IndyMac Bank F.S.B. v. Grant Eshback d/b/a
eMit Mortgage, Inc
Claim Number: FA0611000830934
PARTIES
Complainant is IndyMac Bank F.S.B. (“Complainant”), represented by B. Brett Heavner, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington, DC 20001, USA. Respondent is Grant Eshback d/b/a eMit Mortgage, Inc (“Respondent”), 4001 Lake Pass Lane, Suwanee, GA 30024, USA.
The domain names at issue are <emitmortgage.com>,
<emitmortgage.net>, <emitmortgage.biz> and <emitmortgage.info>, registered with Go Daddy Software.
PANEL
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.
Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 1, 2006; the National Arbitration Forum received a
hard copy of the Complaint on November 2, 2006.
On November 1, 2006, Go Daddy Software confirmed by e-mail to the
National Arbitration Forum that the <emitmortgage.com>,
<emitmortgage.net>, <emitmortgage.biz> and <emitmortgage.info> domain names are registered with Go
Daddy Software and that the Respondent is the current registrant of the
names. Go Daddy Software has verified
that Respondent is bound by the Go Daddy Software 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 November 2, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 22, 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@emitmortgage.com, postmaster@emitmortgage.net,
postmaster@emitmortgage.biz and postmaster@emitmortgage.info by e-mail.
A timely Response was received and determined to be complete on November
20, 2006.
On November 24, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard B. Wickersham, Judge (Ret.), as Panelist.
On November 28, 2006, an Additional Submission
was received here and complied with Supplemental Rule 7; and, was fully
considered by the Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
IndyMac is a federally chartered savings bank. IndyMac can be contacted via mail at 155 North Lake Avenue, Pasadena, California, 91101; via e-mail at marianne.churney@indymacbank.com; via fax at 626-535-6528; and via telephone at 800-669-2300.
For the purpose of this proceeding, IndyMac should be contacted through its counsel, B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., as follows:
E-mail:
b.brett.heavner@finnegan.com and leslie.gutowski@finnegan.com
Fax: 202‑408‑4400
Telephone: 202-408-4073
Mail: 901
New York Avenue NW, Washington, DC
20001
This dispute is properly within the scope of the UDRP because the registration agreement for the Domain Names incorporates the UDRP.
This dispute is subject to a mandatory administrative proceeding as provided
for in Section 4(a) of the UDRP because:
a.
The Domain Names are confusingly similar to Complainant's
federally registered E-MITS trademark.
b.
Respondent does not have any rights or a legitimate interest
in the Domain Names because each trades on the goodwill of Complainant's E-MITS
mark and Respondent’s use of the E-MITS mark is unauthorized. Respondent is not and has never been
licensed and/or otherwise authorized by Complainant to use its E-MITS mark.
c.
Respondent’s registration and use of the Domain Names is in
bad faith pursuant to Section 4(b) of the UDRP.
IndyMac is a leading mortgage lender and the 7th largest thrift in the
U.S. (measured by assets). In 2005,
IndyMac achieved net revenues of $1.1 billion, and in 2004, IndyMac had $752
million in net revenues. IndyMac is a
wholly owned subsidiary of IndyMac Bancorp, Inc., a public company traded on
the New York Stock Exchange (Symbol: NDE) with a market capitalization of
approximately U.S. $3.0 billion and approximately
$24
billion in assets.
IndyMac
is a leading technology-based mortgage banker with proprietary, award-winning
systems to facilitate automated underwriting and risk-based pricing on a
nationwide basis, among other things.
IndyMac offers multi-channel distribution of its mortgage products and
services through a nationwide network of mortgage brokers, mortgage bankers,
and community financial institutions, in addition to programs offered directly
to consumers and through realtors and home builders.
IndyMac services $110 billion of mortgage loans, and invests in single-family residential mortgage loans and mortgage-backed securities.
In addition to its core mortgage products and services, IndyMac is FDIC-insured, and offers a full array of Web-enhanced banking services including deposits, competitive CD and money market accounts, and online bill payment services.
IndyMac owns the trademark E-MITS that IndyMac uses in connection with software and online services for the purchase and sale of mortgage loans. Specifically, IndyMac’s E-MITS services allow real estate professionals to perform expanded mortgage services for their home-buying customers by submitting, underwriting, and pricing loans online.
