National Arbitration Forum
DECISION
HOMESBYLENDER.COM v. HomeByLender.com FSBO
Marketing System for Mortgage Lenders c/o Bill Pryor
Claim Number: FA0603000652350
PARTIES
Complainant is HOMESBYLENDER.COM (“Complainant”), represented by Joel MacMull, of INC Business Lawyers,
1201 - 11871 Horseshoe Way, Richomd, BC V7A 5H5, Canada. Respondent is HomeByLender.com FSBO Marketing System for Mortgage Lenders c/o Bill Pryor (“Respondent”), 9320 117th Ave. N., Largo, FL 33773.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <homebylender.com> and <homesbuylender.com>, registered with Enom, Inc. and Wild West Domains, Inc.
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.
David P. Miranda, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 28, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 6, 2006.
On March 1, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <homebylender.com> domain name is registered with Enom,
Inc. and that the 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 March 1, 2006, Wild West
Domains, Inc. confirmed by e-mail to the National Arbitration Forum that
the <homesbuylender.com> domain name is registered with Wild West Domains, Inc. and that the
Respondent is the current registrant of the name. Wild West Domains, Inc.
has verified that Respondent is bound by the Wild West Domains, 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 March 8, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 28, 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@homebylender.com and
postmaster@homesbuylender.com by e-mail.
A Response was received on April 3, 2006. However the Response was received after the deadline for a
response and in electronic form only.
Therefore, the Forum does not consider this Response to be in compliance
with ICANN Rule #5 (a). Nevertheless,
the Response was considered by the Panel.
On April 5, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant HOMESBYLENDER.COM,
Inc. (“Complainant”), contends that it has been using the name
HOMESBYLENDER.COM, Inc. since as early as September 21, 2003 to reflect the
services it offers, including for sale by owner listing services provided via
the Internet by mortage companies.
Complainant contends that it has established the exclusive right to use
the name in connection with its services both at common law, and as a
registered trademark, and that HOMESBYLENDER.COM, Inc. is an incorporated
company under the laws of the state of Texas as of October 23, 2003. Complainant contends that Respondent
HomeByLender.com FSBO Marketing System for Mortage Lenders, and Bill Pryor
(“Respondents”) have registered the domain names <homebylender.com>, and <homesbuylender.com> in violation of Complainant’s exclusive
rights in the HOMESBYLENDER.COM mark.
Complainant contends that the disputed domains differ only by the
omission of the letter “s” in <homebylender.com> and the addition of the letter “u” in
<homesbuylender.com>, and as such, are confusingly similar to
the trademark of Complainant.
Complainant contends that it had registered the domain name
<homesbylender.com> at least eight months prior to Respondents’
registrations. Complainant contends
that Respondent has no rights or legitimate interests with respect to the
domain names at issue, rather Respondent appears to be doing business as
“For-Sale-By-Owner” and the domains in question resolve to a domain operated by
for-sale-by-owner.com, or ByOwner123.com.
Complainant contends that Respondent is not commonly known by the domain
names <homebylender.com>, or <homesbuylender.com>, or
any variant of it. Complainant contends
that Respondent’s use of the domain names at issue are an attempt to
misleadingly divert customers away from Complainant to the Respondent for the
purposes of commercial gain.
Complainant contends that Respondent has registered the domain names in
bad faith for the purpose of selling the domain name registrations to the
Complainant in excess of out of pocket costs, and primarily for the purpose of
disrupting the business of Complainant by attempting to capitalize on typographical
errors made by Complainant’s customers.
Complainant submits an email forwarded by Respondent indicating that
consumers were contacting Respondent, expecting to contact the Complainant, and
Respondent solicited the sale of at least one of the domains in question.
B. Respondent
Respondent submits a response which the Arbitration Forum indicates is
untimely, however, the panel considered the response as is its right.
Respondent contends that HOMESBYLENDER
is not distinctive and can not function as a trademark. Respondent contends that the domains were
not registered in bad faith.
FINDINGS
Complainant has used HOMESBYLENDER.COM to describe its services
since prior to Respondents’ registration and the use of the domain names in
question, but Complainant has failed to show sufficient trademark, or service
mark rights to warrant transfer under the Uniform Domain Name Dispute
Resolution Policy rules.
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.
Identical and/or Confusingly
Similar
Complainant contends that it has established
common law rights in the HOMESBYLENDER.COM
mark dating back to September 21, 2003, and that it has a federal registration
for the mark. Although the Panel finds
the domain names in question are confusingly similar to Complainant’s business
name, the Complainant has failed to establish either common law rights, or
federal registration to the mark in question.
Although, Complainant states that it has a federal service mark registration
for the mark HOMESBYLENDER.COM, Exhibit “A”, provided by Complainant shows that
the mark is not registered, but is only an application that has been published
for opposition. Furthermore, the mark
is not merely for HOMESBYLENDER.COM as respresented by Complainant, but rather,
the mark reads as follows, HOMESBYLENDER.COM FSBO HOMES ADVERTISED FREE BY YOUR
LOCAL MORTAGE LENDER! Thus, even if the
Complainant’s mark proceeds to full registration, the registered mark will not
be for HOMESBYLENDER.COM, as represented by Complainant, but rather for a
different mark that Complainant has failed to allege is confusingly similar to
the domain names in question.
Complainant also asserts that it has common law rights in the mark because the mark has acquired secondary meaning as a source indicated for Complainant’s business in the field of online home listing services. Under Policy ¶4(a)(i), a Complainant need not hold a registered trademark to establish rights in a mark. However, Complainant has failed to establish common law rights in the HOMESBYLENDER.COM mark. Complainant did not provide sufficient evidence of secondary meaning, and Policy ¶4(a)(i) has not been satisfied. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof (e.g. business sales figures, revenues, advertising expenditures, or number of consumers served)); see also Molecular Nutrition, Inc. v. Network News & Publ’ns., FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principals outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if Complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant’s goods or services”); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).
Thus, Complainant has failed to establish
Policy ¶4(a)(i).
Since Complainant has failed to establish the
first element required by the Policy, it is unnecessary to address the claims under
the remaining two elements. See
Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept.
20, 2002). (finding that because the
Complainant must prove all three elements under the Policy, the Complainant’s
failure to prove one of the elements makes further inquiry into the remaining
element unnecessary); see also Holmes v. Whois Prot. Serv., FA 288395
(Nat. Arb. Forum, Aug. 17, 2004).
DECISION
Having failed to establish at least one of the three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED,
without prejudice to Complainant.
Accordingly, it is Ordered that the <homebylender.com>
and <homesbuylender.com> domain names not be transferred.
David P. Miranda, Esq., Panelist
Dated: April 18, 2006