Federal Home Loan Mortgage Corporation v.
Muhammad Arshad a/k/a SRS
Claim Number: FA0207000116767
PARTIES
Complainant
is Federal Home Loan Mortgage
Corporation, McLean, VA, USA (“Complainant”) represented by Leslie Gutowski, of Finnegan Henderson Farabow Garrett & Dunner L.L.P. Respondent is Muhammad Arshad, Karachi Sindh, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <freddiemac.biz>,
registered with Intercosmos Media Group,
Inc dba DirectNIC.com.
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.
G.
Gervaise Davis III, Esq., as sole Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 18, 2002; the Forum received a hard copy of the
Complaint on July 19, 2002.
On
July 19, 2002, Intercosmos Media Group, Inc dba DirectNIC.com confirmed by e-mail
to the Forum that the domain name <freddiemac.biz>
is registered with Intercosmos Media Group, Inc dba DirectNIC.com and that the
Respondent is the current registrant of the name. Intercosmos Media Group, Inc dba DirectNIC.com has verified that
Respondent is bound by the Intercosmos Media Group, Inc dba DirectNIC.com
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
July 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 13,
2002 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@freddiemac.biz by e-mail.
A
timely Response was received and determined to be complete on August 13, 2002.
The
Complainant submitted its Reply, dated August 16, 2002, which was received
August 19, 2002, and Respondent submitted an Additional Response, dated August
20, 2002, which was received by the Forum on August 21, 2002 and determined to
be timely. The Panel duly considered
these additional submissions along with the original papers required by the
Policy.
On September 5, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed G. Gervaise
Davis III, Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Description
of Complainant and its Goods and Services
1.
Complainant is a
stockholder-owned corporation chartered by the U.S. Congress in 1970 to create
a continuous flow of funds to mortgage lenders in support of home ownership and
rental housing. Since 1970, Complainant
has indirectly financed one out of six homes in the U.S. and home ownership for
more than 30 million families. In 2001
alone, Complainant purchased 2,845,868 single-family (1-4 unit) mortgages
totaling $384 billion.
2.
Complainant’s
business is conducted in the U.S. residential mortgage market and in the global
securities market. Complainant
purchases residential mortgages and issues mortgage-backed or mortgage-related
securities. By putting private investor
capital to work for homebuyers in general, Complainant ultimately provides
homeowners and renters with lower housing costs and better access to low-cost
mortgage financing.
3.
Complainant’s main
website, located at the domain name <freddiemac.com>,
provides comprehensive, up-to-date information about Complainant and
its products and services, the residential mortgage finance market, and
affordable housing. Excerpts of the <freddiemac.com> website
were attached to the Complaint.
4.
Having been widely
promoted among members of the general consuming public since 1970 and having
exclusively identified Complainant, the FREDDIE MAC mark and name symbolize the
tremendous goodwill associated with Complainant and are property rights of
incalculable value. Furthermore, due to
widespread and substantial international use, the FREDDIE MAC mark and name
have become globally famous.
Complainant’s
Trademark Registrations
5.
Complainant owns
the following U.S. registrations for the mark FREDDIE MAC, printouts of which,
from the United States Patent & Trademark Office’s online database, were
attached as exhibits:
a.
Registration
No. 1,312,608, first used March 1, 1983, issued January 1, 1985, covering
financial services in the field of mortgage loans and mortgage-backed or
mortgage-related securities, in International Class 36.
b.
Registration
No. 1, 644,364, first used December 12, 1989, issued November 12, 1991,
covering financial services in the field of mortgage loans and mortgage-backed
or mortgage related securities, in International Class 36.
6.
In addition to its
trademark registrations in the U.S., Complainant owns numerous registrations
and applications for its FREDDIE MAC mark and variations of that mark in
countries around the world, including Argentina, Australia, Brazil, Brunei,
Canada, China, European Community, Hong Kong, India, Indonesia, Japan, Kuwait,
Macau, Malaysia, Mexico, New Zealand, Norway, Philippines, Saudi Arabia,
Singapore, South Korea, Sri Lanka, Switzerland, Taiwan, Thailand, Turkey,
United Arab Emirates, Venezuela, and Vietnam.
7.
