Wilshire Credit Corporation v. Henry Chan
Claim
Number: FA0403000245957
Complainant is Wilshire Credit Corporation (“Complainant”),
represented by Gary H. Lau, of Northwest IP Law Group LLP,
725 NW 10th Ave., Suite 407, Portland, OR 97209. Respondent is Henry Chan (“Respondent”),
P.O. Box SS-6348/A124, Nassau, Bahamas.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain name at issue is <wilshirecredit.com> and <wilshirecreditcorp.com>,
registered with Iholdings.com, Inc. d/b/a 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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 15, 2004; the Forum received a hard copy of the
Complaint on March 17, 2004.
On
March 19, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain names <wilshirecredit.com> and <wilshirecreditcorp.com>
are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a 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
March 22, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 12, 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@wilshirecredit.com and
postmaster@wilshirecreditcorp.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
April 21, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Crary 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 <wilshirecredit.com>
and <wilshirecreditcorp.com> domain names are confusingly
similar to Complainant’s WILSHIRE FINANCIAL SERVICES GROUP, WILSHIRE CREDIT
CORPORATION, and WILSHIRE marks.
2. Respondent does not have any rights or
legitimate interests in the <wilshirecredit.com> and <wilshirecreditcorp.com>
domain names.
3. Respondent registered and used the <wilshirecredit.com>
and <wilshirecreditcorp.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
provides a variety of services in the credit and financial industries including
investments, debt servicing, and collections.
Complainant provides these services under the WILSHIRE FINANCIAL
SERVICES GROUP, WILSHIRE CREDIT CORPORATION, and WILSHIRE marks.
Complainant has
used the WILSHIRE FINANCIAL SERVICES GROUP mark for “loan financing, financing
services, mortgage banking and brokerage, and debt servicing and collection”
since October 31, 1990. Complainant
registered the WILSHIRE FINANCIAL SERVICES GROUP mark with the United States
Patent and Trademark Office (“USPTO”) on July 29, 1997 (Reg. No. 2082695).
Additionally,
Complainant has used the WILSHIRE CREDIT CORPORATION and WILSHIRE marks in
connection with “financial investment in the fields of real estate loans and
securities; loan financing; home equity loans; installment loans; mortgage
lending; loan collection services; real estate foreclosure trustee services;
financial evaluation of real estate; loan servicing” since February 12, 1993
and July 1, 2000, respectively.
Complainant filed a registration application for the WILSHIRE CREDIT
CORPORATION mark with the USPTO on February 10, 2004 (Ser. No. 78/365627). Likewise, Complainant filed a registration
application for the WILSHIRE mark with the USPTO on February 13, 2004 (Ser. No.
78/367727).
Respondent
registered the disputed domain names <wilshirecredit.com> and <wilshirecreditcorp.com>
on November 8, 2002 and November 7, 2002, respectively. The domain names are being used by
Respondnet to host indexing websites that relate to mortgage quotes and rates
provided by third-party businesses.
Links to these businesses are prominently displayed on Respondent’s
websites.
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.
The registration
of one’s mark with the USPTO is sufficient to establish rights in the mark
under the Policy. In this case, Complainant
has registered the WILSHIRE FINANCIAL SERVICES GROUP mark and owns registration
applications for the WILSHIRE CREDIT CORPORATION and WILSHIRE marks with the
USPTO. Therefore, Complainant has
established rights in the marks. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that the registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption); see also
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 SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist. Rights
in the mark can be established by pending trademark applications); see also British
Broad. 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”).
Domain names
that contain the predominant portion of a complainant’s mark, but merely omit a
word, have been found to be confusingly similar to a complainant’s mark under
Policy ¶ 4(a)(i). Here, the domain name
<wilshirecredit.com> contains the first two words of Complainant’s
WILSHIRE CREDIT CORPORATION mark, but merely omits the word “corporation,”
which represents the type of entity Complainant operates as. Thus, the domain name <wilshirecredit.com>
is confusingly similar to Complainant’s WILSHIRE CREDIT CORPORATION mark. See
Asprey & Garrard Ltd v. Canlan
Computing, D2000-1262 (WIPO Nov.
14, 2000) (finding that the domain name <asprey.com> is confusingly
similar to Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see
also Hammond Suddards Edge v.
Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the
domain name, “hammondsuddards.net,” is essentially identical to Complainant's
mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies
Complainant independently of the word “Edge”); see also WestJet Air Center, Inc. v. West Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to Complainant’s mark, where Complainant
holds the WEST JET AIR CENTER mark).
In addition,
domain names that contain the predominant portion of a complainant’s mark, but
merely abbreviates a word within the complainant’s mark, have been found to be
confusingly similar to the mark under the Policy. In this case, the domain name <wilshirecreditcorp.com> has
included the first two words of Complainant’s WILSHIRE CREDIT CORPORATION mark,
but has merely abbreviated the word “corporation.” Therefore, the domain name <wilshirecreditcorp.com> is
confusingly similar to Complainant’s WILSHIRE CREDIT CORPORATION mark. See Modern Props, Inc. v. Wallis, FA
152458 (Nat. Arb. Forum June 2, 2003) (stating that “[n]otwithstanding the
analysis by Respondent, ‘modprops’ is a contraction or shorthand for “Modern
Props.” “Mod” cononotes [sic] ‘modern’ regardless of any other dictionary
meanings, so the names are substantially similar in meaning); see also Minn. State Lottery v. Mendes, FA 96701
(Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain
name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered
mark); see also Down East Enter.
Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001)
(finding the domain name <downeastmagazine.com> confusingly similar to
Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).
Therefore,
Complainant has established Policy ¶ 4(a)(i).
Respondent has
not provided the Panel with a Response to the Complaint. Thus, the Panel presumes 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 Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond).
As a result of
the foregoing, there is nothing in the record to indicate Respondent is
commonly known by the disputed domain names under 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
A bona fide offering
of goods or services under Policy ¶ 4(c)(i) and a legitimate noncommercial or
fair use of domain names under Policy ¶ 4(c)(iii) does not include using domain
names confusingly similar to a complainant’s mark that are used to host
websites offering services that compete with those provided by complainant
under its mark. In the instant case,
Respondent registered domain names that have appropriated confusingly similar
variations of Complainant’s WILSHIRE-related marks. Respondent then linked the domain names to content relating to
mortgage services provided by businesses in direct competition with
Complainant’s mortgage services offered under each of its WILSHIRE marks. Such use does not satisfy Policy ¶¶ 4(c)(i)
or (iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services); see also Clear
Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum
Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no
rights or legitimate interests in a domain name that utilized Complainant’s
mark for its competing website); see also Winmark Corp. v. In The Zone,
FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights
or legitimate interests in a domain name that used Complainant’s mark to
redirect Internet users to a competitor’s website).
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Respondent has
registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv)
through its intentional attempt to attract, for commercial gain, Internet users
to its websites by creating a likelihood of confusion with Complainant’s
WILSHIRE-related marks. Evidence of
this comes in the form of Respondent’s registration of domain names that are
confusingly similar to Complainant’s marks and Respondent’s subsequent use of
those names to host links to third-party businesses that are direct competitors
of Complainant’s business, presumably for commercial gain. See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see
also TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant).
Therefore,
Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wilshirecredit.com> and <wilshirecreditcorp.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: May 4, 2004
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page