Countrywide Financial Corporation v. Johnson and Sons Systems c/o Ed Johnson
Claim Number: FA0709001073019
Complainant is Countrywide Finanical Corportation (“Complainant”), represented by Lance
G. Johnson and Casimir W. Cook of Roylance, Abrams, Berdo & Goodman,
L.L.P., 1300 19th St., NW, Suite 600, Washington, D.C. 20036. Respondent is Johnson and Sons Systems c/o Ed Johnson (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <countrwide.com> (the “Disputed Domain Name”), registered with Enom Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.
On September 4, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <countrwide.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 2007 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.
A timely putative Response was received and determined to be complete on October 2, 2007. However, Respondent did not submit a timely hard copy version, and as such, a valid response was not filed, as further discussed below.
On October 11, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant has owned since 1969 service mark rights in the name COUNTRYWIDE in connection with the financing of home loans, and Complainant is the owner of a number of trademark registrations in the United States which includes the word “countrywide.” Among these registered trademarks are two registrations for the mark COUNTRYWIDE, on registration being registration number 1,744,794, registered on January 5, 1993, with the following description of services: "financial services, namely, mortgage banking, insurance agency, and securities brokerage services," and the other registration being registration number 1,918,325, registered on September 12, 1995, with the following description of services: "financial services, namely mortgage lending, mortgage banking, securities brokerage, and insurance agency services" (collectively "Complainant's Trademarks").
Respondent registered the Disputed Domain Name on November 13, 2000.
Respondent’s website is a “link farm” for competing services within the financial services industry.
The Disputed Domain Name is confusingly similar to Complainant's Trademarks for purposes of Policy ¶ 4(a)(i) because it is a blatant misspelling of Complainant's service mark. The misspelling and the added term, “.com,” does not sufficiently alter or distinguish the Disputed Domain Name from Complainant's Trademarks and actually promotes confusion by presenting a false sense of source, sponsorship, affiliation or endorsement.
Respondent does not have any rights or legitimate interests in the Disputed Domain Name in violation of Policy ¶ 4(a)(ii) because: firstly, Respondent is not now known, and has never been known under the name "countrwide” or "countrywide"; secondly, Respondent is not a licensee, agent, associate, or in any other way lawfully affiliated with Complainant or the home financing services offered by Complainant under Complainant's Trademarks; thirdly, Respondent does not have any registered trademark or service mark rights in a "countrwide" or "countrywide" designation; and fourthly, Respondent is using the Disputed Domain Name to divert customers for commercial gain.
Respondent registered and used the Disputed Domain Name in bad faith in violation of Policy ¶ 4(a)(iii) because: firstly, Respondent had at least constructive notice, and most likely actual notice, of Complainant's prior rights in the mark COUNTRYWIDE for financing home mortgages; secondly, Respondent offers services that compete with those of Complainant; thirdly, Respondent uses the Disputed Domain Name to disrupt Complainant's business by diverting potential customers from Complainant's site to that of Respondent; and fourthly, Respondent uses the Disputed Domain Name to create a false sense of source, sponsorship, affiliation or endorsement between Respondent and Complainant for commercial gain.
Respondent submitted a putative Response via email to the National Arbitration Forum which reads: "Hi. I have previously e-mailed that the name COUNTRWIDE.COM is currently in Enom registrar and unlocked for immediate transfer although the UDRP must be withdrawn in order for the transfer to happen as it is currently under registrar lock. The authorization code is: [redacted].”
This putative Response was not made in hard copy, and is therefore not a valid or operative response pursuant to ICANN Rule 5(a). As such, this Panel has not considered this putative Response in this decision.
Complainant is the owner of Complainant's Trademarks, which were registered in the United States Patent and Trademark Office on January 5, 1993 and September 12, 1995, with the following description of services: "financial services, namely, mortgage banking, insurance agency, and securities brokerage services," and "financial services, namely mortgage lending, mortgage banking, securities brokerage, and insurance agency services.”
Respondent registered the Disputed Domain Name on November 13, 2000.
Respondent's website provides opportunities for an Internet user to link to Complainant's website (using the correct spelling of Complainant's name "Countrywide") and numerous opportunities to link to the websites of third-party companies that compete with Complainant’s financial services products.
The Disputed Domain Name is confusingly similar to Complainant's Trademarks for purposes of the Policy.