IndyMac showcases its products and services, including its E-MITS services, on its main website accessible via the domain names <indymac.com> and <indymacbank.com>.
The E-MITS mark has been widely promoted among members of the general consuming public and financial and real estate professionals, and exclusively identifies IndyMac’s services. The E-MITS mark symbolizes the tremendous goodwill associated with IndyMac, and is a property right of incalculable value. Furthermore, due to wide and substantial use, the E-MITS mark has become famous in the financial and real estate communities.
IndyMac owns the following U.S. trademark registrations for its E-MITS mark:
a.
Registration No. 2,196,613 for the mark E-MITS in stylized
form, filed March 27, 1997, first used December 23, 1997, issued October 13,
1998, covering services in International Class 9 (computer software which
enables a user to electronically access an automated seller information and
processing system for the sale of mortgage loans, and accompanying
instructional documentation packaged therewith).
b.
Registration
No. 2,522,907 for the E-MITS mark in block letters, filed July 17, 1997, first
used December 23, 1997, issued September 22, 1998, covering services in
International Class 9 (computer software for the purchase and sale of mortgage
loans, transfer of data for processing mortgage loans, underwriting and pricing
of mortgage loans, and delivery of results of mortgage loan processing, all for
use on personal computers, computer networks, or a global communications
network, and instruction manuals).
c.
Registration No. 3,010,182 for the mark E-MITS in stylized
form, filed April 13, 2004, first used August 15, 1998, issued November 1,
2005, covering services in International Class 42 (computer software, namely
providing temporary use of non-downloadable software via the Internet for the
purchase and sale of mortgage loans, transfer of data for processing mortgage
loans, underwriting and pricing of mortgage loans, and delivery of results of
mortgage loans processing and related electronic instruction manuals; and
providing temporary use of non-downloadable computer software which enables a
user to electronically access an automated seller information and processing
system for the sale of mortgage loans, and accompanying electronic
instructional documentation).
IndyMac’s trademark rights in the E-MITS mark, based on its trademark registrations and on its common law rights acquired through the use of the E-MITS mark, long predate Respondent’s registration of the Domain Names.
Respondent is a mortgage broker who previously worked for Home America Mortgage, Inc., a former brokerage customer of Complainant and former user of Complainant’s E-MITS services.
Respondent registered the domain names <emitmortgage.com>, <emitmortgage.net>, <emitmortgage.biz> and <emitmortgage.info> on January 3, 2006 and/or January 4, 2006, many years after: (a) Complainant began using its E-MITS mark, (b) the effective dates of Complainant’s trademark registrations, and (c) the E-MITS mark became famous in the financial and real estate communities. Further, Respondent undoubtedly had knowledge of Complainant’s rights in its E-MITS mark by virtue of Respondent’s employment with a former mortgage broker customer of Complainant that used Complainant’s E-MITS services.
Respondent uses the domain name <emitmortgage.com> for a commercial website advertising his real estate brokerage services and providing mortgage loan services. Respondent’s website displays the trade name eMit Mortgage, Inc., which Respondent registered with the state of Georgia on January 9, 2006, after he registered the Domain Names.
Respondent uses the domain names <emitmortgage.net>, <emitmortgage.biz> and <emitmortgage.info>for commercial “pay-per-click” websites advertising categories relating to financial services (e.g., “Mortgage,” “Debt Consolidation,” “Loan Calculators”) that lead to “sponsored results” advertising the websites of Complainant’s competitors and other commercial websites.
The domain names <emitmortgage.com>, <emitmortgage.net>, <emitmortgage.biz> and <emitmortgage.info> are confusingly similar to Complainant’s E-MITS mark because each is comprised of a close variation of Complainant’s mark (“EMIT,” which omits the letter “s” and the hyphen) and the generic word “mortgage,” which aptly describes Complainant’s business. Misspelling Complainant’s E-MITS mark and combining it with a generic term are minor alterations insufficient to distinguish the Domain Names from Complainant’s mark. See Indymac Bank F.S.B. v. D Le Nom et al., FA 622020 (Nat. Arb. Forum Feb. 21, 2006) (finding the domain name <indymac-bank.com> confusingly similar to Complainant’s mark INDYMAC BANK because “Panels have consistently held that hyphens and generic top-level domains such as, “.com,” are irrelevant in determining whether a disputed domain name is confusingly similar to a complainant’s mark.”); see also Bank of America Corporation v. Franky Tong, FA 128074) (Nat. Arb. Forum Dec. 9, 2002) (finding the domain name <nationbank.com> confusingly similar to complainant’s NATIONSBANK mark despite respondent’s omission of the letter “s”).
