Diversified Mortgage, Inc. v. World
Financial Partners a/k/a Bill Trudelle
Claim Number: FA0208000118308
PARTIES
Complainant
is Diversified Mortgage, Inc.,
Clearwater, FL (“Complainant”) represented by Anthony G. Woodward.
Respondent is World Financial
Partners a/k/a Bill Trudelle, Tampa, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <diversifiedmortgage.com>,
registered with Register.com.
PANEL
The
undersigned certifies that he and the other panelists have acted independently
and impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Louis
E. Condon as Panel Chair.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 16, 2002; the Forum received a hard copy of the
Complaint on August 19, 2002.
On
August 16, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <diversifiedmortgage.com>
is registered with Register.com and that the Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.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
September 4, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 24, 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@diversifiedmortgage.com
by e-mail.
A
timely Response was received and determined to be complete on September 24,
2002.
Neither
party filed any supplemental pleadings.
On October 14, 2002, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the Forum appointed Judge Louis E.
Condon, Panel Chair, and Judge John J. Upchurch and G. Gervaise Davis III, Esq. as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is a business entity organized under Florida law as a corporation licensed to
do business under the names Diversified Mortgage, Inc. and Diversified
Mortgage. Accordingly, Complainant has been and is doing business within
Florida since May 25, 1990. In 1996, Complainant registered the fictitious name
“Diversified Mortgage” with the State of Florida. Complainant claims it has
common law rights in the “Diversified Mortgage” mark contained within the
domain name registered by Respondent. Complainant registered the domain name <diversifiedmortgage.com> on
November 17, 1996 and had been using that domain name until the occasion of the
facts giving rise to this dispute. Complainant asserts it is axiomatic that a
reasonable Internet user would assume that the domain name <diversifiedmortgage.com> is associated with Complainant.
Respondent,
Bill A Trudelle, was employed by Complainant as a mortgage loan officer. As
such, Complainant alleges that Respondent was familiar with Complainant’s
claimed trademark and the use of its domain name. On or about August 27, 1999,
Respondent was terminated from his employment with Complainant.
On
or about December 30, 2001, Complainant received a “Deactivation Notice” of its
<diversifiedmortgage.com>
domain name from VeriSign on behalf of the Registrar. Complainant says it
intended to send in payment extending its registration as it had done in the
past. However, Complainant alleges, due to a clerical error the payment was not
sent and the registration was terminated on March 26, 2002. Complainant states it did not notice this
“technicality” until June, 2002, when it discovered that the domain name no
longer worked and that the domain name had been purchased by Respondent on June
5, 2002.
Meanwhile,
in May 2001 Complainant’s principal instigated divorce proceedings against his
wife who he says was a friend of Respondent and familiar with Complainant’s
business operations and the use of the domain name. Complainant alleges that
Respondent’s acquisition of the domain name was part of a scheme between his
wife and Respondent to harm Complainant’s business. As proof, Complainant
alleges it received a phone call from a warehouse lender about a client who in
fact was not a client of Complainant. Allegedly, the warehouse lender explained
that it assumed the “client” was dealing with Complainant because the warehouse
lender was given the site name “diversefiedmortgage.com”; and, further, that
the client mentioned the principal’s wife as the point of contact.
Additionally, Complainant offered a copy of what was purported to be his
estranged wife’s business card using the disputed domain name.
Complainant acknowledges that Respondent
has not contacted him in reference to sale of its rights in the domain name.
Nor does Complainant know of Respondent attempting to sell the domain name
registration to anyone else.
B.
Respondent
Respondent
claims the domain name <diversifiedmortgage.com>
is a generic descriptive term, not registered or protected by a federal or
state trademark. Further, “the term ‘diversified mortgage’ is self-laudatory
and that the trademark board has ruled that such terms are mere ‘trade puffery’
and “should be freely available to all competitors in any given field to refer
to their products or services”.
