OneWest Bank, FSB v. Dave and Michelle Clements d/b/a One West Real Estate
Claim Number: FA1205001445278
Complainant is OneWest Bank, FSB (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Dave and Michelle Clements d/b/a One West Real Estate (“Respondent”), represented by Brian A. Hall of Traverse Legal, PLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onewestrealestate.com>, <onewestwyoming.com>, <onewestwyominghomes.com>, and <onewestwyomingrealestate.com>, registered with Network Solutions, Llc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Charles Kuechenmeister and Michael A. Albert as Panelists; Richard W. Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2012; the National Arbitration Forum received payment on May 22, 2012.
On May 31, 2012, Network Solutions, Llc. confirmed by e-mail to the National Arbitration Forum that the <onewestrealestate.com>, <onewestwyoming.com>, <onewestwyominghomes.com>, and <onewestwyomingrealestate.com> domain names are registered with Network Solutions, Llc. and that Respondent is the current registrant of the names. Network Solutions, Llc. has verified that Respondent is bound by the Network Solutions, Llc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@onewestrealestate.com, postmaster@onewestwyoming.com, postmaster@onewestwyominghomes.com, and postmaster@onewestwyomingrealestate.com. Also on May 31, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 19, 2012.
An Additional Submission from the Complainant was received on June 25, 2012. This Additional Submission was deemed compliant with Supplemental Rule 7.
On June 29, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Honorable Charles Kuechenmeister (Ret.) and Michael A. Albert as Panelists; and Richard W. Hill as Presiding Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that it is an FDIC-insured bank focused on delivering personalized, relationship-based banking to its customers. With approximately $16 billion in deposits and $26 billion in total assets, it offers a wide array of banking products and services. It services more than $150,000,000,000 of mortgage loans on behalf of third parties.
Complainant states that it owns the registered trademark ONEWEST and has used it at least as early as March 2009 to identify its financial services and products. It extensively and widely advertises and promotes its services and products under the that mark and spends significant amounts of money to advertise and promote its services and products under the mark. Its business activities are also publicized in numerous media outlets across the United States. Those business activities are conducted throughout the U.S., including in Wyoming where Respondent is located. Complainant has banking customers in all 50 states and the District of Columbia, as well as 78 retail branches in Southern California. It also has active mortgage loans in states across the U.S. including Wyoming. It promotes its products and services through the web sites <onewestbank.com> and <owb.com>.
Further, says Complainant, it has numerous foreclosed properties offered for sale, and works with real estate agents, brokers, and attorneys on sale transactions related to such properties. It also maintains a web page to advertise such properties to real estate professionals and consumers who may be interested in purchasing such properties.
According to Complainant, Respondent registered one of the disputed domain names in September 2011, the others in June and July 2011. Respondent registered the disputed domain names well after Complainant began using its marks, after they were registered, and after they had become well-known.
Complainant alleges that Respondent offers real estate brokerage services and intends to use the disputed domain names in connection with its real estate business.
Further, says Complainant, Respondent has used one of the disputed domain names for a commercial pay-per-click website provided by the registrar that featured sponsored-link advertisements for various commercial websites. Respondent subsequently removed the pay-per-click links and “under construction” notices are currently displayed at the websites associated with the disputed domain names.
Complainant states that the disputed domain names are confusingly similar to Complainant’s mark because they are comprised of the mark in its entirety and descriptive terms such as “real estate” or “Wyoming” or “homes”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent’s use of trademark-related domain names to advertise and/or offer closely related and/or complementary service is not a bona fide offering of services or products or legitimate noncommercial or fair use under the UDRP. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent is not and has not been commonly known by the disputed domain names. In particular, Respondent’s use of the business name “One West Real Estate” does not demonstrate any legitimate interest of Respondent in the disputed domain names because Respondent cannot justify its misappropriation of a trademark in a domain name merely through use of a business name. Complainant cites UDRP precedents to support its position.
And Complainant alleges that Respondent’s use of one of the disputed domain names for a pay-per-click website with sponsored-link advertisements for various commercial websites does not demonstrate any legitimate interest of Respondent in that domain name.
Complainant states that Respondent’s registration and intended use of the disputed domain names constitutes bad faith under Section 4(b)(iv) of the UDRP because Respondent registered and intends to use the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s websites and/or activities. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent’s use of one of the disputed domain names for a pay-per-click website is further evidence of Respondent’s bad faith under Section 4(b)(iv). Complainant cites UDRP precedents to support its position.
And, according to Complainant, Respondent’s registration and intended use of the disputed domain names constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent disrupts Complainant’s business by intending to use the disputed domain names for websites promoting and offering Respondent’s services in the field of real estate, which relates to the Complainant’s business. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent’s registration of the disputed domain names constitutes bad faith under Section 4(b)(ii) because the Respondent’s registration of the four domain names constitutes a bad-faith pattern of registering trademark-related domain names. Complainant cites UDRP precedents to support its position.