Respondent’s registration and use of the domain name <emitmortgage.com> for a commercial website offering competing and/or closely related mortgage-related services does not constitute a bona fide offering of goods or services under the UDRP. Nor do Respondent’s activities constitute a legitimate noncommercial or fair use of the Domain Name under the UDRP. See, e.g., American Newland Communities, L.P. v. Jason Maniecki PA, FA 765698 (Nat. Arb. Forum Sept. 13, 2006) (holding respondent's use of the disputed names for a competing website is not a bona fide offering of goods and services or a legitimate noncommercial fair use); Reed Elsevier Inc. v. Carlos M. Alvarez d/b/a IT Lexis, FA 98249 (Nat. Arb. Forum Aug. 20, 2001) (finding respondent’s use of the domain name to offer competing services in the same general field as complainant does not constitute a bona fide offering of goods and services or legitimate noncommercial fair use under the UDRP); Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Ulexis a/k/a Lawfirm, FA 97684 (Nat. Arb. Forum Aug. 3, 2001) (finding no legitimate interest when respondent used the disputed domain name to offer similar/related services and to divert potential customers to its competing website).
Respondent’s registration and use of the domain names <emitmortgage.net>, <emitmortgage.biz> and <emitmortgage.info> for commercial pay-per-click websites advertising links to the websites of Complainant’s competitors and other commercial websites does not constitute a bona fide offering of goods or services under the UDRP or a legitimate noncommercial or fair use of the Domain Names under the UDRP. See, e.g., Indymac Bank F.S.B. v. Unasi Inc., FA 514785 (Nat. Arb. Forum Aug. 24, 2005) (“[R]espondent is using the confusingly similar domain names to operate websites that feature links to various competing and non-competing commercial websites, through which [r]espondent presumably receives referral fees. Such diversionary use does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).”); Indymac Bank F.S.B. v. D Le Nom d/b/a Names Xpress, IBC BVI, FA 622020) (Nat. Arb. Forum Feb. 21. 2006) (finding no legitimate interest in respondent’s use of the domain name <indymac-bank.com> for a pay-per-click website displaying links to the financial services of Complainant’s competitors because “[s]uch misleading use of the disputed domain name for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent is not and has not been commonly known by the Domain
Names. Further, Respondent’s use of the trade name eMit
Mortgage does not demonstrate any legitimate interest of Respondent in the
Domain Names because Respondent cannot justify his misappropriation of a
trademark in a domain name merely through use of that same mark in a trade
name, particularly when as in this case, the trade name post-dates the
registration of the infringing domain names.
If such were the case, domain name holders could freely pirate the
trademarks of others as domain names simply by using the disputed domain name
as a trade name. Court and UDRP Panels,
however, have rejected this position. See
Eurotech, Inc. Cosmos European Travels AG, 2002 U.S.
Dist. LEXIS 13615, at 31-32 (E.D. Va. 2002).
Respondent’s registration and use of the domain name EMITMORTGAGE.COM meet the bad faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s E-MITS mark as to the source, sponsorship, affiliation and endorsement of Respondent’s website, and the mortgage-related services advertised and offered on Respondent’s website. See, e.g., IndyMac Bank F.S.B. v. Domain Owner a/k/a Lee Wigod, FA 150814 (Nat. Arb. Forum May 1, 2003) (finding bad faith in respondent’s use of the disputed domain names for a mortgage-related website because “[R]espondent, like Complainant, is a provider of mortgage services and is therefore profiting from the user confusion created by its use of <chicagoloanworks.com>, <loanworkschicago.com> and <312loanworks.com>. The use of an infringing domain name to cause Internet user confusion for [r]espondent’s commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); Yahoo! Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (respondent’s use of the domain name <yahgo.com> for a directly competing, commercial website constituted bad faith); American Newland Communities, L.P. v. Jason Maniecki PA, FA 765698 (Nat. Arb. Forum Sept. 13, 2006) (finding bad faith in respondent’s use of the domain names <mirabayhomes.com> and <mirabayrealestate.com> that incorporate complainant’s MIRABAY mark to divert Internet users to its own commercial website promoting competing real estate services).