On
the issue of a common law trademark, Respondent asserts there are several
unrelated mortgage companies operating in the state of Florida and/or
nationwide using the generic term “diversified mortgage”. Further, Respondent
notes that Complainant’s license to do business as “Diversified Mortgage” is
only for Pinellas County. Respondent says Complainant has promoted the company
in Pinellas county and online for several years as “DMmortgage.com”.
Respondent
states that an Internet search for the term “diversified mortgage” shows that
there are thousands of mortgage companies either operating under and/or using
this generic term or a close variation thereof.
Complainant
addressed correspondence to Respondent at Respondent’s mortgage company,
USHomeLoan.com, which is a licensed correspondent lender in the state of
Florida. USHomeLoan.com offers diversified mortgage selections of various
mortgage products. Respondent has provided theses services to the general
public since December of 1989. All of the public information provided regarding
<diversifiedmortgage.com> or World Financial Partners Inc. used
Respondent’s home address rather than Respondent’s mortgage company address
where the correspondence was sent.
Respondent
alleges he has been originating various residential mortgage product lines to
the general public as a professional mortgage originator since December 1989.
Over the years Respondent says it was it was common practice for him to collect
generic, un-trademark-able Internet domain names. Respondent’s first domain
name acquisition was <financialrealestate.com> in August of 1996. Respondent states
that World Financial Partners is a marketing company for the real estate and
finance industries that has been operating in excess of two years. At present,
Respondent says he has 36 domain names that are used in compliance with UDRP
Policy to generate search engine revenue as an online marketing company.
Respondent acquired the disputed domain name <diversifiedmortgage.com> for $2,688.00 plus transfer and registration fees of approximately
$200.00. It, along with Respondent’s subsequently acquired domain name, <maxfinance.net> was added to
his World Financial Partners portfolio. Respondent denies any claim by
Complainant that he has engaged in cyber-squatting.
Respondent
claims the domain name in dispute was abandoned by Complainant who had every
opportunity to keep or reclaim the domain name in that “the Complainant opted
to ignore at least eight (probably more) notifications both postal and
electronic”.
Respondent
says Complainant had from January 1, 2002 through February 19, 2002, to renew
the domain name or could re-buy the domain name registration while it was
defunct and available to the general public from February 19, 2002 through
April 11, 2002. Respondent questions Complainant’s claim that <diversifiedmortgage.com> was the company’s primary source of business
yet Complainant was unaware of the lack of ownership and functionality until
June 5, 2002.
Respondent
admits that he and his wife are friends of the Complainant’s principal’s wife
but states that she has never been employed by Respondent, nor has she ever
represented him, World Financial Partners Inc. or USHomeLoan.com, Inc. in any
way. Further, Respondent says that the principal’s wife denies attending the
mortgage function where she allegedly gave someone a business card with the
disputed domain name showing that she was employed by Respondent. Further,
Respondent says she denies attending any function presented by the mortgage
industry after the filing of divorce by her husband. Respondent says his
parting from Diversified Mortgage, Inc. in February. 1999, was on an amicable
basis. After receipt of the termination letter, Respondent says he was an
invited guest in Complainant’s (principal) home on many occasions and
socialized with Complainant (principal) both with and without their wives.
Respondent alleges that this dispute was filed solely for reasons relating to
the divorce proceeding.
FINDINGS
(1) The domain name is substantially
identical and confusingly similar with the trade name of Complainant; however, Complainant has
provided no evidence that his trade name is a registered or common law
trademark, as required by the UDRP.
(2) Respondent has no legitimate interest in
or right to use the trade name of Complainant and,
(3) Complainant has established that the
domain name was registered and is being used 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.
Based
upon the Complaint and the Response, it is clear that the domain name is
essentially identical to the name of Complainant's business, however,
Complainant does not allege, and has not proven, that this is a registered or
common law trademark. In fact it is merely a trade name, and a very common one
at that (there being some 97,700 references to this name on the Google.com
<google.com> search engine, for example). The name
essentially describes the nature of Complainant's business, a type of business
shared by numerous other mortgage companies, apparently including that of
Respondent.