Complainant also
owns Canadian Application No. 1098768 for the mark FREDDIE MAC, filed April 11,
2001, covering financial services, namely, financial services in the field of
mortgage loans, and mortgage-backed and mortgage-related securities. (Notably, Mr. Khan, who was an
administrative contact for the Domain Name and who corresponded with
Complainant regarding the Domain Name, is located in Canada.)
8.
Complainant also
owns United Arab Emirates Application No. 42827, filed June 9, 2001, covering
services in International Class 36.
(Notably, one of Respondent Arshad’s addresses of record is located in
the United Arab Emirates.)
9.
Freddie Mac owns
the domain name <freddiemac.com>,
which was registered on March 23, 1995 and which has been used to identify
Complainant’s website since on or about that date.
10.
Complainant’s trademark rights in its FREDDIE MAC mark, based on its U.S.
registrations, and filings/registrations in at least twenty-three foreign
countries and the European Community, and on its common law rights under United
States law acquired through the extensive use of the FREDDIE MAC mark, trade
name, and domain name, long predate Respondent’s registration of the domain
name <freddiemac.biz> on
November 7, 2001.
Respondent’s
Infringing Activities and Bad Faith Acts
11.
Respondent misappropriated Complainant’s goodwill when he registered the domain
name <freddiemac.biz> on
November 7, 2001. Given the global fame
of the FREDDIE MAC mark, the fact that Complainant owns trademark
applications and has a business presence in the countries where Respondent
and/or his associates are located, Respondent’s claim that he is a trademark
consultant, and the fact that Respondent registered the Domain Name with the
intention of selling it by advertising the offer to sell in DirectNIC.com’s
WHOIS database, all make clear that Respondent knew of or should have known of
Complainant’s rights in its FREDDIE MAC mark.
12.
Respondent’s <freddiemac.biz> website is an “under construction” website that
contains no content except the sentences “This site is currently being updated
please check back soon. Thanks.”
13.
Given that Internet users typically associate a domain name comprised of a
trademark with the particular company that produces or offers goods and/or
services under that mark, the public will reasonably expect to find
Complainant’s website located at the domain name <freddiemac.biz>.
By design, Internet users will be undeniably misled by Respondent into
believing that Respondent’s <freddiemac.biz> website is either operated by Complainant or is
operated with Complainant’s permission and authorization.
14. Respondent’s registration and use of the
domain name <freddiemac.biz>
is also likely to confuse and deceive consumers into mistakenly believing that
Respondent and its activities are offered, authorized, or sponsored by
Complainant; or are otherwise connected, associated, or affiliated with
Complainant.
15.
Respondent registered and uses the Domain Name to deprive Complainant of the
Internet traffic rightly intended for Complainant, thereby disrupting
Complainant’s business. Furthermore,
Respondent is interfering with Complainant’s ability to effectively and fully
promote its FREDDIE MAC mark and services on the Internet, and to control the
images and information associated with its trademarks and logos.
16. On February 21, 2002, Complainant sent
Respondent a cease-and-desist letter regarding his infringement of
Complainant’s rights in its FREDDIE MAC mark and requesting the transfer of the
Domain Name. A copy of that letter was
attached as an exhibit.
17.
As reflected on the WHOIS record for the Domain Name, on or about March 4,
2002, Respondent changed the registration record to remove Mr. Khan’s name and
Respondent’s United Arab Emirates address.
18. On March 18, 2002, Respondent replied to
Complainant’s letter stating that his business consisted of web developing, web
hosting, and consulting about trademark and service mark registrations. Respondent denied having knowledge of
Complainant or its FREDDIE MAC mark; claimed that he registered the Domain Name
for his client, “Freddiemac Computers” but provided no documentation that such
a company existed, and claimed that his client owns a registered trademark in
Pakistan, but did not identify that mark or provide a copy of the
registration. A copy of Respondent’s
March 18, 2002 e-mail was attached as an exhibit. Complainant was not able to
locate any evidence that Respondent’s alleged client “Freddiemac Computers”
actually exists.
