consist primarily of
“.org” domain names with three to five letters, which includes the domain name
at dispute. Respondent's other domain
names are irrelevant to this case and should be dealt with on a case-by-case
basis.
6. Furthermore Respondent did not register the
disputed domain name with the intent to sell it to the Complainant, to disrupt
its business, to prevent it from registering its trademark, or to confuse
consumers. Respondent did not have knowledge of Complainant's mark when the
disputed domain name was registered.
7. Finally Complainant has not presented any
evidence to support its allegation that respondent intended or intends to
attract users from Complainant’s site.
C. Additional Submission
1.
In its additional
submission dated August 31, 2007 Complainant contends that Respondent
incorrectly alleges that a web site containing links of general interest to
various third party web sites is a bona
fide offering of goods and services in connection with the domain name at
dispute. Decisions from previous UDRP
cases do not support Respondent’s proposition.
2.
Furthermore
the release of a domain name does not equate to the abandonment of any rights
or legitimate interests in such domain name, as Complainant continues to be the
owner of trademark rights in its OCWEN mark and numerous other domain names
including the OCWEN mark. Nor does the
fact that Complainant filed a previous complaint to recover the disputed domain
name bar a decision in the current dispute because the previous complaint was
filed against an unrelated party and this case involves acts that occurred
after the original decision. Respondent
has no connection to Ocwen or its business and, thus, cannot be said to have
any legitimate interest in the disputed domain name through its opportunistic
registration of the domain name at dispute.
3.
Complainant
has clearly established a prima facie
case in support of its rights or legitimate interests in the disputed domain
name. The burden then shifted to
Respondent to show that is has rights or legitimate interests. Respondent has not rebutted Complainant’s
evidence, but rather has substantiated Complainant’s claim that he uses the
disputed domain name to divert Internet users, presumably for commercial gain,
by confirming that he uses the disputed web site to offer links to third party
services, some of which are in competition with Complainant’s services. Further, Respondent has provided no evidence
that he is or ever has been commonly known by the <ocwen.org> domain name nor has Complainant granted a license
or permission to Respondent to use its OCWEN mark in any way. Therefore, Respondent has no legitimate
interest in the domain name and cannot be found to be making a bona fide offer of goods or services in
connection with the <ocwen.org> domain
name.
4.
Complainant
repeats that it offers mortgage servicing, real estate asset management, and
asset recovery services. Similarly, the
disputed site offers “Home” and “Finance” links, two “Mortgage” links, in
addition to “Foreclosures” and “Real Estate Training” links. The fact that Respondent displays links
related to Complainant’s services on the disputed site is evidence of
Respondent’s bad faith intent to disrupt Complainant’s business and confuse
Internet users. Therefore, Respondent is
unfairly taking advantage of the confusing similarity between Respondent’s
domain name and Complainant’s OCWEN mark, and profiting from the goodwill
associated with Complainant’s mark in bad faith.
5.
The fact
that a reverse WHOIS search for Respondent’s name in Mark Monitor’s data base
revealed domains that Respondent alleges that he does not currently own simply
indicates that Respondent owned these domains at some point in the past. However, a large number of previous UDRP
decisions have established that the registration of multiple domain names
identical or confusingly similar to the trademarks of third parties constitutes
bad faith.
6.
Finally
Complainant’s registrations confer constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof. Because
the mark OCWEN is a coined term, it is unlikely that someone would register the
mark in a domain name unless that person had knowledge that it was used by a
third party and would be recognized by Internet users. Therefore, even assuming Respondent did not
have actual knowledge of Complainant’s mark when he registered the disputed
domain name, Complainant’s trademark registrations put Registrant on
constructive notice of Complainant’s rights in the OCWEN mark, which
establishes the element of bad faith registration and use.
FINDINGS
The Panel finds that:
1.
the Domain Name <ocwen.org>
is confusingly similar to the
Complainant’s marks.
2.
the
Respondent has not established any right or legitimate interest in the Domain
Name <ocwen.org>
and
3. the Respondent has registered and is using
the Domain Name <ocwen.org > in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order 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.
Complainant asserts rights in the OCWEN mark through a service mark
registration with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,330,061 issued March 14, 2000).
The Panel finds that Complainant’s timely registration of the OCWEN mark
with the USPTO establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive [or] have acquired secondary meaning.”).
The Panel finds that the <ocwen.org>
domain name is identical to Complainant’s OCWEN mark under Policy ¶ 4(a)(i) as
the disputed domain name contains Complainant’s mark in its entirety with the
addition of the generic top-level domain (“gTLD”) “.org.” Previous panels have held, and this Panel
also finds, that the addition of a gTLD is not relevant to a Policy ¶ 4(a)(i) analysis as a top-level domain is required of all
domain names. See Busy Body, Inc. v.
Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition
of the generic top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name registrants .
. . ."); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO
Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical
to the complainant’s
Mark).
Complainant must show that Respondent has no rights or legitimate
interests with respect to the disputed domain name. Respondent does not assume the burden of
proof, but may establish rights or legitimate interests in a disputed domain
name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services prior
to the dispute;
(b) He is commonly
known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate rights or interests.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns., Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel is of the view that Respondent is not commonly known by the <ocwen.org> domain name under Policy ¶ 4(c)(ii) as Respondent’s WHOIS information indicates that Respondent is “Robbie Viera,” and there does not appear to be any other information in the record, including in the Response, indicating that Respondent is commonly known by the disputed domain name in any way. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The evidence
indicates that Respondent is using the <ocwen.org>
domain name to operate a website that displays hyperlinks to various
third-party websites, some of which are in direct competition with Complainant. The Panel finds that such use is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names); see
also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding
no rights or legitimate interests in the famous MSNBC mark where the respondent
attempted to profit using the complainant’s mark by redirecting Internet
traffic to its own website).
Complainant alleges that Respondent registered and is using the <ocwen.org> domain name for commercial gain, presumably through the accrual of click-through fees for the hyperlinks displayed on the website that resolves from the disputed domain name. The Panel agrees, and is of the view that the disputed domain name is capable of creating a likelihood of confusion as to Complainant’s source, sponsorship, endorsement or affiliation with the <ocwen.org> domain name, and therefore finds bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel also finds that the
displaying of hyperlinks on the website that resolves from the <ocwen.org> domain
name, some of which are in direct competition with Complainant, constitutes a
disruption of Complainant’s business and is evidence of bad faith registration
and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12,
2000) (finding that the respondent has diverted business from the complainant
to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ocwen.org> domain name be TRANSFERRED
from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: September 19, 2007
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