Complainant states that, given Complainant’s federal registrations of its mark and the fame of that mark in the United States where Respondent is located, and given that Complainant and Respondent are involved in the same field of real estate, Respondent undoubtedly knew of Complainant’s mark prior to registering the disputed domain names. By registering the disputed domain names with knowledge of the Complainant’s rights in its mark the Respondent acted in bad faith.
B. Respondent
Respondent alleges that it has rights and legitimate interests in the disputed domain names because: (1) it incorporated in Wyoming and used the name One West Real Estate in connection with its real estate brokerage since September 2011 and prior to any notice from Complainant; and (2) it has made demonstrable preparations to use the disputed domain names, including having retained a web design company, advertised under the <onewestrealestate.com> domain name, and having developed content and website functionality that is similar to that of its current website, available at <wyo4sale.com>.
Further, says Respondent, it has neither registered nor used the disputed domain names in bad faith. It never offered to sell the disputed domain names to Complainant, who is a savings bank in California. Instead, Respondent has invested in the disputed domain names for its own Wyoming-based real estate brokerage, having chosen the name One West Real Estate after brainstorming names with agents of another Wyoming-based real estate brokerage, rather than in an any effort to prevent Complainant, who operates at <owb.com>, from owning the disputed domain names.
According to Respondent, it registered the disputed domain names because they reflected its trade name and business type and location. Respondent’s trade name has been incorporated in Wyoming, it secured the required real estate licenses from the Wyoming Real Estate Commission, and used it extensively in advertising and promotional material and signage. Respondent has demonstrably planned to launch a new and improved website for their real estate brokerage, One West Real Estate. Absent an inadvertent, short-lived, display of pay-per-click advertisements automatically populated by its Registrar, that did not contain links competitive with Complainant but rather related to real estate, Respondent has only displayed an “under construction” message as it awaits its website design company’s completion of the final website.
Respondent states that Complainant is a bank, not a real estate brokerage or agent (Realtor), like Respondent. Complainant does not represent buyers and sellers of real estate property, and instead it refers them to actual licensed real estate agents.
Respondent alleges that it is in the business of real estate brokerage in Laramie and Cheyenne, Wyoming, and that its principals are both licensed real estate agents who formed Respondent in September 2011 after deciding to leave their long-time brokerage. When deciding to leave their previous brokerage, the principals had to select a name for their new brokerage. In doing so, they solicited the assistance and guidance of a many friends and colleagues. The One West Real Estate name was selected after being recommended by one of those colleagues. Respondent then registered various domain names that included its business name as it was to be used in their offering of real estate brokerage services in Wyoming.
Respondent states that it has already made significant use of the One West Real Estate name, including on office and property signage, business cards, and advertising; and it has also made demonstrable preparations to use the disputed domain names. Respondent offers evidence to support its allegations.
According to Respondent, it was unaware that pay-per-click advertisement links were being displayed on the disputed domain names until having received a letter from Complainant. At that time, Respondent took steps to ensure that no pay-per-click links appeared. Respondent never received any revenue from the pay-per-click links.
Respondent states that the Complaint should be dismissed because Complainant is attempting to resolve a trademark claim rather than merely a domain name cybersquatting claim. It cites UDRP precedents to support its position.
Respondent goes on to present in more detail the arguments summarized above, and it provides evidence and cites UDRP precedents to support its positions. It distinguishes the present case from some of the UDRP precedents cited by Complainant.
With respect to Complainant’s allegation that it engaged in a bad-faith pattern of registering trademark-related domain names, Respondent states that UDRP panels as a whole have consistently found a pattern to mean more than one trademark owner and a handful of domain names. It cites UDRP precedents to support its position.
Respondent further requests that the Panel issue a finding of reverse domain hijacking pursuant to Paragraph 15(e) of the Rules. The Complaint lacks the evidence necessary to justify such a filing and meets the definition of reverse domain hijacking, namely “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
C. Additional Submissions
In its Additional Submission, Complainant submits that there is no dispute regarding certain facts, namely that the disputed domain names are confusingly similar to the Complainant’s mark, that Respondent had knowledge of that mark prior to registering the disputed domain names, and that Respondent intends to use the disputed domain names for a commercial website advertising its real estate brokerage services in Wyoming.
According to Complainant, the fact that Respondent registered and used the trade name One West Real Estate prior to receiving notice of the Complaint is irrelevant. Under Respondent’s flawed interpretation of the UDRP, a registrant can avoid a successful UDRP challenge simply by registering a trade name immediately before or shortly after registering the domain name, i.e., before the trademark owner could possibly even know about the domain name. If Respondent’s interpretation of the UDRP were followed, every UDRP proceeding involving a respondent who registered a trade name before notice of the dispute would be resolved in favor of the respondent even if the respondent registered and used the domain name in bad faith, which is a clearly absurd result. Respondent cites a U.S. court judgment to support this argument.
Further, says Complainant, Respondent cannot be “commonly known as” the disputed domain names under UDRP Section 4(c)(ii) unless its use of the name occurred prior to its registration of the domain names. In the present case, Respondent registered and used the trade name months after it registered three of the disputed domain names and only three days before it registered the fourth domain name. Complainant cites UDRP precedent to support its position.
