Key Bank N.A. d/b/a Champion Mortgage Co.,
Inc. v. James Griffin
Claim Number: FA0509000562478
PARTIES
Complainant is Key Bank N.A. d/b/a Champion Mortgage Co., Inc. (“Complainant”), represented by John Oleske, 437 Madison Avenue, New York, NY 10022. Respondent is James Griffin (“Respondent”), 8 Frances Ave., Norwalk, CT 06854.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <championmortgageclassaction.com>,
registered with Register.com.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically September 15, 2005; the National Arbitration Forum received a
hard copy of the Complaint September 19, 2005.
On September 15, 2005, Register.com confirmed by e-mail to the National
Arbitration Forum that the <championmortgageclassaction.com>
domain name is registered with Register.com and that the Respondent is the
current registrant of the name. Register.com
verified that Respondent is bound by the Register.com registration agreement
and thereby has agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On September 22, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 12, 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@championmortgageclassaction.com
by e-mail.
A timely Response was received and determined to be complete October
12, 2005.
On October 18, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1.
The domain name
Respondent registered, <championmortgageclassaction.com>
is confusingly similar to Complainant’s famous CHAMPION MORTGAGE mark.
2.
That Respondent
has no right to or legitimate interest in the mark contained within the
disputed domain name and therefore has no rights to or legitimate interest in
the domain name containing Complainant’s protected mark.
3.
That Respondent
acted in bad faith in registering and using a domain name containing
Complainant’s protected mark.
B. Respondent makes the following contentions in
response:
1.
Respondent does
not address the issue of confusing similarity but instead sets out an account
of the situation leading up to a lawsuit against the Complainant.
2.
Respondent does
not address any right granted by Complainant for use of Complainant’s mark; but
urges that such rights arise from the need to give notice to customers of
Complainant that they must either join or opt out of the litigation against
Complainant.
3.
Respondent then
sets out by general statements four particulars to show its lack of bad faith
under the policy.
FINDINGS
Complainant is Champion Mortgage Co., Inc., and holds two
registrations for the mark from the appropriate authorities to protect its mark
CHAMPION MORTGAGE.
Respondent is James Griffin, who has an interest in a lawsuit against
the Complainant.
Complainant protected its rights in the mark in 2001 and has a first
use in commerce that dates to 1998.
Respondent registered the disputed domain name in March 2005.
Respondent has not addressed the specific elements of this ICANN
claim. Respondent has produced no
authority for his position that because he needs to give notice of a lawsuit
against this Complainant that he acquires some right to use the Complainant’s
mark to give that notice.
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 Complainant to 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)
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 contends that it has established rights in the CHAMPION MORTGAGE mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,490,025 issued September 18, 2001). Registration of the mark with the USPTO is sufficient to establish that Complainant has rights in the mark. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.).
Complainant asserts that the <championmortgageclassaction.com> domain name registered by Respondent is
confusingly similar to Complainant’s CHAMPION MORTGAGE mark because the domain
name incorporates Complainant’s mark in its entirety, and merely adds the term
“class action.” The Panel finds that the addition
of the generic top-level domain “.com” is irrelevant in determining the element
of confusing similarity. Therefore, the Panel concludes that the
additions of the term “class action” and the generic top-level domain “.com” to
Complainant’s mark are insufficient to negate the confusingly similar aspects
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); 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); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . .
. without legal significance since use of a gTLD is required of domain name
registrants.").
The Panel finds that Complainant satisfied the
requirements of ICANN Policy ¶ 4(a)(i) to show “confusing similarity.”
Once Complainant makes a prima facie showing that it has rights to and legitimate interests in the mark contained in its entirety within a disputed domain name, under Policy ¶ 4(a)(ii) the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Complainant argues that Respondent is not commonly known by the <championmortgageclassaction.com> domain name and that Respondent has not been licensed or otherwise authorized by Complainant to use the CHAMPION MORTGAGE mark. The Panel finds that Complainant met the required showing and that Respondent has not established rights or legitimate interests in the <championmortgageclassaction.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant also asserts that Respondent is using the <championmortgageclassaction.com> domain name to redirect Internet users to its commercial website unrelated to Complainant’s business for Respondent’s commerical gain. Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Respondent might argue that it has rights or legitimate interests in the disputed <championmortgageclassaction.com> domain name because the domain name links Internet users to a website providing consumers with information and services regarding a lawsuit against Complainant. However, the Panel is not aware that one suing another who holds a protected trademark acquires some right to use the targeted litigant’s protected mark in ways that benefit the user and not the holder of the mark. The Panel finds that the cases recognizing bulletin board and informational use are distinguishable from the facts of this case. See Navigator Yachts, Inc v. TD Curran, FA 226452 (Nat. Arb. Forum Mar. 4, 2004) (finding that “using a domain name to gain information indicent to a dispute with Complainant” is a bona fide offering pursuant to Policy ¶ 4(c)(i); see also Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (“using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. … is use to describe the content of the site,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name); see also Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO March 19, 2002) (using the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name); see also Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (making a non-commercial use of the domain name but receiving no funds from users).
The
Panel finds that Complainant satisfied the requirements of ICANN Policy ¶
4(a)(ii) by showing that it has rights to and legitimate interests in the mark
contained in its entirety within the disputed domain name that Respondent has
no such rights to or legitimate interests in the mark.
Complainant claims that Respondent
is using the <championmortgageclassaction.com>
domain name for Respondent’s
commercial gain by redirecting Internet users interested in Complainant’s goods
or services to Respondent’s commercial website. The Panel finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s mark to attract Internet users to
Respondent’s website for commercial gain by creating a liklihood of confusion
with Complainant’s mark is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent linked <drmath.com>, which contains the
complainant’s Dr. Math mark, to a website run by the respondent, creating
confusion for Internet users regarding the endorsement, sponsorship, of
affiliation of the website); see also
eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16,
2001) (finding bad faith where the respondent is taking advantage of the
recognition that eBay has created for its mark and therefore profiting by
diverting users seeking the eBay website to Respondent’s site); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent
attracted users to a website sponsored by the respondent and created confusion
with the complainant’s mark as to the source, sponsorship, or affiliation of
that website).
It is clear from the face of the Respondent’s submission that Respondent had actual notice of Complainant’s rights in the CHAMPION MORTGAGE mark when it registered the disputed <championmortgageclassaction.com> domain name and that Respondent specifically attempts to gain opportunistically by such use. In addition, as Complainant asserts, its USPTO registration demonstrates that its mark is distinctive and Respondent’s registration and use of the mark in the disputed domain name, <championmortgageclassaction.com> evidences bad faith 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.”).
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii) showing “bad
faith registration and use.”
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 <championmortgageclassaction.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: November 1, 2005.
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