Countrywide Financial Corporation v. Search Terms c/o Domain Admin
Claim Number: FA0601000629218
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance G. Johnson, of Roylance Abrams Berdo & Goodman, L.L.P., 1300 19th Street NW Suite 600, Washington, DC 20036-1649. Respondent is Search Terms c/o Domain Admin (“Respondent”), General Delivery, Georgetown, Grand Cayman GT, KY.
The domain name at issue is <countrywidecom.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 23, 2006.
On January 18, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <countrywidecom.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 2006 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@countrywidecom.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <countrywidecom.com> domain name is confusingly similar to Complainant’s COUNTRYWIDE mark.
2. Respondent does not have any rights or legitimate interests in the <countrywidecom.com> domain name.
3. Respondent registered and used the <countrywidecom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Countrywide Financial Corporation has been providing mortgage lending, mortgage banking, insurance agency, and securities brokerage services since 1969. Complainant is well known in the financial services industry as “Countrywide” and ranks 150th in the Fortune 500. In 2004, Complainant produced more than $300 billion worth of mortgages, or one out of every eight home loans in the United States mortgage market. In 2005, Complainant ranked first for United States residential mortgage originations and United States residential mortgage service providers. Complainant ranked second in the mortgage services category of Fortune magazine’s list of America’s Most Admired Companies. Complainant had over $128 billion in assets, $13 billion in revenues, and $9 billion in intangibles in fiscal year 2004.
Complainant holds several trademark registrations for the COUNTRYWIDE mark with the United States Patent and Trademark Office (“USPTO”) (U.S. Reg. No. 1,744,794; issued on January 5, 1993 and U.S. Reg. No. 1,918,325; issued on September 12, 1995). Complainant has also registered the following marks: COUNTRYWIDE INVESTPLUS, COUNTRYWIDE WHOLSALE BUSINESS CHANNEL, COUNTRYWIDE EASY RATE REDUCTION PLAN, COUNTRYWIDE’S NEW SOLUTIONS, COUNTRYWIDE’S EASYMOVE LOAN, COUNTRYWIDE BANK, COUNTRYWIDE FINANCIAL, and COUNTRYWIDE’S EASYWAY. Complainant registered the <countrywide.com> domain name on July 26, 1994 and the <mycountrywide.com> domain name on May 6, 2002.
Respondent registered the <countrywidecom.com> domain name on August 8, 2004. The disputed domain name resolves to a third-party web directory that displays links to Complainant’s direct competitors in the mortgage industry and to unrelated content.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 COUNTRYWIDE mark
through registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <countrywidecom.com> domain name
is confusingly similar to Complainant’s COUNTRYWIDE mark pursuant to Policy ¶
4(a)(i), because it wholly incorporates Complainant’s mark and merely adds the
term “com” and the generic top-level domain “.com.” Panels have concluded that the addition of generic terms to a
complainant’s mark and generic top-level domains are irrelevant to a Policy ¶
4(a)(i) analysis and do not distinguish a disputed domain name from a
mark. 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <countrywidecom.com> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <countrywidecom.com>
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
There is no evidence in the record suggesting that
Respondent is commonly known by the <countrywidecom.com> domain
name. Therefore, Respondent has not
established rights or legitimate interests in the <countrywidecom.com>
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 the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Moreover, Respondent is using the <countrywidecom.com>
domain name, which is confusingly similar to
Complainant’s COUNTRYWIDE mark, to divert Internet users to a web directory
displaying links to Complainant’s direct competitors. Such use of the disputed domain name for commercial gain
does not provide evidence of a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also 24 Hour Fitness
USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb.
Forum Sep. 26, 2003) (holding that Respondent’s use of the
<24hrsfitness.com>, <24-hourfitness.com> and
<24hoursfitness.com> domain names to redirect Internet users to a website
featuring advertisements and links to Complainant’s competitors could not be
considered a bona fide offering of goods or services or a legitimate
noncommercial or fair use); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <countrywidecom.com> domain
name, which is confusingly similar to Complainant’s COUNTRYWIDE mark, to divert
Internet users to a web directory featuring links to Complainant’s direct
competitors and to unrelated content.
The Panel infers that Respondent receives click-through fees for
diverting consumers from the web directory to third-party websites. Therefore, Respondent is taking advantage of
the likelihood of confusion between Respondent’s domain name and Complainant’s
mark and capitalizing on the goodwill associated with the mark. The Panel finds that such use constitutes
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ.
v. Cook, FA 208629 (Nat. Arb. Forum Dec.
22, 2003) (“Registration and use of a domain name that incorporates another's
mark with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); see also Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
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 <countrywidecom.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 7, 2006
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