19. On March 22, 2002, Mr. Khan, who was
previously listed as the administrative contact for the Domain Name, sent an
unsolicited e-mail to Complainant stating that he had heard that Complainant
was “interested” in the Domain Name and asking Complainant to make an offer to
purchase the Domain Name, stating “Get the value of your .BIZ name from your
market and research department a value for an asset for a name of company worth
more than $450,000 millions & net earning is more than 2,500 million.” A copy of Mr. Khan’s March 22, 2002 e-mail
was attached as Exhibit 11.
20. On April 26, 2002, Mr. Khan sent a second
e-mail to Complainant, asking “what do you think about getting back the
‘freddiemac.biz’” and suggesting a purchase price of 5% of Complainant’s 2001
net profit. Mr. Khan’s question
regarding “getting the domain name back” clearly indicates that Respondent
and/or his agent Mr. Khan knew of Complainant’s rights in its FREDDIE MAC mark
when registering the Domain Name and that the Domain Name was registered
expressly for the purpose of selling it to Complainant. A copy of Mr. Khan’s April 26, 2002 e-mail was
attached as Exhibit 12.
21. As evidenced above, Respondent’s
misappropriation of the Domain Name has injured and will continue to
irreparably injure the reputation and hard-earned goodwill of Complainant and
its FREDDIE MAC mark. If Respondent is
allowed to retain ownership of the infringing domain name <freddiemac.biz>, Complainant will be unable to control the
unlimited material and information Respondent can post on a website associated
with that domain name, which consumers will confuse and associate with
Complainant and/or its FREDDIE MAC mark
Respondent Has No Rights or
Legitimate Interests
22. Respondent is not using and has not used or
is not demonstrating and has not demonstrated an intent to use the Domain Name
in connection with a bona fide offering of goods or services as required by
Policy ¶ 4(c)(i).
23. Nor has Respondent satisfied Policy ¶
4(c)(ii), since Respondent is not and never has been commonly known by the
Domain Name. Even assuming that
Respondent’s alleged client “Freddiemac Computers” exists, that would not
demonstrate Respondent’s legitimate interest in the Domain Name. Further, even if Respondent had claimed his
own name was “Freddiemac Computers,” which he did not, the record shows that
Respondent registered the Domain Name solely for its value as derived from
Complainant’s FREDDIE MAC mark.
24. Respondent is not making legitimate
noncommercial or fair use of the Domain Name, without intending to mislead and
divert consumers or to tarnish Complainant’s FREDDIE MAC mark for commercial
gain.
Respondent’s
Bad Faith Under Policy ¶ 4(b)
25.
Respondent’s use and registration of the Domain Name meet the bad faith element
of Policy ¶ 4(b)(i) because Respondent registered the Domain Name primarily to
sell, rent, or otherwise transfer it for valuable consideration in excess of
Respondent’s documented out-of-pocket expenses. As described above, Respondent used his WHOIS registration record
to offer the Domain Name for sale, and also demanded payment from Complainant
in excess of the out-of-pocket expenses paid by Respondent to register the
Domain Name. See Yahoo! Inc. v.
Somsak Sooksripanich, et al., D2000-1461 (WIPO Jan. 29, 2001) (finding bad
faith in the respondent’s offer to sell YAHOO!-formative domain names to the
complainant); see also America Online, Inc. v. QTR Corp., FA
92016 (Nat. Arb. Forum Feb. 4, 2000) (finding bad faith in the respondents’
offer to sell domain name by listing “this domain name is for sale” in WHOIS
directory); see also Robert Ellenbogen v. Mike Pearson, D2000-0001 (WIPO
Feb. 17, 2000) (finding that the respondents’ offer to sell domain name to
anyone interested without limiting price to out-of-pocket expenses indicated
bad faith).
26.
Respondent’s registration and use of the Domain Name meet the bad faith element
set forth in Policy ¶ 4(b)(iii).
Respondent registered and uses the Domain Name to divert Internet
traffic from Complainant and to interfere with Complainant’s business and its
ability to promote its goods and services under its FREDDIE MAC mark. See S.S. Société Générale de Surveillance
S.A. v. Inspectorate, D2000‑0025 (WIPO Mar. 17, 2000) (finding that
respondent’s use of a tombstone, or minimalist website, diverts prospective
customers and constitutes bad faith).
27.
Respondent’s registration and use of the Domain Name meet the bad faith element
set forth in Policy ¶ 4(b)(iv).
