Countrywide Financial Corporation v. Stop2Shop c/o G V
Claim Number: FA0801001138258
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance
G. Johnson of Roylance, Abrams, Berdo & Goodman,
L.L.P., District of Columbia, USA.
Respondent is Stop2Shop c/o G V (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <countrywidepayment.com>, <countrywidepayments.com>, <countrywidepayoff.com>, <countrywidepayoffs.com>, <countrywiderealtor.com> and <wholesalecountrywide.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 16, 2008; the National Arbitration Forum received a hard copy of the Complaint January 22, 2008.
On January 17, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <countrywidepayment.com>, <countrywidepayments.com>, <countrywidepayoff.com>, <countrywidepayoffs.com>, <countrywiderealtor.com> and <wholesalecountrywide.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 14, 2008, 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@countrywidepayment.com, postmaster@countrywidepayments.com, postmaster@countrywidepayoff.com, postmaster@countrywidepayoffs.com, postmaster@countrywiderealtor.com and postmaster@wholesalecountrywide.com> by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <countrywidepayment.com>, <countrywidepayments.com>, <countrywidepayoff.com>, <countrywidepayoffs.com>, <countrywiderealtor.com>, and <wholesalecountrywide.com> are confusingly similar to Complainant’s COUNTRYWIDE mark.
2. Respondent has no rights to or legitimate interests in the <countrywidepayment.com>, <countrywidepayments.com>, <countrywidepayoff.com>, <countrywidepayoffs.com>, <countrywiderealtor.com>, and <wholesalecountrywide.com> domain names.
3. Respondent registered and used the <countrywidepayment.com>, <countrywidepayments.com>, <countrywidepayoff.com>, <countrywidepayoffs.com>, <countrywiderealtor.com>, and <wholesalecountrywide.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Countrywide Financial Corp., provides a variety of financial services for consumers and businesses under its COUNTRYWIDE mark. Complainant specializes in providing consumer home loans. Complaint registered its COUNTRYWIDE mark with the United States Patent and Trademark Office (“USPTO”) on January 5, 1993 (Reg. No. 1,744,794). Complainant also holds multiple other registrations for its COUNTRYWIDE mark with the USPTO and other governmental authorities.
Respondent registered the <countrywidepayment.com>, <countrywidepayments.com>, <countrywidepayoff.com>, <countrywidepayoffs.com>, <countrywiderealtor.com>, and <wholesalecountrywide.com> domain names September 18, 2005. Respondent’s disputed domain names resolve to websites, which display links to third-party websites, some of which offer financial services that attempt to compete with Complainant.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 registered its COUNTRYWIDE mark with the USPTO
January 5, 1993. The Panel finds this
registration adequately establishes Complainant’s rights in its COUNTRYWIDE
mark pursuant to Policy ¶ 4(a)(i). See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Expedia, Inc.
v. Inertia 3D, FA 1118154 (Nat. Arb.
Forum Jan. 18, 2008) (“Complainant
asserts rights in the mark through its registration of the mark with the United
States Patent and Trademark Office. This
registration sufficiently establishes Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i).”).
The
Panel finds Respondent’s <countrywidepayment.com>, <countrywidepayments.com>,
<countrywidepayoff.com>, <countrywidepayoffs.com>,
<countrywiderealtor.com>, and <wholesalecountrywide.com>
domain names are confusingly similar to Complainant’s COUNTRYWIDE mark pursuant
to Policy ¶ 4(a)(i).
Each of Respondent’s disputed domain names merely incorporates a generic
term with Complainant’s mark. In
addition, the generic top-level domain (“gTLD”) “.com,” is not material in
determining whether a disputed domain name is confusingly similar to a
mark. See Arthur Guinness Son & Co. (
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant asserted that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant presents a prima facie case in support of these assertions, the burden shifts to Respondent to establish that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant established a prima facie case to support its assertions. Respondent failed to respond to the case; therefore, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain names. The Panel, however, reviews the record to determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See 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. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Respondent is currently using the disputed domain names to resolve to websites that display links to third-party websites that directly seek to compete with Complainant’s business. The Panel finds that such use is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 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).
In addition, the record and WHOIS information do not indicate that Respondent is, or ever has been, commonly known by the disputed domain names. Respondent is listed as “Stop2Shop,” in the WHOIS information and Complainant asserts that it has never authorized Respondent to use its COUNTRYWIDE mark. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Michael Smith Custom Clothiers, Inc. v. Custom Shirt Shop, FA 1109402 (Nat. Arb. Forum Jan. 4, 2008) (“. . .other ICANN panels have held, and this Panel agrees, that in order to have rights or legitimate interests under the “commonly known” provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”); 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 Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain names resolve to websites that display links to third-party websites offering financial services that attempt to compete with Complainant. The Panel finds that this use constitutes disruption and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell d/b/a Pre-owned Harleys, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); 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)).
Also, Respondent is using the confusingly similar disputed
domain names to provide links to competing financial service businesses, from
which Respondent presumably receives click-through fees. The Panel finds this is an attempt by
Respondent to profit from the goodwill associated with Complainant’s COUNTRYWIDE
mark, and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from
its diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
In addition, the Panel
finds that Respondent’s registration of six domain names containing
Complainant’s COUNTRWIDE mark is sufficient to constitute a pattern of
preventing Complainant from using its mark in domain names. This is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness,
FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one
instance of registration of several infringing domain names satisfies the
burden imposed by the Policy ¶ 4(b)(ii)); see also
YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a
bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's
registration of two domain names incorporating the complainant's YAHOO! mark).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <countrywidepayment.com>, <countrywidepayments.com>, <countrywidepayoff.com>, <countrywidepayoffs.com>, <countrywiderealtor.com>, and <wholesalecountrywide.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 3, 2008.
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