National Arbitration Forum

 

DECISION

 

Countrywide Financial Corporation v. Bluehost.com, Powerful Web Hosting - 15GB Disc - 400GB Transfer

Claim Number: FA0609000804739

 

PARTIES

Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance G. Johnson, of Roylance Abrams Berdo & Goodman L.L.P., 1300 19th St. NW, Suite 600, Washington, DC 20036.  Respondent is Bluehost.com, Powerful Web Hosting - 15GB Disc - 400GB Transfer (“Respondent”), 1548 North Technology Way #D13, Orem, UT 84097.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2006.

 

On September 25, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <countrywidehomeloanssuck.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 September 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 19, 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@countrywidehomeloanssuck.com by e-mail.

 

A timely Response was received and determined to be complete on October 16, 2006.

 

On October 24, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A.     Complainant makes the following assertions:

 

1.      Respondent’s <countrywidehomeloanssuck.com>domain name is confusingly similar to Complainant’s COUNTRYWIDE HOME LOANS.

 

2.      Respondent does not have any rights or legitimate interests in the <countrywidehomeloanssuck.com> domain name.

 

3.      Respondent registered and used the <countrywidehomeloanssuck.com> domain name in bad faith.

 

B.     Respondent makes the following assertions:

 

The Response received from Respondent in this proceeding alleges that Respondent is not the true owner of the disputed domain name.  Respondent contends that it is a web hosting company, and that its name appears in the WHOIS record for the <countrywidehomeloanssuck.com> domain name because the true owner is using Respondent’s Domain Privacy option.  No other information regarding the disputed domain name has been received from either the Respondent or the individual Respondent asserts is the true owner of the disputed domain name.

 

FINDINGS

 

Complainant, Countrywide Financial Corporation, has used its registered COUNTRYWIDE marks since 1969, and its unregistered COUNTRYWIDE HOME LOAN service mark since 1995, in connection with offering home loan, banking and insurance services.  As evidenced by its use of the COUNTRYWIDE mark since July, 1994 on its website, located at the <countrywide.com> domain name, Complainant’s mark has attained secondary meaning as well.

 

Respondent, BlueHost.com, Powerful Web Hosting – 15 GB Disc – 400GB Transfer ** FREE DOMAIN REGISTRATION**, registered the <countryhomeloanssock.com> domain name on August 26, 2006.  Respondent’s disputed domain name resolves to a directory website featuring links to third parties and websites that offer services in direct competition with Complainant’s business.  Respondent does not use the disputed domain to provide news, commentary, or criticism related to Complainant or its business.

 

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 asserts rights in the COUNTRYWIDE mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,744,794 issued January 5, 1993).  The Panel finds that Complainant has established rights in this mark through its USPTO registrations.  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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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 also asserts common law rights in its COUNTRYWIDE HOME LOANS mark through extensive and continuous use of the mark since 1995 in connection with Complainant’s offering of home loan mortgage services under this mark.  As trademark registration is not necessary under the Policy to prove rights in a name, the Panel finds that Complainant has established significant secondary meaning with regards to the COUNTRYWIDE HOME LOANS as to have common law rights in the mark.  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).

 

The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s COUNTRYWIDE mark as it combines Complainant’s mark in its entirety with the terms “home,” “loans,” and “sucks,” the former two being descriptive of Complainant’s services and the latter of which is a common, generic term.  Previous panels have found that the addition of words that either have a relation to a complainant’s mark, or that are of a common, generic nature, do not negate confusing similarity between a mark and a disputed domain name.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also ADT Servs. AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat the complainant's confusing similarity argument).      

 

The Panel also finds that Respondent’s disputed domain name is confusingly similar to Complainant’s COUNTRYWIDE HOME LOANS mark under Policy ¶ 4(a)(i).  The addition of the term “sucks” does not negate the confusing similarity between Complainant’s mark and Respondent’s <countrywidehomeloanssuck.com> domain name.  See ADT Servs. AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat the complainant's confusing similarity argument); see also Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding that the complainant, owner of the Federally registered trademark ‘Cabela’s,’ and user of the domain name <cabelas.com> was entitled to relief under UDRP against the respondent for the bad faith registration and use of the domain name <cabelassucks.com> because “by using Complainant’s marks in its domain names, Respondent makes it likely that Internet users entering ‘Cabela’s’ into a search engine will find [<cabelassucks.com>] in addition to Complainant’s site <cabelas.com>.”).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that is 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) (holding that, where the complainant has asserted that the respondent has no 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 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).

 

The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii).  Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <countrywidehomeloanssuck.com> domain name and Complainant has asserted that Respondent is not authorized to use Complainant’s mark.  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 interest 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 asserts that Respondent lacks a bona fide offering of goods or services under Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Respondent’s website asserts that it is a business that offers services that are in direct competition with Complainant.  The Panel finds that such a use of Complainant’s mark violates Policy ¶ 4(c)(i) and / or Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); 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).

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s use of the <countrywidehomeloanssuck.com> domain name to offer services that compete with Complainant constitutes disruption and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  The Panel finds that Respondent registered the disputed domain name to redirect Internet users attempting to locate Complainant’s services to its own website.  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).

 

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 <countrywidehomeloanssuck.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

                                                           

                                                           

                                                                        John J. Upchurch, Panelist

                                                                        Dated:  November 7, 2006