National Arbitration Forum

 

DECISION

 

LowerMyBills, Inc v. LowerALLmybills.com and Bob Brown

Claim Number: FA0503000440261

 

PARTIES

Complainant is LowerMyBills, Inc. (“Complainant”), represented by Sean F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176. Respondent is LowerALLmybills.com and Bob Brown (“Respondent”), P.O. Box 8167, Van Nuys, CA 91409-8167.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lowerallmybills.com>, registered with Register.com.

 

PANEL

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.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2005.

 

On March 15, 2005, Register.com confirmed by e-mail to the National Arbitration Forum that the domain name <lowerallmybills.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 17, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 6, 2005 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@lowerallmybills.com by e-mail.

 

A timely Response was received and determined to be complete on April 7, 2005.

 

On April 15, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant is an independent online service that provides consumers a one-stop destination that offers savings through its relationship with more than 250 business partners across 15 categories, including consumer lending, auto and health insurance, and long distance phone and wireless services. The side-by-side comparisons provided by Complainant include benefits and prices offered by providers in reoccurring monthly bill categories. Complainant's aggregation of mortgage lenders' rates for home purchase, home refinance, home equity and/or debt consolidation loans is one of its most popular services. Complainant also assists consumers in signing up for a particular provider, as well as offering consumer tips, financial calculators and incremental bill saving suggestions.

 

Complainant, LowerMyBills, Inc., is the owner of the trademark LOWERMYBILLS.COM. Complainant’s LOWERMYBILLS.COM mark and trade name are used in connection with its services of providing comparison shopping and consumer-related information through its website. The LOWERMYBILLS.COM mark has been used in connection with Complainant’s popular Internet-based consumer information services since as early as February 7, 2000. By virtue of the quality of its services, the five years of continuous use and extensive advertising and promotion, the LOWERMYBILLS.COM trademark is well known to, and well regarded by, the consuming public.

 

Respondent “LowerALLmybills” and Bob Brown registered the domain name <lowerallmybills.com> on March 17, 2004. Respondent is currently using the subject domain name in connection with services that are similar as those offered by Complainant, namely aggregating mortgage lenders' rates.

 

On April 20, 2004, Complainant requested that Respondent begin an immediate transfer of the disputed domain name and offered to compensate Respondent for the registration fee. Respondent, via an email sent on April 20, 2004 by Jim Minor, stated “Lowerallmybills is a Mortgage Company” but stated he was willing to transfer the disputed domain name for $50,000, which Mr. Minor claimed were the expenses incurred in relation to the domain name.

 

In an April 26, 2004 letter, Complainant’ counsel rejected Respondent’s proposal, pointed out that Complainant’s services of comparison rates and plans for home equity and home refinance loans overlap with Respondent’s proposed mortgage services and offered $250 for the transfer of the disputed domain name in order to bring the matter to an amicable close. Mr. Minor sent an email to Complainant’s counsel on April 29, 2004, rejecting Complainant’s offer, as well as identifying himself as president of Preferred Funding, Inc. d/b/a LowerALLmyBills.

 

On May 5, 2004, Complainant’ counsel increased its offer for the transfer of the disputed domain name to $500 and requested, among other things, written assurances that Respondent would immediately cease all plans to use and/or sell the subject domain. At the time of the May 5 letter, the domain name was still in placeholder status. On May 27, 2004, Respondent sent a follow up letter to Complainant’ counsel, rejecting the $500 proposal and included a list of alleged general expenses for the disputed domain name and website that totaled $27,720. At some point after the May 27 letter, the website went live.

 

On August 6, 2004, Complainant’s counsel noted the new status of the subject domain name, demanded that the website be disabled, reiterated Complainant’s $500 proposal and requested evidence that would support the alleged $27,720 costs. On August 30, 2004, Mr. Minor rejected the $500 proposal, reiterated the demand for $27,720 but again failed to provide any evidence of the alleged costs associated with the subject domain.

 

On December 1, 2004, Complainant’s counsel noted that Respondent did not supply any evidence of alleged costs associated with the disputed domain name and reiterated the demand to cease use of the subject domain and its proposal for $500. On December 2, 2004 Mr. Minor rejected Complainant’s proposal. At no point did Respondent supply Complainant with any documentation that supported Respondent’s claim of $27,720 in alleged costs in connection with the subject domain name, despite several requests on Complainant’s part for such documentation.

 

The disputed domain name is confusingly similar to Complainant’s LOWERMYBILLS.COM trademark. Specifically, the subject domain name includes Complainant’s mark and deviates from it only with the addition of the generic or descriptive term “all”.

 

Respondent is currently using the disputed domain name in connection with services that are similar to those offered by Complainant, namely aggregating mortgage lenders' rates. There is, in fact, a substantial likelihood that Complainant’s trademark LOWERMYBILLS.COM, and the goodwill associated therewith, was the reason Respondent registered the disputed domain name. Sizeable traffic is generated from sites associated with widely known marks, and it appears that Respondent sought to take advantage of this circumstance.

Respondent has no legitimate rights or interests in the subject domain name. Respondent is not commonly known, either as an individual, business or organization, by the name LOWER ALL MY BILLS or LOWERALLMYBILLS.COM. Before notification of the dispute with Complainant, Respondent had neither used nor made any demonstrable preparations to use the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services or in a legitimate, non-commercial, fair use manner.

