1-800-East West Mortgage Company, Inc. v.
Ling Shun Shing
Claim
Number: FA0307000175288
Complainant is 1-800-East West Mortgage Company, Inc.,
Peabody, MA (“Complainant”) represented by Seán
F. Heneghan. Respondent is Ling Shun Shing, Shanghai, China
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <isolmyhouse.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.Com (hereinafter, “Dotregistrar.Com”).
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 29, 2003; the Forum received a hard copy of the
Complaint on August 1, 2003.
On
July 30, 2003, Dotregistrar.Com confirmed by e-mail to the Forum that the
domain name <isolmyhouse.com> is registered with Dotregistrar.Com
and that Respondent is the current registrant of the name. Dotregistrar.Com has
verified that Respondent is bound by the Dotregistrar.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
August 11, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 2, 2003 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@isolmyhouse.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 10, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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:
1. Respondent’s <isolmyhouse.com>
domain name is confusingly similar to Complainant’s ISOLDMYHOUSE.COM trademark.
2. Respondent does not have any rights or
legitimate interests in the <isolmyhouse.com> domain name.
3. Respondent registered and used the <isolmyhouse.com>
domain name in bad faith.
B. Respondent failed to submit a Response in this
proceeding.
Complainant is
New England’s leading mortgage lender, offering various types of mortgage
products, and funding over $1 billion in mortgages per year. Complainant offers “companion services,”
such as online real estate listings, at the domain name
<isoldmyhouse.com> and in a print publication under the mark
ISOLDMYHOUSE.COM. Complainant also
produces and broadcasts a weekly television show on the Boston-area Warner
Bros. affiliate station under the same mark.
Complainant has
promoted its mark extensively, with full color ads appearing in 300 regional
newspapers and radio spots on 297 New England area stations. Complainant asserts that its advertising and
promotions budget related to products and services marketed under the ISOLDMYHOUSE.COM
mark reaches $1.7 million monthly.
Complainant has
used the ISOLDMYHOUSE.COM mark and <isoldmyhouse.com> domain name
continuously in commerce since 2000, and currently reports that the associated
website receives fifty million hits per month.
Respondent
registered the <isolmyhouse.com> domain name on October 15, 2002
and has used the name to redirect Internet users to a search engine that pays
referrers (such as Respondent) per click.
The page also links users to “Popular Searches” that redirect them to
websites offering services in competition with Complainant’s.
Complainant also
provided evidence that Respondent registered several other domain names that
reflect typographical misspellings of famous trademarks, including
<sallliemae.com>, <bananarepulbic.com>, and
<krispeykreme.com>, among others.
Respondent has been successfully challenged under the UDRP in at least
six administrative hearings, several of which involved domain names of financial
institutions and mortgage companies. See
Ameriquest Mortgage Co v. Shing, D2003-0294 (WIPO June 6, 2003); Citigroup
Inc. v. Shing, D2003-0328 (WIPO June 2, 2003); ChevronTexaco Corp. v.
Shing, FA 146570 (Nat. Arb Forum Apr. 14, 2003); LTD Commodities LLC v.
Shing, FA 146938 (Nat. Arb Forum Apr. 1, 2003); Bank of Am. Corp. v.
Shing, FA 132447 (Nat. Arb. Forum Dec. 30, 2002); ABC Distrib., Inc. v.
Shing, FA 126640 (Nat Arb. Forum Dec. 11, 2002).
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.
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.
Complainant has
provided substantial evidence of its continuous use of the ISOLDMYHOUSE.COM
mark in commerce since 2000. In
addition to using the mark online as a domain name, Complainant has used the
mark in print and on television and radio.
While all domain names are not necessarily protected as trademarks,
Complainant’s extensive use of the mark and significant expenditures in
promoting the mark have allowed ISOLDMYHOUSE.COM to achieve recognition at
common law.
Complainant has
not provided evidence that its mark has been registered; however, Paragraph 4(a)(i)
of the Policy has been interpreted as not requiring registration of a mark for
a Complainant to bring its claim.
Common law marks are also protected by the Policy. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy
is “broad in scope” in that “the reference to a trademark or service mark ‘in
which the complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy); see also
British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)
(noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
Furthermore, it
is not significant that Complainant operates and developed much of the goodwill
of its mark in a country other than Respondent’s place of residence. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which Respondent operates.
It is sufficient that Complainant can demonstrate a mark in some
jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO April 20, 2001) (holding that it does not matter for the
purpose of Policy ¶ 4(a)(i) whether Complainant’s mark is registered in a
country other than that of Respondent’s place of business).
Having
established Complainant’s rights in ISOLDMYHOUSE.COM, the <isolmyhouse.com>
domain name is confusingly similar to Complainant’s mark as it reflects a
variation that would be identical, but for the omission of one letter. Given the insignificance of the change and
the fact that the resultant domain name has no apparent meaning of its own, the
Panel concludes that the domain name is confusingly similar to Complainant’s
mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see
also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the
domain name <compq.com> is confusingly similar to Complainant’s COMPAQ
mark because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark).
Policy ¶ 4(a)(i)
has been satisfied.
Respondent has
not provided this Panel with any evidence of current or planned future use of
the disputed domain name. In light of
Complainant’s assertion that Respondent has no rights or legitimate interests
in the domain name, the Panel may presume that no such rights or interests
exist. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(stating that “[i]n the absence of a response, it is appropriate to accept as
true all allegations of the Complaint”); see also Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true).
Respondent has
apparently not used the domain name for any purpose other than to link Internet
users to a search engine from which Respondent is probably earning referral
fees. By trading on the goodwill
Complainant has built up in its mark and causing user confusion as to the
source of the website connected to the domain name (and real estate-related
links on the site), Respondent has not engaged in a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev a/k/a NA & Free Domains Parking, FA
156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to websites where Respondent
presumably received a referral fee for each misdirected Internet user was not a
bona fide offering of goods or services as contemplated by the Policy); see also TM Acquisition Corp. v. Sign Guards
a/k/a William Moore, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that Respondent’s diversionary use of Complainant’s marks to send Internet
users to a website which displayed a series of links, some of which linked to
competitors of Complainant, was not a bona fide offering of goods or services);
see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum
May 12, 2003) (finding that Respondent did not have rights or legitimate
interests in a domain name that used Complainant’s mark and redirected Internet
users to website that pays domain name registrants for referring those users to
its search engine and pop-up advertisements).
Furthermore,
Respondent’s name, as this Panel knows it, is Ling Shun Shing. There is no evidence to suggest that
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Accordingly,
Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has demonstrated a pattern of registering and using domain names that trade on
the fame and goodwill of well-known marks.
In this instance, Respondent has registered and used the <isolmyhouse.com>
domain name to profit by referring users seeking Complainant’s site to a
commercial search engine and other competing websites. Respondent’s behavior typifies bad faith as
defined in Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the
disputed domain name to a search engine at <iwin.com>, presumably
receiving a portion of the advertising revenue from the site); see also L.L. Bean, Inc. v. Cupcake Patrol, FA
96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad
faith by establishing a pattern of registering misspellings of famous
trademarks and names); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business).
Policy ¶
4(a)(iii) has been satisfied.
Having
established all required elements of the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <isolmyhouse.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
September 17, 2003
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