Jersey Mortgage Company v. Advisors Mortgage Group, LLC
Claim Number: FA0112000102737
Complainant is Jersey Mortgage Company, Cranford, NJ (“Complainant”) represented by Jeffrey Kenny. Respondent is Advisors Mortgage Group, LLC, Red Bank, NJ (“Respondent”) represented by Stephen H. Sturgeon, Law Offices of Stephen H. Sturgeon & Associates, PC.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jerseymortgage.com>, registered with Domaindiscover.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge they have no known conflict in serving as Panelists in this proceeding. Hon. James A. Carmody, Hon. H. Curtis Meanor and Hon. Carolyn Marks Johnson sit as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 5, 2001; the Forum received a hard copy of the Complaint on December 7, 2001.
On December 10, 2001, Domaindiscover confirmed by e-mail to the Forum that the domain name <jerseymortgage.com> is registered with Domaindiscover and that the Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 December 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2001 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 firstname.lastname@example.org by e-mail.
Respondent request and was granted a twenty day extension for filing a Response with the consent of the Complainant. The new Response deadline was January 20, 2002.
An untimely Response was received and determined to be complete on January 22, 2002.
On February 12, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. James A. Carmody, Hon. H. Curtis Meanor and Hon. Carolyn Marks Johnson as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this case:
Complainant has rights in the JERSEY MORTGAGE COMPANY mark contained within the domain name registered by Respondent. Complainant urges that the domain name in issue is identical to or confusingly similar to Complainant’s mark. Further, Complainant takes the position that Respondent has no rights to or legitimate interests in the mark contained in the disputed domain name. In addition, Complainant urges that Respondent acted in bad faith in registering and using the disputed domain name.
B. Respondent filed an untimely Response in this Proceeding. Respondent submitted its
Response January 22, 2002—even after an extension had been granted. The Panel has discretion as to whether or not it should consider a Response that arrives late. See Telstra Corp. Ltd. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist); see also Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (without an adequate timely filed Response, all reasonable inferences of fact in the allegations of the Complaint will be taken as true).
In the interest of making a decision based on the merits rather than on what might be taken to be a perceived procedural deficiency, the Panel reviewed the Response of the Respondent prior to reaching a Decision.
Respondent, Advisor’s Mortgage Group, LLC, takes the position that Complainant cannot sustain its burden of showing a clear abuse of the UDRP rules and policy by the Respondent. Instead, Respondent urges, “the purpose of the ICANN UDRP is to deal with simple, clear, abusive registrations of domain names and not complex trademark disputes and not injection of the Panel’s views that someone should not be doing this since it might be wrong or unfair,” citing to America Online, Inc. v. John Deep d/b/a Buddy USA, Inc., FA 96795 (Nat. Arb. Forum May 14, 2000).
Further, Respondent contends that Complainant cannot show an interest or right to a trademark in “jerseymortgage;” that Complainant “did not provide adequate proof” that Respondent “did not have any legitimate interest in the domain name” and, further, that Complainant cannot show that Respondent acted in bad faith at the time of the registration and at the time of Respondent’s use of the domain name.
Complainant is a business entity organized under New Jersey Law as a corporation that is licensed to do business under the names NEW JERSEY MORTGAGE COMPANY OF NEW JERSEY, INC. and NEW JERSEY MORTGAGE COMPANY. Complainant was organized August 19, 1988, under New Jersey Statutes to engage in any activity within the “purposes for which corporations may be organized under the ‘New Jersey Business Corporations Act.’” Thereafter, on July 1, 2001, Complainant received License Number L029109 from the State of New Jersey, Department of Banking and Insurance to act as a licensed lender, a secondary mortgage loan licensee and as a mortgage banker.
Respondent Advisors Mortgage Group, LLC, filed the domain name in issue April 18, 2001, showing an address at 407 Pine Street, Red Bank, New Jersey.
Both Complainant and Respondent are engaged in providing real estate financing in the state of New Jersey. Both provide online residential mortgage applications and both are located and doing business in the State of New Jersey.
Respondent has acknowledged that it has received email intended for Complainant.
Respondent Advisors Mortgage Group LLC has never been known as NEW JERSEY MORTGAGE COMPANY and has not been licensed to work with or associated with Complainant.
