SCI Services, Inc. v. Demand
Domains, Inc.
Claim Number: FA0908001277774
PARTIES
Complainant is SCI Services, Inc. (“Complainant”), represented by Eric
J. Shimanoff, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saxonmortageonline.com>, registered
with Enom.
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.
Bruce E. O’Connor as Panelist.
PROCEDURAL HISTORY
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 5, 2009; the
National Arbitration Forum received a hard copy of the Complaint on August 6, 2009.
On August 5, 2009, Enom confirmed by e-mail to the National
Arbitration Forum that the <saxonmortageonline.com> domain name
is registered with Enom and that the
Respondent is the current registrant of the name. Enom
has verified that Respondent is bound by the Enom
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 August 14, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 3, 2009 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@saxonmortageonline.com
by e-mail.
A timely Response was received and determined to be complete on September 3, 2009.
An Additional Submission was received from Complainant on September 9, 2009 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on September 10, 2009 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On September 11, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. O’Connor as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
itself and through its subsidiaries and affiliated companies such as Saxon
Mortgage Services, Inc., is a residential mortgage servicer. The company is headquartered in
Complainant is the owner of the following service mark registrations in the United States: SAXON, Reg. No. 2,028,654, SAXON MORTGAGE, INC., Reg. No. 2,078,604, SAXON HOME MORTGAGE, Reg. No. 3,331,198, and SAXON CAPITOL INC., Reg. No. 3,106,618 (collectively, the “SAXON marks”).
Complainant and its predecessors-in-interest have used the SAXON marks
in commerce since at least as early as 1992, and the marks currently remain in
use in the
Complainant operates websites located at <saxonmortgage.com> and <saxononline.com>, which provide information about and access to Complainant’s mortgage services.
Complainant has spent large sums of money and invested significant time
and effort in advertising and promoting its services under its SAXON marks and
has developed substantial public recognition and incalculable goodwill in those
marks.
Respondent is the owner of the domain name <saxonmortageonline.com>.
The domain name at issue features Complainant’s SAXON mark in its
entirety and merely adds the misspelled word “mortage” in place of the word
“mortgage,” and the word “online.” The
addition of generic or descriptive words, especially words that describe
Complainant’s services and where they can be found, to the domain name at issue
does nothing to distinguish that domain name from Complainant’s mark.
The domain name at issue features the bulk of Complainant’s SAXON
MORTGAGE, INC. mark and misspells the word “mortgage,” using the word “mortage”
instead. Panels have regularly found
that a disputed domain that contains a misspelled version of a complainant’s
mark, especially when the mark is misspelled by only one letter,
creates a confusing similarity between the disputed domain name and the
complainant’s mark.
The domain name at issue also is confusingly similar to Complainant’s
SAXON HOME MORTGAGE and SAXON CAPITAL INC. marks.
The addition of the gTLD “.com” is irrelevant in distinguishing a
disputed domain from a registered mark.
Respondent is not using the domain name at
issue in connection with any bona fide offering of goods and services
because the domain name resolves to a website that only contains links to
third-party websites that provide services that compete with Complainant’s
mortgage services.
Upon information and belief, SAXON is not
part of Respondent’s personal name.
Additionally, upon information and belief, Respondent does not actually
engage in any business or commerce under the name SAXON and Respondent is not
commonly known by that name.
Respondent is not a licensee of Complainant, nor has Respondent ever
been authorized by Complainant to register or use the domain name <saxonmortageonline.com> or the
SAXON marks. Indeed, Respondent has no
relationship whatsoever to Complainant.
Lastly, Respondent does not have any legitimate rights in the domain
name at issue, given the prior use and registration of Complainant’s marks by
Complainant and its affiliates and predecessors-in-interest. Complainant’s prior use and
registration of such marks give Respondent actual, or at a minimum constructive,
knowledge of such use and registration.
The domain name at issue resolves to a website that
provide links to commercial websites that offer competing services to
Complainant’s services. This is strong
evidence of bad faith.
Presumably, Respondent receives a financial benefit in the form of
click-through fees from these competitors of Complainant, a further indication
of bad faith.
Because Complainant’s marks are well known and registered at the United
States Patent and Trademark Office, Respondent is presumed to have had
constructive knowledge of Complainant’s mark at the time it registered the
confusingly similar domain name. This
knowledge indicates Respondent’s bad faith use and registration.