According to Complainant, Respondent’s subsequent and continued investment in the disputed domain names via its business activities, i.e. its advertising, licenses, and contracts, likewise are insufficient to demonstrate a legitimate interest in the domain names. Respondent’s investments do not convert its infringement into a legitimate right to the disputed domain names or bona fide offering, regardless of the amount of Respondent’s investments or the length of time involved, because Respondent’s investments were made concurrent with its violation of Complainant’s rights in its mark.
Complainant presses its case regarding the allegation of bad faith registration and use of the disputed domain names.
Complainant asks the Panel to deny Respondent’s request for a finding of reverse domain-name hijacking.
Complainant owns the registered trademark ONEWEST, with rights dating back to March 2009.
The disputed domain names are confusingly similar to the Complainant’s mark.
Respondent registered the disputed domain names in connection with plans to start a real estate brokerage business.
Respondent has made demonstrable preparations to use the disputed domain names in connection with that business.
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."
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:
(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.
It is not disputed that Respondent's domain names use the Complainant's mark and make one or more of the following additions: a descriptive term, a geographic term, and/or the generic top-level domain (“gTLD”) “.com.” It is well settled case law under the Policy that the addition of a descriptive or geographic term fails to differentiate a disputed domain name from a mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). The Panel also finds that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that the Complainant has satisfied its burden of proof under this element of the Policy.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: <http://wipo2.wipo.int/process1/report/doc/report.doc>). This report states at paragraph 135:
In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
And the WIPO Report states at 153:
… The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.
And at 166:
The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.
That is, the Panel may order transfer of the disputed domain name only if the case involves deliberate, bad faith, abusive cybersquatting, and not a dispute between parties with competing rights.
Respondent asserts, and provides evidence to show, that it incorporated its business, One West Real Estate, within the state of Wyoming and took great lengths to license each of the real estate brokers in Wyoming. Additionally, Respondent asserts, and provides evidence to show, that it owns an advertisement on a billboard facing Interstate-80 in Wyoming promoting its business. Respondent also claims that it posts signs at all of its properties with reference to its business name, and provides evidence to that effect. Respondent contends that it has spent significant time and money on advertising and promotion of its company and its business name and that it is identified by the “One West Real Estate” name. The Panel finds that the evidence provided by the Respondent to support its allegations is convincing. Therefore, the Panel finds that the Respondent has a legitimate interest in the disputed domain names. See Gateway, Inc. v. Pixelera.com, Inc., D2000-0109 (WIPO April 6, 2000); see also Metabolife International v. Spectrum Labs, D2000-0509 (WIPO July 23, 2000); see also Artemis Management Systems Inc. v. Web TV Networks, Inc. formerly known as Artemis Research, D2001-0153 (WIPO May 18, 2001).
Respondent contends that it has made demonstrable preparations to use the disputed domain names. It asserts that the disputed domain names were purchased within the year in order to be used in connection with Respondent’s real estate brokerage company and are simply in the process of being developed. It provides evidence to support this assertion. Panels have held previously that an inactive website may provide a respondent with rights or legitimate interests if the respondent has made demonstrable preparations to use the disputed domain name. See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Complainant cites Yahoo! Inc., v. Silicon City and Osama Al-Ayoub, D2000-1711 (WIPO Feb. 13, 2001); NATSAC, INC. d/b/a Meurice Garment Care v. David Kistner FA 1190108 (Nat. Arb. Forum June 28, 2008); and America Online, Inc. v. Daniel Cadosch Delmar d/b/a Viplevel, Inc. FA 586860 (Nat. Arb. Forum Dec. 7, 2005).The present case must be distinguished from those cases because in the cited cases Respondent as an individual or as a business was not commonly known by the name that was part of the disputed domain name.
Complainant also cites UnitedHealth Group Incorporated v. Greg Hovey / United Health Brokers, FA 1440403 (Nat. Arb. Forum June 8, 2012). The present case must be distinguished from that case because in the cited case the disputed domain names resolved to a website offering links to Complainant’s direct competitors.
For all these reasons, the Panel holds that Complainant has failed to satisfy its burden of proof under this element of the Policy. Any disputes between the parties regarding trademark law should be addressed to the competent national courts, not to this Panel.
Since the Panel has concluded that Respondent has rights or legitimate interests in the disputed domain names, the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to the Policy. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Since the Panel has found that Complainant has satisfied one element of the Policy it finds that Complainant has not engaged in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Further, Complainant’s failure to satisfy its burden of proof under the Policy does not necessarily imply a finding of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith).
The Panel does not find any sign of bad faith conduct on the part of Complainant. Therefore, the Panel rejects the request for a finding of reverse domain name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
The request for a finding of Reverse Domain Name Hijacking is DENIED.
Accordingly, it is Ordered that the <onewestrealestate.com>, <onewestwyoming.com>, <onewestwyominghomes.com>, and <onewestwyomingrealestate.com> domain names REMAIN WITH Respondent.
Honorable Charles Kuechenmeister (Ret.) Michael A. Albert
Panelist Panelist
Richard W. Hill
Presiding Panelist
Dated: July 9, 2012
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