Respondent’s registration and use of the Domain Names meet the bad
faith element set forth in Section 4(b)(iii) of the UDRP. Specifically, Respondent disrupts Complainant’s
business by using the domain name <emitmortgage.com> to advertise his competing and/or
closed related services and by using the domain names <emitmortgage.net>, <emitmortgage.biz> and <emitmortgage.info> for pay-per-click sites providing links
to Complainant’s competitors.
Given Complainant’s federal registrations of its E-MITS mark, the fame
of Complainant’s E-MITS mark in the financial and real estate communities,
Respondent’s position as a mortgage broker and former employment with one of
Complainant’s brokerage customers, and his use of the Domain Names to offer
and/or advertise competing mortgage-related services, Respondent undoubtedly
knew of Complainant’s rights in its E-MITS mark prior to registering the Domain
Names. By registering the Domain Names
with knowledge of Complainant’s rights in its INDYMAC mark, Respondent acted in
bad faith. See IndyMac Bank, F.S.B.
v. Jason U Carpenter d/b/a Jason U Internet Inc, FA 474818 (Nat. Arb. Forum
June 24, 2005) (holding respondent’s registration of the domain names
<indymak.com> and <indimacloan.com> constitutes bad faith because
he had actual knowledge of Complainant’s marks as shown by respondent’s
pay-per-click website relating to Complainant’s business); see also Indymac
Bank F.S.B. v. Unasi Inc., FA 514785 (Nat. Arb. Forum Aug. 24, 2005).
Pursuant to Section 3(b)(xiv) of the Rules, Complainant agrees that its claims and remedies concerning the registration of the Domain Names, the dispute, or the dispute’s resolution shall be solely against the domain‑name holder, and waives all such claims and remedies against (a) the dispute‑resolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.
B. Respondent
The Respondent chooses to have this dispute heard before a single-member administrative panel as stated in the Complainant’s UDRP Rule 5(c)(iv).
The Respondent’s Domain name, <emitmortgage.com>, has altogether different spelling, punctuation, pronunciation, and capitalization than the Complainant’s trademark or service mark of E-MITS.
The words together of ‘emitmortgage’ bear no hyphen, and also no –S on the end of the word, further differentiating the two unlike marks.
The Respondent’s Domain name, <emitmortgage.com>, consists of the words ‘emit,’ meaning to issue money (exhibit 1), and also the word ‘mortgage,’ further defining the retail services of the Respondent’s company, which provides residential retail mortgage services, and is a Licensed Mortgage Broker in the state of Georgia, eMit Mortgage Inc. GA Residential Mortgage Licensee # 21518.
Respondent has never seen, or heard of the E-MITs trade name, before the initiation of this action. Nor has the Respondent ever had business dealings or otherwise with the Complainant (Indymac Bank).
Retail mortgage services are not closely related to wholesale lending. They are complementary businesses, and do not compete on any level.
The Respondent is the sole owner of the Georgia Corporation, eMit Mortgage, Inc, organized as an ‘S’ Corporation, and registered with the Secretary of State of Georgia.
Before any notice or response of the dispute, the Respondent had been utilizing the domain in question as a form of advertising to retail mortgage clients, Realtors, builders, as well as past clients utilizing various marketing materials, as well as marketing the company’s domain by appearing at various Real Estate offices and the like.
The Respondent has been known under the domain name, which is exactly (excluding ‘Inc.’) as the company is listed with the Secretary of State, and the Georgia Department of Banking & Finance.
The Respondent has not intended to divert customers of Complainant or tarnish the trademark of Complainant. Beside the obvious difference of names, there is no variation of the Complainant’s mark of E-MITS in a direct domain name. (i.e. <e-mits.com> or <e-mitsmortgage.com> either do not exist, or do not point a user to any website).