The fact that Respondent used a common misspelling of Complainant’s
services is further evidence of prior knowledge. Such “typosquatting” improperly targets
Internet users who commit typographical errors and is strong evidence of bad
faith.
Furthermore, this case is the
latest example of Respondent’s cybersquatting activity. A reverse WHOIS search reveals that
Respondent has registered numerous domain names, including domain names that
are confusingly similar to such well-known marks as BLUEFLY
(<bluefy.org>), HORIZONS UNLIMITED (<horizonsunlimited.org>), SPAGHETTI
FACTORY (<spaghettifactory.org>);
Moreover, there are at least nine reported decisions in just the past
few years in which Respondent was found to have registered and used a domain
name in bad faith. These decisions are
as follows:
|
Case Name |
Domain Name |
|
Sanofi-Aventis v. Demand Domains, Inc., No. D2008-1484 (WIPO Dec. 18, 2008) |
<ambien-drugstore.com> |
|
American Airlines, Inc. v. Demand Domains, Inc., FA 1224762 (Nat. Arb. Forum Nov. 23,
2008) |
<aavcations.com> |
|
|
<davisandhenderson.com> |
|
Davis Vision, Inc. v. Demand Domains, Inc., FA 1142731 (National Arb. Forum Mar. 26,
2008) |
<davisvison.com> |
|
Chivas Brothers Limited et al. v. Demand Domains, Inc., No. D2007-1789 (WIPO Feb. 5, 2008) |
<chivas-regal.com> |
|
AXA SA v. Whois Privacy Protection Service, Inc., Demand Domains,
Inc., No. D2007-1382 (WIPO
Jan. 29, 2008) |
<axaonline.net> |
|
Ami James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) |
<amijames.com> |
|
Peek & Cloppenburg KG v. Whois Privacy Protection Service, Inc./Demand Domains, Case No. D2007-0019 (WIPO Mar. 15, 2007) |
<peekundkloppenburg.com> |
|
The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and
Privilege Insurance Company Limited v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum Aug. 2, 2006) |
<privelage.com> |
These prior decisions further support a finding of Respondent’s bad
faith here.
In addition to these decisions, at least nine other UDRP Complaints
have been filed against Respondent, which resulted in transfer of the disputed
domain name. However, instead of facing
a decision on the merits, and an inevitable finding of bad faith, in those
instances Respondent instead consented to the transfer of the disputed domain
name.
However,
prior panels have found that such an offer to transfer a disputed domain name
without an admission of liability is insufficient to overcome a finding of bad
faith. Such precedent is especially applicable here where Respondent’s cybersquatting
activities are so readily apparent and should be curtailed. Thus, any offer by Respondent to transfer the
domain name at issue to Complainant should not preclude the Panel from
analyzing each of the factors in turn and finding bad faith.
B. Respondent
Respondent is the registrant of the domain name <saxonmortageonline.com>.
Respondent has a policy against assuming registration or holding
domains in derogation of legitimate rights holders. At the time Respondent assumed registration
of the domain name <saxonmortageonline.com>,
it was unaware that it had assumed registration of a domain name that might
conflict with Complainant’s alleged trademark rights. In fact, Respondent was not aware of
Complainant’s alleged trademark rights until Respondent received the current
UDRP action filed by Complainant.
Complainant did not contact Respondent directly regarding its concerns
with Respondent’s registration of the <saxonmortageonline.com>
domain name. Complainant instead filed the current UDRP action. Had Complainant
contacted Respondent prior to initiating this UDRP complaint, Respondent would
have reviewed Complainant’s allegations and responded accordingly.
On August 17, 2009, after receiving and reviewing a copy of the Amended
Complaint received by e-mail from Complainant’s counsel, a representative for
Respondent contacted the counsel for Complainant by email in an effort to
amicably resolve the current dispute. Complainant’s requested relief in the
complaint is transfer of the domain name at issue. In an effort to quickly
resolve this issue, respondent offered immediate and free transfer of that
domain name. Respondent’s generous offer
to settle the matter quickly and amicably was ignored and not acknowledged.
Representative for Respondent once again contacted the counsel for
Complainant by email on August 21, 2009, offering immediate and free transfer
of the domain name at issue to resolve the current dispute in an amicable and
expeditious manner. Again, counsel for
Complainant did not bother to reply to Respondent’s good faith settlement
offer.