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) 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 to or Confusingly Similar
Complainant asserts that it has common law rights to the JERSEY MORTGAGE COMPANY trademark based on Complainant's use from as early as 1988 of the trademark in connection with its mortgage company, JERSEY MORTGAGE COMPANY OF NEW JERSEY, INC. The Panel may be satisfied with Complainant's assertion of rights to the mark based on use in Commerce and is not required to find that Complainant has completed government registration of the mark. The Panel finds that Complainant has common law rights to the mark. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).
The Panel also notes that Complainant provided the Panel with its license from the State of New Jersey, Department of Banking and Insurance that authorized JERSEY MORTGAGE COMPANY OF NEW JERSEY, INC. to operate as JERSEY MORTGAGE COMPANY.
Complainant asserts that the <jerseymortgage.com> domain name is identical or confusingly similar to its JERSEY MORTGAGE COMPANY trademark. The Panel may conclude that the domain name in issue is confusingly similar to Complainant's mark, notwithstanding the deletion of the space between the two words, the ommission of the word “company” and the addition of the ".com" TLD. E.g., Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); Minnesota State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).
Additionally, Complainant offered evidence that its customers have been confused by the <jerseymortgage.com> domain name. The Panel may find that this actual confusion demonstrates that the disputed domain name is so confusingly similar that a reasonable Internet user would assume that the domain name is somehow affiliated with Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating: “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).
Respondent claims that Complainant failed to establish that its rights to the JERSEY MORTGAGE COMPANY mark give Complainant the right to claim exclusive rights to to the mark and the right to prevent Respondent from using its <jerseymortgage.com> domain name. Respondent urges that the domain name (as well as the alleged mark) are a combination of geographic terms, one of which identifies the location of a product and the other of which is a generic description of the product. Such combinations, standing alone, are not protected under Policy ¶ 4(a)(i). See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com> since that domain name contained two generic terms and was not exclusively associated with Complainant's business); see also Travel Berkeley Springs, Inc. v. Glens Country Estate, FA 96347 (Nat. Arb. Forum Feb. 16, 2001) (finding that Complainant could not have superior right to use of “Berkeley Springs” to the exclusion of other entities, particularly where there were many other businesses that used geographic names as part of their business name); see also Lucky Money, Inc. v. ilovesschool.com, FA 96383 (Nat. Arb. Forum Mar. 9, 2001) (finding Complainant cannot claim exclusive common law rights to an expression - Lucky Money – comprised of generic terms).
These cases involving generic terms are distinguishable from those governing the facts in this case. JERSEY MORTGAGE is more than a geographic designation and type of product. It is the mark of a legitimate business entity duly licensed by the State of New Jersey to do business in New Jersey using the name JERSEY MORTGAGE COMPANY OF NEW JERSEY, INC. or JERSEY MORTGAGE COMPANY. Further, Complainant is a legal corporate entity, whose name and right to do business under that name is part of a formal legal corporate structure. Complainant has shown that its customers have been confused by Respondent’s <jerseymortgage.com> domain name. This actual confusion demonstrates that the disputed domain name is so confusingly similar that a reasonable Internet user would assume that the domain name is somehow affiliated with Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been satisfied.
Rights to and Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the <jerseymortgage.com> domain name because Respondent was not using a corresponding name to conduct business prior to registering the infringing domain name. Complainant adds that Respondent was prevented from using the name in business based on Complainant's business registration with the state. The Panel can conclude that a Respondent lacks rights and legitimate interests when a Respondent is not commonly known by a domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Complainant further asserts that Respondent is using the <jerseymortgage.com> domain name to intentionally mislead and divert consumers away from Complainant and to tarnish Complainant's mark in conflict with the provisions of Policy ¶ 4(c)(iii). The Panel may determine that Respondent lacks rights and legitimate interests because of its competitive use of Complainant’s identification in the disputed domain name in order to engage in profit-making business for Respondent. See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Respondent asserted that it has rights and legitimate interests in the <jerseymortgage.com> domain name because it has been using the domain name in connection with a bona fide offering of goods prior to any notice of a dispute over the <jerseymortgage.com> domain name. The Panel may find that a Respondent meets its burden to demonstrate rights or legitimate interests pursuant to Policy ¶ 4(c)(i) where it shows a legitimate interest in a domain name by website development. See 3Z Prod. v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000).