Specifically, Respondent’s use of the Domain Name creates a likelihood
of confusion with Complainant’s FREDDIE MAC mark as to the source, sponsorship,
affiliation and endorsement of Respondent’s website.
28. Respondent acted in bad faith because he was
on notice of Complainant’s rights in its FREDDIE MAC mark when he registered
the Domain Name. See Compaq
Information Technologies Group, L.P. v. Dealer Direct, Inc. d/b/a/ Inacom
Information Systems, FA 97062 (Nat. Arb. Forum June 14, 2001) (finding the
respondent registered the domain name in bad faith because it was on notice of
the complainant’s rights); see also Europay International S.A. v. Domaines
Ltd and Cecilia Ng, D2000-0513 (WIPO July 31, 2000) (holding that
respondents must have known they were infringing upon complainant’s
exceptionally well known mark by registering it as a domain name).
29. Respondent’s registration of the Domain Name
with knowledge of Complainant’s FREDDIE MAC mark and his use of the Domain Name
for commercial gain suggests opportunistic bad faith given the widespread use
and fame of Complainant’s FREDDIE MAC mark.
See Yahoo! Inc. v. David Ashby, D2000-0241 (WIPO June 14, 2000)
(finding bad faith where respondent registered the disputed domain name with
knowledge of complainant’s mark and used it to seek commercial gain); see
also The Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17,
2000) (same).
30.
By registering the Domain Name with knowledge of Complainant’s FREDDIE MAC mark
and name, Respondent acted in bad faith by breaching his registration contract
with DirectNIC.com because he falsely represented that his registration of the
Domain Name did not infringe the rights of any third party. This has been held to constitute bad faith
under the Policy. See Google Inc. v.
www.google.com and Jimmy Siavesh Behain, D2000-1240 (WIPO Nov. 9, 2000)
(finding respondent’s false representation to the registrar that its domain
name did not infringe the rights of any third party constituted bad faith); see
also Sleep-Tone Entm’t Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636
(Nat. Arb. Forum Mar. 13, 2000) (same); see also Noodle Time, Inc. v. Max
Marketing, AF-0100 (eResolution Mar. 9,2000) (same).
B. Respondent
Respondent
is in the business of web developing, web hosting and consulting about legal
registration of trademarks in Pakistan, under the name of SRSOFT. Due to the September 11, 2001 events, there
are money transfer and payment problems from Pakistan so he started banking and
making payments from Dubai, UAE, bank accounts like many other Pakistani business
vendors. This is why his business
address was given as in Dubai rather than Pakistan where his actual business
appears to be located.
“My
client started his business last year and I submitted his application for a trademark
in Pakistan. When I applied to register freddiemac.biz, neither I nor my client
[for whom he claims to have registered the domain in his own name, even though
he intended to keep title to it for three years] had heard of Federal Home Loan
Mortgage Corporation. That company is unknown
in Pakistan, because the Federal Home Loan Mortgage Corporation does not exist
in Pakistan, and people there do not know about this company as there is no
business here with the name of Freddiemac or Federal Home Loan Mortgage
Corporation.”
“We
are not a competitor of Complainant nor is the nature of business the same so that
we can attract internet users for commercial gain. Nor is it a misspelling. Further, I didn't acquire the domain
name primarily for the purpose of selling or renting it, as my March 18th’s
e-mail establishes. Also my client’s website and logo is totally different. Finally, the Complainant is doing its
mortgage financing business in the US, while my client is doing its computer
business in Pakistan.”
Furthermore,
due to the recent additions of new gTLDs, Internet users should know the
difference between “.com” “.biz” and “.info,” especially because the
Complainant Federal Home Loan Mortgage uses <freddiemac.com> in all of
its publications and Internet uses. See Car Toys, Inc.,v. Informa Unlimited,
Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000); see also Wasabi Sys.
Inc. v. G-Net Systems, D2002-0421 (WIPO July 19, 2002).
Respondent
does not contest that the disputed domain name resembles the trademark “Freddie
Mac” which is apparently registered to the Complainant in various
jurisdictions. However, as the holder
of a valid trademark in Pakistan, Respondent has rights and legitimate
interests in respect of the disputed domain name that counter those of
Complainant. See Telamon Corp.v.