On August 28, 2009, representative for Respondent attempted to contact
counsel for Complainant by telephone, following up on earlier attempts to reach
resolution and settlement of the UDRP complaint by once again offering free and
immediate transfer of the domain name at issue to Complainant. A voice message
was left with counsel for Complainant, asking for a return call and offering to
put counsel for Complainant in touch with counsel for Respondent. This third
attempt at amicable resolution was once again not acknowledged, and no return
telephone call or other communication was ever received from Complainant’s
counsel.
Counsel for Respondent made one final attempt to assist Complainant in
the immediate transfer of the domain in an email sent to counsel for
Complainant on August 31, 2009. Counsel for Respondent reiterated the generous
offer for immediate and free transfer of the domain name at issue is an effort
to resolve this matter without the lengthy process of an administrative
proceeding. Counsel for Complainant would not even acknowledge receipt of
Respondent’s settlement offer as was requested by counsel for Respondent.
Respondent does not agree with Complainant’s allegations that it
registered the domain name at issue in bad faith with prior knowledge that it
might infringe on Complaint’s alleged trademark rights. Respondent had no
knowledge of Complainant’s alleged trademark rights nor that its
use of that domain name allegedly infringed those rights.
Complainant alleges that “Respondent has
registered numerous domain names, including domain names that are confusingly
similar to such well-known marks as” <bluefy.org>,
<horizonsunlimited.org>, <spaghettifactory.org>,
<americasgottalent.org>, <hiltonhonores.com> and
<hlflife.com>.
Complainant’s allegations are improper and false. Respondent is NOT the listed
registrant for these domains. Use of these listed domains to which Respondent
is not the registrant is obviously Complainant’s attempt to falsely cast
Respondent in a negative light. While the Respondent may be the
registrant for several domains, Respondent has a clear, strict policy of not
assuming registration of domains that might conflict with third party
intellectual property rights. Futhermore, the registration of more than one
generic or descriptive domain name is not a clear indication of bad faith. Respondent is not the registrant of all of
those domains listed by Complainant in one of its Exhibits; however, even if
Respondent is the registrant of those domains, the list of domains are clearly
generic or descriptive which supports Respondent’s contention that it has a
policy against registering domains in derogation of third party rights. This
further supports Respondent’s argument that it was unaware of Complainant’s
alleged trademark rights in the domain name at issue when it assumed
registration. Complainant’s use of a reverse WHOIS search has perpetuated
false evidence against the Respondent and such evidence should be stricken from
the Complaint.
Despite Respondent’s repeated attempts to resolve the present matter in
a quick and amicable fashion, Complainant made no effort to acknowledge receipt
of Respondent’s multiple offers to transfer the domain name at issue. Respondent’s
attempts to settle this matter were made with good faith intent. Throughout
this dispute, Respondent has acted with the utmost good faith, responding
promptly upon receipt of the current UDRP action and offering immediate
transfer of the domain name at issue on several occasions, each without the
courtesy of a reply from Complainant.
Respondent would still like to reach a resolution in this matter and
again extends its offer to Complainant for immediate transfer of the domain
name at issue. Respondent is perplexed why Complainant has failed to respond to
its repeated offer, which would put Complainant in control of the <saxonmortageonline.com> domain
name much sooner than waiting for the Panel to reach the same decision.
Complainant’s only requested remedy in the
UDRP complaint is transfer of the domain name at issue, and Respondent has
agreed to grant Complainant’s requested remedy through repeated offers to
transfer the domain, to no avail.
In light of the foregoing, Respondent respectfully requests that the
Panel dismiss the complaint inasmuch as Respondent has acted only in good
faith. Upon dismissal, Respondent agrees to immediate transfer of the <saxonmortageonline.com> domain
name to Complainant.
In the alternative, Respondent respectfully requests that the Panel
refrain from making any formal finding that Respondent acted in “bad faith.”
Rather, Respondent respectfully requests that the Panel simply endorse
Respondent’s offer to transfer the domain name at issue to Complainant.
C. Additional Submission of Complainant
It is apparent that Respondent has engaged in a pattern of cybersquatting that must be deterred. It is undisputed that Complainant has satisfied paragraphs 4(a)(i) and (ii) of the Policy. With respect to paragraph 4(a)(iii) of the Policy, Respondent’s Response has done nothing to counter the overwhelming evidence that Respondent registered and used the domain name at issue in bad faith. While some other panels have elected to forego performing an analysis of bad faith merely because this Respondent offered to transfer the domain name to the complainant, such an approach is contrary to the Rules and Policy, which provide that the panel must make formal findings if a respondent denies one of the required elements such as bad faith, as Respondent here has done. Moreover, failing to make a determination of bad faith here will allow this Respondent to continue in its pattern of cybersquatting without any deterrence. Such an approach surely cannot be in line with the underlying goals of the Policy and Rules.
