IndyMac Bank F.S.B. v. Jim Hogan
Claim
Number: FA0312000220042
Complainant is IndyMac Bank F.S.B. (“Complainant”), represented
by B. Brett Heavner, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 1300 I
Street NW, Washington, DC 20005-3315.
Respondent is Jim Hogan (“Respondent”), 93879 Shady Dr. NW, Lilburn,
GA 30047.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <atlantaloanworks.com>,
<atlantaloanworks.net>, <i-loanworks.com> and
<i-loanworks.net>, registered with Network Solutions, Inc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 17, 2003; the Forum received a hard copy of the
Complaint on December 18, 2003.
On
December 19, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain names <atlantaloanworks.com>, <atlantaloanworks.net>,
<i-loanworks.com> and <i-loanworks.net> are
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the names. Network Solutions, Inc. has verified that Respondent
is bound by the Network Solutions, Inc. 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
December 19, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 8, 2004 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@atlantaloanworks.com,
postmaster@atlantaloanworks.net,
postmaster@i-loanworks.com and postmaster@i-loanworks.net 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
January 14, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <atlantaloanworks.com>,
<atlantaloanworks.net>, <i-loanworks.com> and
<i-loanworks.net> domain names are confusingly similar to
Complainant’s LOANWORKS mark.
2. Respondent does not have any rights or
legitimate interests in the <atlantaloanworks.com>, <atlantaloanworks.net>,
<i-loanworks.com> and <i-loanworks.net> domain names.
3. Respondent registered and used the <atlantaloanworks.com>,
<atlantaloanworks.net>, <i-loanworks.com> and
<i-loanworks.net> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
one of the leading mortgage lenders in the U.S. and has achieved earnings of
$143 million in 2002. Complainant is a
wholly owned subsidiary of IndyMac Bancorp, Inc., a publicly traded company on the
New York Stock Exchange with a market capitalization of approximately $1.6
billion. Complainant has used the
LOANWORKS mark in conjunction with its mortgage business since 1997. Complainant holds several registrations with
the U.S. Patent and Trademark Office (“USPTO”) for the LOANWORKS mark
including, Reg. Nos. 2,238,058 and 2,238,162 (both registered on April 13,
1999). Complainant uses the
<loanworks.com> domain name in conjunction with its business.
Respondent
registered the four (4) domain names between the period July 3, 2000 and July
12, 2000. The domain names resolve to
“under construction” websites.
Respondent is a mortgage broker who operates a website located at the
domain name <loansource.com>.
Respondent via a letter requested Complainant to make a bid for the
purchase of the <i-loanworks.com> and <i-loanworks.net> domain
names.
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
established rights in the LOANWORKS mark by registering the mark with the USPTO
and using the mark in commerce since 1997.
See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”); see also Fishtech v.
Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that
Complainant has common law rights in the mark FISHTECH which it has used since
1982).
Respondent’s
domain names are confusingly similar to Complainant’s LOANWORKS mark because
the domain names fully incorporate the mark and merely add the geographic term
“Atlanta” or the prefix “i-.” The
addition of the geographic term and prefix are insufficient to circumvent the
Panel from finding the domain names confusingly similar to the LOANWORKS
mark. Furthermore, the addition of the
generic top-level domains “.com” and “.net” are insufficient to distinguish the
domain names from Complainant’s mark. See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000)
(finding that Respondent’s registration of the domain name
<net2phone-europe.com> is confusingly similar to Complainant’s mark…"the combination of a geographic term with
the mark does not prevent a domain name from being found confusingly
similar"); see also
Crédit Lyonnais v. Ass’n Etre Ensemble,
D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and
a hyphen does not affect the power of the mark in determining confusing
similarity); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel may
infer that Respondent lacks rights and legitimate interests in the domain
names. See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names); see also Canadian Imperial
Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept.
23, 2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Respondent’s
attempt to sell the <i-loanworks.com> and <i-loanworks.net>
domain names is evidence that Respondent lacks rights and legitimate interests
in the two (2) domain names. See
Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate
interests in the domain name is further evidenced by Respondent’s attempt to
sell its domain name registration to Complainant, the rightful holder of the
RED CROSS mark”); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
Furthermore,
Respondent has failed to develop websites for the four (4) domain names for
over three (3) years, which constitutes passive holding and is evidence that
Respondent lacks rights and legitimate interests in the domain names. See
Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question); see
also Boeing Co. v. Bressi,
D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests
where Respondent has advanced no basis on which the Panel could conclude that
it has a right or legitimate interest in the domain names, and no use of the
domain names has been established).
Also, the record
fails to establish that Respondent is commonly known by any of the domain
names. The WHOIS information for the
domain names does not establish that Respondent is commonly known by the domain
names. Therefore, the Panel concludes
that Respondent lacks rights and legitimate interests in the domain names
pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question); see also Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
It may be
inferred that Respondent had actual or constructive knowledge of Complainant’s
mark because the mark was registered with the USPTO, the mark has been used in
commerce since 1997 and Respondent is a mortgage broker that owns and operates
a mortgage website. Registration of a
domain name, despite knowledge of Complainant’s rights, is evidence of bad
faith registration pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange
Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof”).
Furthermore, it
may be inferred that Respondent registered the domain names to disrupt
Complainant’s business because Respondent is a mortgage broker and operates a
mortgage website, which competes with Complainant. Internet users who attempt to contact Complainant online via
Respondent’s domain names may mistakenly assume that Complainant does not have
an online presence which would result in lost business for Complainant. Respondent’s use of the domain names is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also Surface
Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between Complainant and
Respondent, Respondent likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum
Jan. 4, 2001) (finding it "obvious" that the domain names were
registered for the primary purpose of disrupting the competitor's business when
the parties are part of the same, highly specialized field).
In addition,
Respondent has failed to develop a website for any of the domain names. The domain names have sat undeveloped for
over 3 years, which constitutes passive holding and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). The Panel will not wait until the domain names have actually been
used before finding bad faith because it is inconceivable that Respondent could
use the domain names in a manner that would not infringe upon Complainant’s
mark and given Respondent’s prior attempt to sell two (2) of the domain
names. See Cruzeiro
Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding
that mere passive holding of a domain name can qualify as bad faith if the
domain name owner’s conduct creates the impression that the name is for sale); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that
Respondent’s failure to develop its website in a two year period raises the
inference of registration in bad faith); see
also Phat Fashions v. Kruger,
FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(b)(iv) even though Respondent has not used the domain name because “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use, it will create the confusion described in the Policy”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <atlantaloanworks.com>, <atlantaloanworks.net>,
<i-loanworks.com> and <i-loanworks.net> domain names be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
January 28, 2004
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