Telamon Sys., FA 112500 (Nat. Arb. Forum July 1, 2002).
As
evidence of his good faith, Respondent changed the website contents and made
the home page indicate it was down for updating when he found out there was a
dispute, after receiving an e-mail from Federal Home Loan Mortgage on Feb. 21,
2002. This condition is not a bad faith
or evidence of lack of legitimate interests as the Complaint claims. See Wasabi Sys. Inc. v. G-Net Sys.,
D2002-0421 (WIPO July 19, 2002).
“Mr.
Salman A Khan [the original contact point for the domain name owner listed with
the Registrar until March 2002] was working with us as a web administrator till
January 2002.” Due to his intention of selling domains SRS fired him because “he
takes out some of our organizations secrets.” He also changed the information of
a few domains held by SRS. He added “domain for sale” as an organization name
also in e-mail address of *@domainforsale.info, which we changed when we
discovered it.
C. Additional Submissions
Summarizing
Complainant’s Reply to Respondent’s Answer, Complainant argues that Respondent
is trying to claim a legitimate interest and right in the domain name merely
because he is a trademark consultant, doing business under the name SRSOFT, yet
he filed a trademark application for his client, Muhammad Aman, for the
Freddiemac Computers mark in Pakistan in March 2001. Thus, Respondent is not the owner of the mark he relies on for
his authority to register the domain in dispute.
Complainant
points out that Respondent, by his own admission, is not commonly known as
Freddiemac, but SRSOFT. It argues that
the fact someone else has a right in the application for a Pakistani trademark
does not give Respondent, himself, any rights under the Policy. Complainant also points out that the sole
evidence on the issue here is an application for a trademark, not a
registered mark, and that on its face, the application indicates that it is
still subject to review and has not been registered. Thus, it is subject to contest by Complainant or anyone else with
a conflicting right.
Complainant
cites a series of cases for the proposition that mere application for a
trademark does not establish ownership or rights in it, since if that were the
case any cybersquatter could defeat the Policy by merely filing a trademark
application. See Yahoo! Inc. v.
Ashby, D2000-0241 (WIPO June 14, 2000); and other cases cited.
Complainant
argues that Respondent cannot escape the bad faith evidence of the efforts of
Mr. Khan to sell the domain name to Complainant, as Respondent’s
representative, merely by claiming that he was a rogue agent acting without
authority. Respondent, Complainant
claims, provided no evidence of this misconduct beyond such an allegation and
even long after Respondent claims to have fired Mr. Khan, Khan was still
negotiating for Respondent and seeking to sell the domain to Complainant. As evidence of this, Complainant says that
even after the Complaint was sent only to Respondent to his e-mail
address of record, on July 23, 2002, Mr. Khan was still e-mailing Complainant
with solicitations for “a best offer so I can discuss directly with Freddiemac
Computers” the proposed offer to sell it to Complainant.
Complainant
also continues its claim of bad faith registration and use, based on the
worldwide operations and general knowledge of Complainant and its trademarks,
even in Dubai, where Respondent had his banking connections. It also points out that Mr. Khan,
Respondent’s agent argued in his e-mails that the name of Complainant was
extremely valuable, thereby evidencing that he and his principal know of this
entity and were quite familiar with it or its operations. Further, because Complainant has operated a
website at <freddiemac.com> for more than seven years, it also feels that
anyone with a legitimate interest in adopting this name would have been able to
find it in active use with a search engine in a matter of seconds.
Respondent’s
final supplemental filing is a somewhat rambling discussion, highlighted by an
allegation that perhaps Complainant and Mr. Khan have entered into an alliance
or conspiracy to defeat the interests of Respondent in the domain name. He provides no evidence of this, but merely
relies on his continuing assertions that he personally has never made any
effort to sell the domain and that he is just running his business, with the
intention of using this domain for “my clients” for whom he registers domain
names and then turns them over to them after three years, based on contracts
that he has with them. As with his
initial Response, he provides no evidence of the actual existence of the
client, the client’s plan of use, or any evidence that he, himself, has any
rights to the use of the disputed name.
He does offer the Panel, in his final filing, an opportunity to request
copies of the confidential contracts he uses for his business.
