Countrywide Financial Corporation v. Tan Kim Fong
Claim Number: FA0804001175424
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance
G. Johnson, of Roylance, Abrams, Berdo & Goodman
L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <countrywidehomeloan.com>, registered with Dotregistrar.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 7, 2008.
On April 7, 2008, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <countrywidehomeloan.com> domain name is registered with Dotregistrar and that Respondent is the current registrant of the name. Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 April
8, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 28, 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@countrywidehomeloan.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a leading financial services company in the
Complainant owns numerous mark registrations with the United States Patent and Trademark Office (“USPTO”), including one for the COUNTRYWIDE service mark (Reg. No. 1,744,794, issued January 5, 1993).
Respondent registered the <countrywidehomeloan.com> domain name on May 6, 2002, and is currently using that domain name to display a pop-up advertisement for an online casino, and, ultimately, to resolve to a web page featuring links to home mortgage and finance services in direct competition with the business of Complainant.
Respondent is not commonly known by the disputed <countrywidehomeloan.com> domain name.
Respondent’s <countrywidehomeloan.com> domain name is confusingly similar to Complainant’s COUNTRYWIDE mark.
Respondent does not have any rights or legitimate interests in the domain name <countrywidehomeloan.com>.
Respondent registered and uses the disputed <countrywidehomeloan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 draw such inferences it 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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant alleges rights to the COUNTRYWIDE mark based on its USPTO service mark registration. Registration of a mark with an appropriate government authority, such as the USPTO, confers on a complainant rights in that mark for purposes of the Policy. Therefore, Complainant has established rights to the COUNTRYWIDE 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Complainant also alleges that Respondent’s <countrywidehomeloan.com> domain name is confusingly similar to its COUNTRYWIDE mark. Respondent does not deny this allegation, nor could it, given that the disputed domain name contains Complainant’s entire mark, merely adding the generic terms “home” and “loan.” The addition of these generic terms, which describe Complainant’s business, does not adequately distinguish the disputed domain name from Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity or confusing similarity for purposes of the
Policy despite the addition of other words to such marks.
See also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business).
The same is true with regard to the addition of the generic top-level domain (“gTLD”) “.com” to the disputed domain name. 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 . . . .
Therefore, we conclude that Respondent’s domain name is confusingly similar to Complainant’s COUNTRYWIDE service mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in its
<countrywidehomeloan.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it has rights or legitimate interests in its domain name pursuant to Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with a respondent to demonstrate that it has rights to or legitimate interests in a contested domain name).
By the allegations
in the Complaint, Complainant has established a prima facie case under Policy ¶ 4(a)(ii). And, because Respondent failed to respond to
the Complainant, we may presume that Respondent lacks the necessary rights and
legitimate interests. See 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.”
However, we will
examine the record to determine if there is any basis for concluding that
Respondent has such rights or interests pursuant to Policy ¶ 4(c).
We begin by observing that Complainant alleges that Respondent is not commonly known by the <countrywidehomeloan.com> domain name. Respondent does not contest this assertion, and the pertinent WHOIS information identifies Respondent as “Tan Kim Fong.” There being no other evidence suggesting that Respondent is commonly known by the disputed domain name, we conclude that Respondent lacks rights to and legitimate interests in the <countrywidehomeloan.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when that respondent is not known by the mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
We also note that Complainant alleges, and Respondent does not deny, that Respondent lacks right or legitimate interests in the <countrywidehomeloan.com> domain name because the disputed domain name is not used in connection with a legitimate noncommercial or fair use, and does not provide a bona fide offering of goods or services, in that Respondent uses the domain name to display a pop-up advertisement for a virtual casino and ultimately to resolve to a website featuring links to Complainant’s competitors. We may presume that Respondent receives click-through fees for each redirected Internet user. Therefore, we conclude that Respondent’s registration and use of the <countrywidehomeloan.com> domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because that respondent used the names to divert Internet users to a website that offered services that competed with those offered by a complainant under its marks); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user); further see also Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interests where a respondent used a disputed domain name to redirect Internet users to an online casino).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent’s
<countrywidehomeloan.com> domain name is confusingly similar to
Complainant’s COUNTRYWIDE mark. This
confusing similarity creates a likelihood of confusion regarding Complainant’s
possible association with or sponsorship of the web site to which the disputed
domain name resolves. And, on the record
before us, we have presumed that Respondent receives referral fees for each
redirected Internet user. Accordingly, the
registration and use of Respondent’s <countrywidehomeloan.com>
domain name was done in bad faith pursuant to Policy ¶
4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun
Shing, FA 187431 (Nat. Arb. Forum Oct. 6,
2003): “Respondent has attempted to commercially benefit from the
misleading <qwestwirless.com> domain name by linking the domain name to
adult oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).” See also Am. Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that a respondent fell within Policy ¶ 4(b)(iv)
by displaying a complainant’s mark on its website and offering services similar
to those offered by that complainant); further see ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where a respondent linked a domain name to another domain
name, <iwin.com>, presumably receiving a portion of the advertising
revenue from the site by directing Internet traffic there, thus using a domain
name to attract Internet users for commercial gain).
The Panel thus finds that Policy ¶
4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <countrywidehomeloan.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 7, 2008
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