D. Additional Submission of Respondent
As Complainant’s requested remedy in the UDRP complaint is transfer of
the domain name at issue, and Respondent has agreed to grant Complainant’s
requested remedy Respondent believes that the current situation is one of a
unilateral consent to transfer, and respectfully requests that the Panel
refrain from making any formal finding that Respondent acted in “bad faith.”
Rather, Respondent respectfully requests that the Panel simply endorse Respondent’s
offer to transfer the <saxonmortageonline.com>
domain name to Complainant.
FINDINGS
Complainant has established rights in the
SAXON marks by reason of its trademark registrations.
Complainant requests transfer of the domain
name at issue. Respondent requests
dismissal of the Complaint followed by its voluntary transfer of the domain
name, or alternatively consents to the transfer without an admission that
Complainant has satisfied ¶ 4(a)(iii) of the Policy.
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.”
The Panel will not grant Respondent’s request for dismissal of the Complaint, for the reasons stated in Sanofi-Aventis v. Demand Domains, Inc., D2008-1484 (WIPO Dec. 18, 2008) that is discussed and quoted in detail in Complainant’s Additional Submission (“The Respondent has asked the Panel to dismiss the Complaint because, it says, it has acted in good faith. Once the Complaint has been dismissed, it says that it will then transfer the Domain Name to the Respondent. Is that promise sufficient for the Panel to terminate the proceeding, on the grounds that it has become ‘unnecessary to continue the administrative proceeding’ (Rules, Paragraph 17(b))? What if the Panel dismissed the Complaint (or more correctly, terminated the proceeding under Paragraph 17(b) of the Rules), and the Respondent then failed to honor its promise to transfer the Domain Name to the Complainant? The Panel does not regard the Respondent’s promise as sufficient to render the continuation of the proceeding unnecessary. The Respondent’s proposal was itself predicated on the Panel accepting the Respondent’s unsupported assertion that it acted in good faith in registering and using the Domain Name, and, for the reasons that appear below, the Panel does not accept that assertion.”)
But, Respondent has in the alternative consented to transfer of the domain name. Where a respondent has not contested the transfer of the disputed domain name, but instead agrees to transfer the domain name in question to the complainant, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the domain name in issue. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Some panels in other UDRP proceedings have concluded that there should be a decision
on the merits by the panel. Those panels
have found that the “consent-to-transfer” approach is but one way for cybersquatters
to avoid adverse findings against them. See Graebel Van Lines,
Inc. v.
The Panel disagrees with the panels in these
other UDRP proceedings. Let it be assumed that the Panel finds
that Complainant has failed to carry its burden of proof of bad faith under ¶
4(a)(iii) of the Policy. In that event, the Panel could not transfer
the domain name even though Respondent had consented to the transfer. Such a consequence would be contrary to the
request of the Complainant for the transfer and to the consent of the
Respondent to the transfer.
See
also Tractor Supply Co. v. Tex. Int’l Prop. Assocs. NA NA, D2008-1547 (WIPO Dec. 12,
2008) (“[P]aragraph 4(i) of the Policy limits the remedies of
Complainant, to either cancellation or transfer of the disputed domain
name(s). The consent to transfer gives
the Complainant the relief to which it is entitled and that the Panel is
authorized to give – nothing less, nothing more. If Respondent is to be
discouraged from its conduct, Complainant and other complainants must seek
relief under law other than the Policy, through actions in other forums. Why
should any such forum give any weight to the findings of this or any other
Panel under the Policy in such actions?”); Citigroup
Inc. v. Tex. Int’l Prop. Assocs. NA NA, FA0806001210904 (Nat. Arb. Forum
August 5, 2008) (“Judicial economy dictates that the Panel should simply
proceed to its decision since there is no dispute between the parties …
A panel’s only purpose in rendering substantive
Paragraph 4(a) findings is relegated to that end, and that end alone. What
amounts to advisory opinions are not authorized by the Policy, Rules, or
otherwise.”).
DECISION
Accordingly, it is Ordered that the <saxonmortageonline.com> domain name
be TRANSFERRED from Respondent to Complainant.
Bruce E. O’Connor, Panelist
Dated: September 25, 2009
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