FINDINGS
A. The domain name is substantially
identical to Complainant’s registered trademarks.
B.
The Registrant has no rights or legitimate interest in the name used in
the domain, although it is possible (but unlikely in the Panel’s view) that
Registrant’s customer might eventually establish some right in it in Pakistan
as long as no one contests it.
C.
The Registrant registered and is using the disputed domain name
in bad faith, as evidenced by the various items outlined in the Complaint and
discussed below.
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.
Identical and/or Confusingly Similar
Complainant is required under Paragraph
4(a)(i) of the Policy to prove that the domain name is identical or confusingly
similar to a trademark or service mark in which Complainant has rights. Complainant has established its trademark
rights arising from its multiple and multinational trademark registrations and
use of FREDDIE MAC. Respondent
acknowledges and does not contest the existence of Complainant’s trademark
rights or that the domain name in issue is identical to the trademark (stripped
of the TLD). This first point is
therefore uncontested and favors Complainant.
Rights or Legitimate Interests
Respondent acknowledges that the domain name
at issue was registered in his name, and that Salman Khan, c/o
Domainsforsale.info, in Toronto, Canada, was initially designated as the
Contact of Record for the domain owner until early March 2002. Respondent alleges that Mr. Khan was his web
administrator and agent until then, and argues that he was discharged for
misconduct in March. Respondent,
however, never denies that Mr. Khan represented him in his efforts to sell the
domain to Complainant, or that he lacked authority to try to sell the domain
for the true owner, whomever that might be, if Respondent was not really the
owner. Respondent merely conjures up
the concept that perhaps Mr. Khan is in a conspiracy with Complainant to take
the name away. This is not
evidence. What it does accomplish is to
raise serious doubts not only about Respondent’s good faith, but also whether
the alleged business he claims to be working for exists for any purpose other
than to sell the domain name to Complainant.
The essence of Respondent’s position is
that he is a consultant who assists third parties in registering domain names
and trademarks, apparently assists in having their websites hosted, and then
after a three year period transfers the domains to the people with whom he has
contracted. In this case, he relies for
ownership on a Pakistani application for a trademark filed on March 7, 2001 by
a third party named Muhammed Aman, for a logo and mark “Freddiemac Computers.”
This application has not ripened into an actual trademark registration and
states on its face that it is subject to review before issuance of any
registration certificate.
As noted in the recital of the facts and
positions, as part of his defense, Respondent acknowledges that he is not the
intended long-term owner and that the name really will eventually belong to his
client, Mr. Aman, who is the one who has a trademark application pending in
Pakistan for the name “Freddiemac Computers.”
Respondent provides no credible explanation why a Pakistani named
Muhammad Aman would name his business “Freddiemac Computers,” a strange and
unusual name for such a business in any country. Aside from a copy of the
trademark application, Respondent provided this Panel with virtually no
evidence that Mr. Aman actually exists, that Aman is and has been operating a
business under that name, or that there is any contractual or other
relationship between the parties or, if there is, what the basis for it
is. The Panel is not obligated to
accept unsubstantiated statements of a party as conclusive evidence. See Espirito Santo Fin. Group S.A. v.
Colman, D2001-1214 (WIPO Jan. 22, 2002) (refusing to accept Respondent’s
evidence because “it amounts to no more than unsubstantiated assertions”).
Nonetheless, by taking the position that
his rights are derived from a third party’s trademark application, Respondent,
in effect, admits that he has no rights in the name, other than as a temporary
conduit for his client. The developing law of domain name dispute cases
uniformly holds that a Respondent cannot rely on third party ownership of a
name or mark for his registration and use of a domain name. See
Seagate Tech. LLC v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002)
(finding that a Respondent cannot assert the rights of a third party to
demonstrate rights or legitimate interests pursuant to STOP Policy ¶ 4(a)(ii)
when that third party has not formally intervened in the proceeding).
Even if this were not the decisional law,
Paragraph 4(c) of the Policy clearly states in each example of how to prove a
right or legitimate interest that the Respondent must prove one of the
following fact situations, each of which refers specifically to the Respondent
(“YOU”) and not to some third party:
(i) before any notice to you of
the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.
Respondent, here, has not shown that he
can meet any one of these requirements.