Therefore, any user/customer of the E-MITS Software must directly log into Indymac’s (Complainant’s) website, bearing no resemblance to any variation of Respondent’s domain name, and thus further removes any confusion to falsely direct or steer Complainant’s wholesale clients to Respondent’s Retail website.
The Domain names should not be considered as having been registered or used in bad faith. UDRP Rule 3(c)(ix)(3); UDRP Policy ¶ 4(a)(iii).
Respondent has offered Complainant the domain names for valuable consideration of exactly the Respondent’s documented out-of-pocket costs, directly related to the domain name, including the marketing of the domain name, emails attached to, and marketing of such website. All costs and fees are reasonable and documented. Complainant has refused this offer, and decided to take this case before the National Arbitration Forum.
The Respondent has registered the domain name in order to promote his business, and not to prevent the owner of the trademark or service mark in question from reflecting the mark in a corresponding domain name—noting that there is little resemblance or possibility for confusion in the two.
The Respondent has registered the domain name primarily for the purpose of informing their retail mortgage customers, and not for the purposes of disrupting the business of the Complainant, which is neither a competitor nor vendor of Respondent.
Respondent has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
The other domain names registered by Respondent have been directed to commercial pay-per-click sites advertising retail mortgage companies and other companies other than Respondent’s without Respondent’s knowledge. Upon learning that they did not point to the Respondent’s main internet site, Respondent was informed by web hosting company that the domains were locked as an action of this case. The Respondent receives no compensation from any pay-per-click site anywhere, and is unknowledgeable as to the procedures of the pay-per-click business.
Furthermore, it should be noted that the addition of .net, .biz, .info added onto the end of emitmortgage do not closely relate the Respondent’s domain name to the Complainant’s mark.
The Respondent’s logo is in no way similar to the Complainant’s mark either in coloring, design, shape, or any other distinguishable characteristic.
The Respondent respectfully requests that the Administrative Panel deny the remedy requested by the Complainant.
In addition to the information contained within this document and the exhibits, Complainant submits the following points of interest to consider:
[a] Complainant and Respondent have never has business dealing or otherwise, nor has the Respondent ever known of the mark of Complainant. No ill-will or bad faith was/is ever intended by Respondent.
[b] Respondent has never received any types of communication (electronic or otherwise) meant for Complainant, showing that there has been no confusion or misdirection to business partners or anyone else using the internet to contact Complainant.
[c] Respondent has been utilizing the domain name as a marketing tool for their clients in promoting their retail mortgage services in Georgia, and not any wholesale lending, or competing business of Complainant.
There is enough differentiation between Respondent’s domain name and Complainant’s mark as not to confuse anyone, or show any bad faith against Complainant.
The Respondent has registered his company’s domain names as to promote his business of the same name. There are no other companies with the name eMit Mortgage, or any mortgage companies utilizing the English word ‘emit’ in their name registered in the United States, and the Respondent was extremely careful in choosing this name, so as not to confuse anyone.
Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument. UDRP Rule 5(c)(vii).
C. Additional Submissions
Respondent’s Response does not change the basic facts that entitles
IndyMac to the requested relief.
(a)
IndyMac has
prior protected rights in the E-MITS mark; and,
(b)
The domain
names, <emitmortgage.com>,
<emitmortgage.net>, <emitmortgage.biz> and <emitmortgage.info>
(the Domain Names”) are confusingly similar to the E-MITS mark; and,
(c)
Respondent uses
the domain names for commercial websites that advertise competing services.
Unable to rebut IndyMac’s clear showing of entitlement to relief, Respondent resorts to an assortment of frivolous arguments but none of the Respondent’s claims has any merit.
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.
