DECISION
IndyMac Bank F.S.B. v. Bernard Fristch
a/k/a FIFC SA
Claim Number: FA0211000133762
PARTIES
Complainant is IndyMac Bank F.S.B., Pasadena, CA, USA (“Complainant”) represented
by B. Brett Heavner,
of Finnegan Henderson Farabow
Garrett & Dunner L.L.P.
Respondent is Bernard Fritstch a/k/a FIFC SA, Harj, ESTONIA (“Respondent”)
represented by Erik Simons.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <loanworks.net>, registered with Tucows.
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.
Honorable Paul A. Dorf (Ret.) as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on November 20, 2002;
the Forum received a hard copy of the Complaint on November 21, 2002.
On November 21, 2002, Tucows confirmed by
e-mail to the Forum that the domain name <loanworks.net>
is registered with Tucows and that the Respondent is the current registrant of
the name. Tucows has verified that
Respondent is bound by the Tucows 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 November 22, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of December 12, 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@loanworks.net by e-mail.
A timely Response was received and
determined to be complete on December 12, 2002.
Complainant’s additional submissions were
received on December 17, 2002.
Respondent’s additional submissions were received on December 23, 2002.
On December 27, 2002, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
RELIEF
SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Complainant contends that the domain name
at issue fully incorporates and is confusingly similar to Complainant’s famous
registered marks; that Respondent does not have any rights or a legitimate
interest in the domain name at issue; and that Respondent registered and is
using the domain name at issue in bad faith.
B. Respondent
Respondent contends that the domain name
at issue consists of generic terms; that Complainant’s mark was not known to
any representatives or officers of Respondent prior to registration of the
domain name at issue; and that the domain name at issue was registered in good
faith.
C. Additional Submissions
Complainant’s Additional Submission
reaffirms its original contentions as outlined above. Further, Complainant offers rebuttal arguments as to Respondent’s
representation that Respondent has no history of registering trademark-related
domain names in bad faith. Complainant
also offers additional evidence to show that Complainant’s rights in the
trademark are in full force and effect.
Respondent’s Additional Submission offers
rebuttal arguments to Complainant’s allegations of cybersquatting, its rights
to the related trademark, and that it has not registered the domain name at
issue in bad faith.
FINDINGS
Complainant is a federally chartered
savings bank based in Pasadena, California, and is a wholly owned subsidiary of
IndyMac Bancorp, Inc., a public company traded on the New York Stock
Exchange. Complainant states it is one
of the leading mortgage lenders in the U.S.
Complainant states it is a
technology-based mortgage banker offering multi-channel distribution of its
mortgage products and services through a network of mortgage brokers, bankers
and community financial institutions, and also offers programs directly to
consumers and through realtors and home builders. In addition to these services, Complainant offers web-enhanced
banking services, and Complainant’s Internet business has been substantial,
earning it a number two rating in overall Internet mortgage websites by Gomez,
the Internet quality measurement firm.
Complainant has used the LOANWORKS marks since 1997, and in April 2000 established a separate division called Loan Works for its Business-to-Realtor services. Under its LOANWORKS marks, Complainant provides online mortgage application services and showcases these services at its website located at <loanworks.com>.
Complainant is the owner of several
trademark registrations, including LOANWORKS, filed February 19, 1997, issued
April 13, 1999; the stylized mark LOANWORKS, filed June 9, 1997, issued April
13, 1999, and the mark LOANWORKS and Design, filed July 17, 1997, issued April
13, 1999. These three marks cover
services in International Class 36 (financial services, namely, mortgage
lending and banking). Complainant also
holds a trademark registration for LOANWORKS.COM, filed May 21, 1999, issued
April 11, 2000, covering services in International Class 36 (financial
services, namely mortgage lending and banking services available through a
global computer network).
Complainant also owns the domain name
registration for <loanworks.com>, registered on April 2, 1997.
Complainant has established trademark and
common law rights in the LOANWORKS marks.
Respondent is a Latvian company providing
consulting and fulfillment services.
Respondent uses advanced software to identify domains, which are
available and contain keywords known to be highly searched words on search
engines. Respondent subsequently registers these domains for use. Respondent owns and operates over 500
additional mortgage-related websites, all of which contain at least in part,
terms relating to the lending industry.
These affiliate sites direct leads to mortgage companies.
Respondent’s Director, Erik Simons, has a
history of cybersquatting using famous and federally registered
trademarks.
The domain name at issue was registered
on July 10, 2002 at the request of an officer of Netfisher, via a registration
service provider, Peter Okilo, and then updated to the correct holding address
for Respondent.
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.
The domain name at issue is identical to
Complainant’s famous mark, with the addition of a generic top-level
domain. See Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum
Nov. 6, 2000) (finding that the domain name is identical to Complainant’s
PRUDENTIAL ONLINE trademark…also the root of the domain name, namely the word
"Prudential," is identical to Complainant’s mark…thus, the domain
name in its entirety is confusingly similar to Complainant’s family of marks).
Respondent has not provided any evidence
that it has or intends to use the domain name at issue for a bona fide offering of goods or services
or in connection with a noncommercial or fair use of the domain name. The domain name at issue, when accessed,
appears to resolve to a page containing a mortgage calculator and links to
other information on mortgage services.
Further, Respondent has provided no evidence that it has been commonly
known by the domain name at issue. See
Sears, Roebuck and Co. v. Hanna Law Office, D2000-0669 (WIPO Sept. 8, 2000)
(finding that Respondent has no rights in the domain name because (1)
Respondent did not use the domain name in connection with a bona fide offering
of goods and services, (2) Respondent was not commonly known by the mark, and
(3) Respondent was not using the domain name in connection with a noncommercial
purpose).
Registration and Use in Bad Faith
Respondent has demonstrated a pattern of
conduct of registering trademark-related domain names. See
Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17,
2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering
multiple domain names that infringe upon others’ famous and registered
trademarks).
Respondent appears to have used false
and/or incorrect contact information when registering the domain name at issue.
See Quixtar Inv., Inc. v. Smithberger
& QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that the
residual bases provided by the preamble of Policy paragraph 4(b), includes a
respondent’s submission of false or misleading contact information in connection
with registration of a domain name).
Respondent reveals in its Response search
engine links, which a simple Internet search would have revealed Complainant’s
famous marks. Each of the four search
links provided by Respondent lists Complainant’s website located at
<loanworks.com> as the first search result. As “.com” domain names are the most popular and have the largest
number of registrations, it would appear that Respondent would have seen
Complainant’s registration and use of the trademarks in a corresponding domain
name prior to its registration of the domain name at issue. See
Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000)
(holding that Respondent should have known of Complainant’s marks at the time
of registration given the widespread use and fame of Complainant’s DEUTSCHE
BANK mark).
DECISION
As all three elements required by the
ICANN Policy have been satisfied, it is the decision of this Panel that the
requested relief be GRANTED.
Accordingly, for all of the foregoing reasons, it is ordered that the
domain name <loanworks.net> be TRANSFERRED from Respondent
to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: January 14, 2003
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