With
respect to Respondent’s legitimate interest or right to use the name, his explanation seems flimsy at best - which
is to the effect that he collects useful names for possible use in this
business. This certainly does not give him the right to use it, if it
were a trademark of someone else, and he provides no other reason why he
registered it or uses it.
Similarly,
Respondent's good faith purpose for registering and using the name is also
questionable, as are the circumstances under which business cards of
Complainant's estranged wife were distributed, using this name, thereby
creating confusion as to which business she was connected. It therefore cannot
be said unequivocally that Respondent either registered or used it in good
faith.
DECISION
Ordinarily, the Panel would be
constrained to find for Complainant in a case like this, since Complainant
almost meets all the standards required; however there is one fatal flaw in his
case here, the fact that the domain name and the business name is not a
registered or even a common law trademark, and is in fact so descriptive that
it is unlikely anyone would be able to obtain a trademark registration on these
two words standing alone, other than perhaps as a logo. Complainant has
not met this key standard necessary to prevail.
The reports and descriptions of the purpose of the UDRP make clear that these
rules are intended only to protect trademarks, registered or common law, and
not mere trade names, due to the fact that trade names are not universally
protected as are trademarks. See WIPO Final Report of April 30, 1999 on
The Management of Internet Names and Addresses: Intellectual Property Issues, ¶
167:
The Scope of the Administrative Procedure
¶ 167. The
second limitation would define abusive registration by reference only to
trademarks and service marks. Thus,
registrations that violate trade names, geographical indications or personality
rights would not be considered to fall within the definition of abusive
registration for the purposes of the administrative procedure. Those in favor of this form of limitation
pointed out that the violation of trademarks (and service marks) was the most
common form of abuse and that the law with respect to trade names, geographical
indications and personality rights is less evenly harmonized throughout the
world, although international norms do exist requiring the protection of trade
names and geographical indications. See Rundstedt & Partner GmbH v. Koch,
D2001-1138 (WIPO Nov. 7, 2001) (The Domain Name at issue is
<rundstedt.com>. “Trade names and personal names are not protected under
the Policy (it is under discussion, whether they may be submitted to the Policy
at a later date, however, they are clearly not covered by the Policy at
present”); see also Servs. ("ICSTIS") v. Devaney, of
Int’l Commercial Software Training and The Indep. Comm. for the Supervision of
Standards of Tel. Info. IT Support, D2001-0607 (WIPO Oct. 31, 2001) (The
domain names at issue are <icstis.com> and <icstis.net>,
<icstis.org>):
[M]ost
cases of unregistered rights relate to rights of individuals in their personal
name. One of the few exceptions is in the National Arbitration Forum case File
No. [FA 93633], Cedar Trade Assocs. Inc. v. Ricks, relating to <buypc.com>. However, that decision does not
give any basis for the conclusion that Complainant had rights to the name in
question and refers to the use of the name as a trade name when trade names are not covered by the
Policy.
Based on this intent, the
UDRP panels and decisions have almost universally denied protection to a trade
name used as a domain name, which this Panel concludes it is bound under
existing precedent to do here. Accordingly, we decline to order the transfer of
the domain to Complainant. This does not necessarily mean that
Complainant is without a legal remedy, which he may have under existing state
and federal unfair trade practices rules and laws, but this Panel has no
authority to resort to such causes of action since it is a specialized
arbitration tribunal that draws its authority from the UDRP and not general
common law, unless it relates to trademark issues.
The Panel, therefore, DENIES the
requested transfer and directs that the Registrar take no action in that regard
Hon. Louis E. Condon, Panel Chair
Hon. John J. Upchurch, Panelist
G. Gervaise Davis III, Esq., Panelist
Dated: October 30, 2002
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