FINDINGS
Complainant asserts that it has registered the E-MITS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,196,613 issued October 13, 1998; Reg. No. 2,522,907 issued September 22, 1998; Reg. No. 3,010,182 issued November 1, 2005) and that it uses this mark in connecttion with “software and online services for the purchase and sale of mortgage loans.” The Panel finds that these trademark registrations sufficiently demonstrate Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Complainant also asserts that the <emitmortgage.com>,
<emitmortgage.net>, <emitmortgage.biz> and
<emitmortgage.info> domain names are confusingly similar to its E-MITS
mark because each domain name contains the entire mark, removes the hyphen and
letter “s,” and adds the term “mortgage” followed by a generic top-level
domain. The Panel finds that none of
these alterations are distinguishing differences and concludes that the
disputed domain names are confusingly similar to the mark under Policy ¶
4(a)(i). See Gillette
Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that
the additions of the term “batteries,” which described the complainant’s
products, and the generic top-level domain “.com” were insufficient to
distinguish the respondent’s <duracellbatteries.com> from the
complainant’s DURACELL mark); see also Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level
domains are irrelevant for purposes of the Policy); see also Universal City
Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding
that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE
mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it).
The Panel notes that Complainant
must first make a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and
then the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name); see also AOL LLC v.
Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must
first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then
the burden shifts to Respondent to show that it does have rights or legitimate interests
in the subject domain names.”).
Complainant maintains that despite
the WHOIS information listing “Grant Eshback d/b/a eMit Mortgage Inc” as the
registrant of the disputed domain names, Respondent is not commonly known by
the disputed domain names. Complainant
also argues that Respondent is a former mortgage broker affiliated with one of
Complainant’s customers and thus its incorporation of a business under the
trade name “eMit Mortgage Inc” does not give it rights or legitimate interests
in the disputed domain names, as Complainant has not authorized or licensed
Respondent to register a domain name incorporating Complainant’s E-MITS mark or
any variation. The Panel agrees that
Respondent is not commonly known by the disputed domain names and holds that
Respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(c)(ii). See
Hewlett-Packard Co. v. HP Supplies, FA 282387 (Nat. Arb. Forum July 22,
2004) (“The Panel finds, because of the prominence of the HP mark, that
Respondent’s registration under the ‘HP Supplies’ name does not establish that
Respondent is commonly known by the <hpsupplies.com> domain name.”); see
also MB Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb.
Forum Mar. 11, 2005) (“[D]espite being listed in the WHOIS information as
‘mbfinancialmortgage.com,’ Respondent is not commonly known by this domain name
nor is [it] authorized to register domain names featuring Complainant’s MB
FINANCIAL mark.”).
Complainant further contends that Respondent is using the <emitmortgage.com> domain name to advertise his own real estate and mortgage brokerage services. Complainant provides evidence that the other disputed domain names resolve to a commercial web directory featuring links to Complainant’s competitors in the financial services industry. The Panel finds that Respondent’s use of the disputed domain names to promote its own competing financial services, as well as the services of Complainant’s competitors, demonstrates that Respondent is not using the disputed domain names 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 Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also The Royal Bank of Scot. Grp plc et. Al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant claims that upon
contacting Respondent regarding the transfer of the disputed domain names,
Respondent requested compensation in exchange.
Respondent also alleges that it requested compensation, and provides
evidence that it asked specifically for $6,794.04, reflecting its registration,
maintenance and marketing costs for the disputed domain names. Nevertheless,
the Panel finds that Respondent’s offer for compensation is in excess of its
actual out-of-pocket costs and concludes that Respondent’s offer demonstrates
bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Prijic, FA
112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent
has sought consideration in excess of its out-of-pocket costs, the Policy makes
clear that only costs related to the domain name are to be considered, and not
those related to the creation or maintenance of the connected website.”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
In addition, the Panel finds that Respondent’s diversion of Internet users seeking Complainant’s products to its own website and the websites of Complainant’s competitors for commercial gain constitutes bad faith registration and use under Policy ¶ 4(b)(iv), because Respondent likely profits from redirecting consumers to its own and other websites and is, therefore, taking advantage of the confusing similarly between Complainant’s E-MITS mark and the disputed domain names. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).
The Panel also finds that
Respondent has demonstrated bad faith registration and use pursuant to Policy ¶
4(b)(iii) by linking the disputed domain names to its own and competing
financial services websites, as Respondent is disrupting Complainant’s business
under the E-MITS mark. See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO 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); see also Puckett,
Individually 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)).
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 <emitmortgage.com>,
<emitmortgage.net>, <emitmortgage.biz> and <emitmortgage.info> domain names be TRANSFERRED from
Respondent to Complainant.
___________________________________________________
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: December 7, 2006
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