 

Appropriating Complainant’s mark to promote related services is not bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (NAF 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 or services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

 

Respondent is not making a non-commercial or fair use of the disputed domain name. The website that is associated with the disputed domain name is clearly commercial in nature and the disputed domain name is being operated for the financial benefit of the Respondent. In fact, Respondent has used the disputed domain name to direct Internet users to a websites that markets services similar to Complainant’s services. The use of a confusingly similar domain name in order to divert Web users interested in Complainant’s services to a competing website is not a use in connection with a bona fide offering of goods or services pursuant to Section 4(c)(i), or a legitimate noncommercial or fair use pursuant to Section 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (NAF Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Ticketmaster Corp. v. DiscoverNet, Inc., Case No. D2001-0252 (WIPO Apr. 9, 2001)(finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).

 

Respondent registered and is using the disputed domain name in bad faith pursuant to 4(b)(iii) of the Policy by registering a domain name primarily to disrupt Complainant’s business, which is in competition with Respondent’s services. It is also evident that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s LOWERMYBILLS.COM trademark and <lowermybills.com> website. These users may have engaged Respondent’s services via <lowerallmybills.com> on the mistaken belief that the domain name was connected to Complainant.

 

Furthermore, Respondent offered to sell the disputed domain name to Complainant, first for $50,000, then later for at least $27,720. Both of these amounts well exceed any out-of-pocket costs directly related to the disputed domain name. Furthermore, at no point did Respondent supply Complainant with any documentation that supported Respondent’s claim of $27,720 in alleged costs in connection with the disputed domain name, despite several requests on Complainant’s part for such documentation. These facts indicate that Respondent registered the disputed domain name for the purpose of selling the domain’s registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the subject domain, which evidences bad faith registration and use pursuant to Section 4(b)(i) of the Policy.

 

B. Respondent

The substantive part of Respondent’s Response is reproduced verbatim below:

 

Respondent has made serveral offers and counter-offers to sell the <lowerallmybills.com> domain name. All offers and counter-offers have been made in good faith.

 

Respondent has not made any other substantive submissions.

 

FINDINGS

Complainant is an independent online service that has provided comparative shopping information to consumers through its website at <lowermybills.com> since February 2000. It has registered trademark rights in the mark LOWERMYBILLS.COM.

 

Respondent registered the contested domain name in March 2004.

 

Responding to a request by the Complainant, Respondent offered to transfer the disputed domain name in exchange for payment of US$50,000, then later offered to accept US$27,720 which, it claimed, represented the general expenses for the disputed domain name and website.

 

Respondent is currently using the disputed domain name in connection with services that are similar as those offered by Complainant.

 

Before notification of the dispute with Complainant, Respondent had neither used nor made any demonstrable preparations to use the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services or in a legitimate, non-commercial, fair use manner.

 

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.

 

Prior to addressing the substantive issues, the Panel will address a procedural issue.

 

Procedural issue

 

Respondent did not submit an electronic copy of the Response in accordance with ICANN Rule 5(a). The Panel has discretion to give weight to the contents of the deficient Response as it deems appropriate. In this case, the Panel rules that it will accept the deficient response. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process.”).

 

However, the Panel notes that the Response is extremely succinct and that it does not address many of the issues raised by the Complainant, which is inconsistent with Rule 5(b)(i). In accordance with Rule 14(b), the Panel shall draw such inferences as it considers appropriate from Respondent’s failure to respond specifically to the statements and allegations contained in the Complaint.

 

Identical and/or Confusingly Similar

 

Complainant argues that Respondent’s <lowerallmybills.com> domain name is confusingly similar to Complainant’s LOWERMYBILLS.COM mark because the domain name simply adds the generic term “all” to the mark. The Panel agrees with this reasoning because the addition of a generic term is, in general, insufficient to distinguish the domain name from the LOWERMYBILLS.COM mark for the purposes of the Policy. Therefore, the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

 

Rights or Legitimate Interests

 

The disputed domain name resolves to a website that provides comparison shopping and information services that directly compete with Complainant. The Panel holds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to provide competing services is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to the respondent’s competing website through the use of the complainant’s mark).

 

Further, Respondent has not argued (much less provided evidence) that it has rights or legitimate interests in the disputed domain name. For example, Respondent has not asserted that, prior to the dispute, it was commonly known by that name.

 

Thus, the Panel holds that Complainant has satisfied its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

 

Respondent uses the disputed domain name to direct Internet users to Respondent’s competing commercial website. The Panel holds that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant’s marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Furthermore, Respondent offered to sell the disputed domain name registration to Complainant, at first for $50,000, then later for $27,720. Respondent failed to provide adequate documentation of its out-of-pocket costs directly related to the domain name. Given Respondent’s documented behavior and lack of submissions to explain that behavior, the Panel holds that Respondent registered the domain name primarily for the purpose of selling the domain name registration to Complainant for more than Respondent’s documented out-of-pocket costs. Thus, the Panel holds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the disputed domain name registrations for sale); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that the respondent’s offer to sell the disputed domain name registration to the complainant was evidence of bad faith); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the domain name registration to the complainant for $10,000 when the respondent was contacted by the complainant); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) ([I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website.”).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <lowerallmybills.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Richard Hill, Panelist
Dated: April 27, 2005

 

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum