Countrywide Financial Corporation v. Kenny d/b/a Private
Claim Number: FA0603000654908
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance G. Johnson, of Roylance Abrams Berdo & Goodman L.L.P., 1300 19th Street N.W. Suite 600, Washington, DC 20036. Respondent is Kenny d/b/a Private (“Respondent”), 82 Valley Road South, Lucas, KY 75550.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <countrywide-mortgage-e-site.info>, registered with Moniker Online Services Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 13, 2006.
On March 13, 2006, Moniker Online Services Inc. confirmed by e-mail to the National Arbitration Forum that the <countrywide-mortgage-e-site.info> domain name is registered with Moniker Online Services Inc. and that Respondent is the current registrant of the name. Moniker Online Services Inc. has verified that Respondent is bound by the Moniker Online Services 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 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 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@countrywide-mortgage-e-site.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 11,2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <countrywide-mortgage-e-site.info> domain name is confusingly similar to Complainant’s COUNTRYWIDE mark.
2. Respondent does not have any rights or legitimate interests in the <countrywide-mortgage-e-site.info> domain name.
3. Respondent registered and used the <countrywide-mortgage-e-site.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Countrywide Financial Corporation, has been in the business of providing home mortgage loans and related services since 1969. In 2004, Complainant financed more than $300 billion in home mortgages, was ranked first in U.S. residential mortgage originations and had funded one out of eight home loans originated in the U.S. mortgage market. Complainant has registered the COUNTRYWIDE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,744,794 issued January 5, 1993). Complainant, through it subsidiary Countrywide Home Loans, Inc., maintains websites connected to its business under the <countrywide.com> and <mycountrywide.com> domain names, which were registered in 1993 and 1995 respectively.
Respondent registered the <countrywide-mortgage-e-site.info> domain name on November 1, 2004. The disputed domain name resolves to Respondent’s website, which features the words “Countrywide Home Loan – Compare Mortgage Rates and Apply Online,” along with links to Complainant’s competitors.
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 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 [or] have acquired secondary meaning”).
Respondent’s <countrywide-mortgage-e-site.info> domain name incorporates Complainant’s COUNTRYWIDE mark along with two descriptive terms, three hyphens, the letter “e” and the top-level domain “.info.” The additions of hyphens and the letter “e” to Complainant’s mark do not distinguish the disputed domain name from Complainant’s mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks). Furthermore, the additions of descriptive terms and a top-level domain to Complainant’s mark also fail to adequately distinguish the disputed domain name from Complainant’s mark. See 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests. The Panel finds that Complainant has made a prima facie case, and the burden shifts to Respondent as a result. Therefore, the Panel will examine the evidence to determine if Respondent has rights or legitimate interests under Policy ¶ 4(a)(ii). See 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 uses the <countrywide-mortgage-e-site.info>
domain name, which is confusingly similar to Complainant’s mark, to direct
Internet users to a website featuring Complainant’s mark along with links to
Complainant’s competitors. The Panel
presumes that Respondent earns click-through fees in exchange for diverting
Internet users to these other websites.
Therefore, Respondent is taking advantage of the confusing similarity
between its domain name and Complainant’s mark for its own financial gain. Such use of the disputed domain name is not
in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Complainant asserts that Respondent has never been a licensee of Complainant or otherwise authorized by Complainant to use its COUNTRYWIDE mark. Furthermore, the WHOIS database contains no information implying that Respondent is commonly known by the <countrywide-mortgage-e-site.info> domain name. The Panel infers that Respondent has no rights or legitimate interests in this domain name under 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <countrywide-mortgage-e-site.info>
domain name, which is confusingly similar to Complainant’s COUNTRYWIDE mark, to
present Internet users with links to websites maintained by Complainant’s
competitors. Respondent most likely
receives click-through fees in return for directing Internet users to these
websites. Such use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii)
and (iv) because Respondent is using a domain name that is confusingly similar
to the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.”);
see also Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
Respondent’s domain name incorporates Complainant’s mark in its entirety and directs Internet users to a website featuring Complainant’s mark. However, Respondent’s website also contains links to Complainant’s competitors. Respondent’s use of Complainant’s mark to divert Internet users to Complainant’s competitors amounts to disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
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 <countrywide-mortgage-e-site.info> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 20, 2006
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