Instead he alleges that the mysterious Muhammad Aman has these
rights. This Panel, along with other
Panels, holds that the right or legitimate interest referred to in Paragraph
4(a) must be one held by the Respondent and not some third party not involved
in the proceeding.
Furthermore, as Complainant points out in
the discussion above, the law also firmly holds that even if the Respondent were to have a pending
trademark application pending, that alone does not suffice to prove the
necessary right or legitimate interest in the name. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)
(Intent to Use Application insufficient evidence); see also Pioneer Hi-Bred Int’l, Inc. v. Ingescom and
Samuel Duran, D2001-0202
(WIPO May 22, 2001) (pending applications in another country insufficient
evidence); see also Biogen, Inc. v. SRI Tech Consulting, Inc.,
D2001-0444 (WIPO June 27, 2001) (application filed for arbitrary name for a business,
filed after discussions over sale of the name, insufficient to support any
right in the name).
Finally, as Complainant points out in its
Supplemental filing, even after the Complaint was served on Respondent himself
(and up to four months after he was allegedly discharged) Mr. Khan continued
his vigorous efforts to try to sell the domain for millions of dollars to
Complainant, in e-mails acknowledging the substantial value of the domain
because of the fact Complainant was so well known in the world of finance. Permitting such activity by an agent is
hardly evidence of long standing rights and intentions to use the domain name,
and is also evidence of bad faith registration and use. Notably, Respondent never disclaimed or
objected to the activities of Mr. Khan until Respondent’s filings in this case.
Accordingly, the Panel finds that
Complainant has established that Respondent has no right or legitimate interest
in the domain name at issue, and that Respondent has failed to establish a
believable defense on this issue.
Registration and Use in Bad Faith
Given
the clear establishment that Respondent, himself, has no right or legitimate
interest in the domain name, it almost
per se establishes that he registered and used it in bad faith. However, the Panel believes the situation
goes beyond that because of the evidence Complainant produced of obvious
efforts from the very beginning of the registration to sell the domain to the
trademark owner. The Panel took the
unusual step of including, at length, the highly detailed factual allegations
by the Complainant and of the Respondent because it felt that this evidence
would eliminate here the necessity to repeat those facts in this portion of the
decision.
The
mere fact that the Contact person, Mr. Khan, had his address at
Domainsforsale.info strongly suggests that Respondent intended from the outset
to sell it. This fact, combined with
the numerous and clumsy efforts by Mr. Khan to solicit a purchase offer from Complainant,
which efforts continued even after the notification to Respondent of this
proceeding, establishes a clear and convincing pattern of bad faith
registration and bad faith use of the domain name by Respondent. Little more need be said, as the facts do
speak for themselves in this case.
Even
recognizing Respondent’s understandable difficulties in dealing with the
English language in what is a multinational legal proceeding, this Panel is
nonetheless convinced that on the facts set out above, there can be no question
that Respondent was not acting in good faith when he registered as a domain
name a unique name or mark that Complainant was able to register as a trademark
in nearly thirty countries. This
conclusion is further supported by the fact that the name is a unique, fanciful
term devised by the financial industry to describe one of the largest and most
important U.S. home financing organizations.
Its name is neither generic, geographic, or common – it is an unusual
term for an unusual and well-known organization. It stretches credulity to believe that a computer store in
Pakistan arbitrarily chose to use this name for its business and that
Respondent just happened to register the term for the domain name. If there were any evidence that the store-owner
selected it and the Panel were given some reason for this step, one might give
it more credence, but here the name was obviously selected by one who, by his
own admission, is a “trademark consultant” who must have known of its
significant value, as touted by his own agent, Mr. Khan.
The
Panel, therefore, rules that Complainant has established the requisite bad
faith registration and use of the domain by Respondent and that Respondent has
failed to establish any credible evidence of the defenses authorized by the
Policy as described above.
DECISION
The Panel concludes that Complainant has
proven all three required points under Paragraph 4(a) of the Policy; that
Respondent has established none of the defenses available; and that the domain
name <freddiemac.biz> shall be
transferred forthwith to Complainant under the process established in
the Policy and accompanying rules.
G. Gervaise Davis III, Esq., Panelist
Dated: September 19, 2002
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page