The Panel finds, however, that a different result is necessary here. Although Respondent registered the domain name and used it prior to Complainant’s receipt of a license, the Complainant conducted business operations some fourteen (14) years in the same general market area as Respondent using the name Respondent later claimed as its own in a domain name. Complainant’s business was organized under New Jersey Revised Statutes Annotated and the parties cite to Chapter 11B of Title 17, N.J.S.A., which was replaced by Chapter 11C of Title 17, N.J.R.S.A., which at section 17:11C-3 provides that bankers and mortgage brokers must be licensed. Further, under N.J.S.A. 17:11C-20, section b, “no licensee shall transact business provided for by this Act under any name other than that name in the license.” Complainant provided a copy of its license from the State of New Jersey, showing its right to do business under two names, NEW JERSEY MORTGAGE COMPANY OF NEW JERSEY, INC., and JERSEY MORTGAGE COMPANY. Respondent provided no such proof of rights to or legitimate interests in the name contained within the domain name registered by Respondent.
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Registration and Use in Bad Faith
Complainant asserts that Respondent registered and used the <jerseymortgage.com> domain name in bad faith. Respondent urges that Complainant cannot make the necessary showing of bad faith and Respondent states specifically that Respondent did not act in bad faith in registering and using the disputed domain name containing Complainant’s business name. Further, Respondent put a disclaimer on its website to deny affiliation with Complainant.
The Panel may conclude that registration of an infringing domain name with knowledge of a Complainant's mark is evidence of bad faith registration. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Complainant asserts and the submission permits a finding that Respondent has used the <jerseymortgage.com> domain name to intentionally attempt to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as a source, support, sponsorship, affiliation or endorsement of Respondent's website or the products on Respondent's website. The Panel may determine this meets the criteria established for bad faith use within the meaning of Policy ¶ 4(b)(iv). Cf. The State Bar of Cal. v. eWebNation.com, Inc., FA 97137 (Nat. Arb. Forum June 14, 2001) (given that Respondent is an attorney and was well aware of Complainant and its rights before establishing its own website, an inference can be made that the Respondent sought to trade on confusion with the California State Bar and exploit its reputation and stature).
Complainant further contends that Respondent intentionally registered the <jerseymortgage.com> domain name to disrupt a competitor's business pursuant to Policy ¶ 4(b)(iii). The proof in the submission supports Complainant’s contention that Respondent sought to disrupt a competitor’s business as set out in Policy ¶ 4(b)(iii). The bare facts permit the finding that had Respondent not intended to cut in on Complainant’s business in New Jersey that Respondent would not have used Complainant’s name for the purpose of conducting business. The Panel may conclude that these facts are sufficient for a finding of bad faith. See SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).
Respondent denies knowledge of Complainant prior to filing its domain name and further denies all of Complainant's bad faith allegations. Respondent claims it selected a generic descriptive domain name after conducting a good faith search of availability. Respondent also asserts that its disclaimer on the site is further evidence of Respondent's good faith. The Panel finds that the disclaimer by Respondent here that it was not associated with Complainant that Respondent posted on a website bearing Complainant’s business name is not persuasive that Respondent acted in good faith. For the Panel to agree with Respondent, the Panel would be required to conclude that Respondent, a mortgage company with interstate business, never came to know of Complainant, a business entity in business for fourteen years and with the license to do what Respondent sought to do in the State of New Jersey.
The Panel finds that <jerseymortgage.com> is not a generic domain name because Complainant is incorporated under that name and is the only entity in this proceeding with a legal license to use that name in commerce. Respondent has not shown that it has the necessary license to use that mark to conduct the business Respondent is in fact conducting in New Jersey. It flies in the face of reason to accept Respondent’s subjective assertions that it had no bad faith despite the fact that its objective manifestations show that it registered somebody else’s legal name in a domain name and that it operated that domain name in a manner calculated to compete with the very entity whose name it expropriated under the guise of generic right. Complainant is the only party in this proceeding that has shown a right through incorporation and licensure to use this mark.
The Panel further finds that Respondent’s disclaimer does not have the effect of disclaimers recognized as defeating a claim of bad faith. In CRS Tech. Corp. v. CondeNet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) it was noted that “the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest." Complainant’s incorporated name is not generic and the Panel finds that where proof of bad faith is limited, the Panel should give greater weight to Respondent’s objective manifestations through its conduct of competing with Complainant in Complainant’s own name than to Respondent’s subjective insistence that it had no intent to act in bad faith at the inception of the registration and in initial use.
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been satisfied.
Having found all three grounds necessary to prevail in the cancellation or transfer of a domain name and that the requested relief should be granted, it is accordingly, Ordered that the domain name JERSEYMORTGAGE.COM shall be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panel Chair, Hon. James A. Carmody & Hon. H. Curtis Meanor, Panelists
Dated: February 26, 2002.
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