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Respondent’s use of the Disputed Domain Name was registered and is being used in bad faith.
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.
Policy 4(a)(i) is a threshold consideration.
Under this Policy paragraph, the panel makes a simple comparison between the Complainant’s Trademark and the Disputed Domain Name. In making this comparison, the panel need go no deeper than the alpha-numeric symbols, as this is the relevant level presented to Internet users.
For purposes of making the comparison, generic top-level domains are not relevant and minor misspellings are ignored. See Nev. State Bank v. Modern Limited-Cayman Web Development , FA 204062 (Nat. Arb. Forum March 22, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Isleworth Land Co., v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principal that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)(“The addition of an “s” to the end of the Complainant's [sic] Mark does not prevent a likelihood of confusion caused by the use of the remaining identical mark. The two domain names are similar in sound, appearance, and connotation.”).
In this matter, Complainant’s Trademarks are COUNTRYWIDE, and the Disputed Domain Name is “countrwide.”
This Panel has no difficulty finding that the Disputed Domain Name is confusingly similar.
As such, Complainant has satisfied the requirement of Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) provides a potential safe harbor for respondents.
Policy ¶ 4(a) places the burden as to this element on the complainant, and most panels have interpreted ¶ 4(a)(ii) as being a light burden. Once Complainant satisfies this light burden, the burden then shifts to Respondent to rebut. See G. D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum, Oct. 1, 2002) (holding that where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting the assertion because this information is "uniquely within the knowledge and control of the respondent.”); see also AOL v. Gerberg, FA 780200 (Nat. Arb. Forum, Sept. 25, 2006) (“The Complainant must make a prima facia showing that the Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If the Complainant satisfies its burden, then the burden shifts to Respondent to show that it s does have rights or legitimate interest in the subject domain names.”).
In the present case, Complainant has asserted that Respondent does not have rights or legitimate interests with respect to the Disputed Domain Name, and Respondent has failed to rebut.
In addition, many panels, including this Panel, have gone beyond the three non-exclusive examples within Policy ¶ 4(c) and have found that a respondent does not have rights and legitimate interests in a domain name where: the domain name is identical or confusingly similar to a complainant’s trademark; the respondent and the complainant are commercial competitors; and the respondent has selected the Disputed Domain Name intentionally to profit from the complainant’s goodwill. This has been found even where the respondent’s use of the domain name is otherwise in connection with the offering of bona fide goods or services. See America Online, Inc., v. Fu, D2000-1374 (WIPO Dec. 12, 2000) (“It would be unconscionable to find a bona fide offering of services in a Respondent’s operation of a website using a domain name which is confusingly similar to Complainant’s mark and for the same business.”); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was clearly well-known at the time of the respondent’s registration of the domain name it can be inferred that the Respondent is attempting to capitalize on the confusing created by the domain name’s similarity to the mark); see also MBS Computers Ltd., v. Workman, FA 96632 (Nt. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interest when the respondent is using a domain name identical to the complainant’s mark and is offering similar services).
In this present matter, Complainant has demonstrated by way of exhibits attached to its Complaint that Respondent is using the Disputed Domain Name to direct Internet users to websites of third-parties who compete with Complainant. Under the noted standard, this use is not consistent with a finding of Respondent having rights or legitimate interests in the Disputed Domain Name.
As such, the Complainant has satisfied the requirement of Policy ¶4(a)(ii).
Policy ¶ 4(b) sets forth four nonexclusive examples of conduct which constitute “bad faith.” Complainant does not raise issues under the first two of these, which are abusive offers to sell a domain name to the owner of an identical or similar trademark and an abusive effort to block a trademark owner from reflecting the mark in a corresponding domain name.
Complainant does raise an issue about the third of these examples, namely that Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor. However, this panel disagrees that competitive conduct, whether fair or unfair, constitutes business disruption for purposes of Policy ¶ 4(b)(iii). This Policy paragraph is more narrowly tailored for the circumstance where a respondent’s intention is to disrupt, as opposed to disruption being a byproduct of competition. This Panel does not believe that in the present case Respondent’s intention has been to disrupt Complainant’s business.
Policy ¶ 4(b)(iv) states: "The following circumstances... shall be evidence of the registration and use of the domain in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
All of these elements exist in the present case.
Respondent’s use of the Disputed Domain Name does create a likelihood of confusion as to source, sponsorship, affiliation, or endorsement. For those Internet users who do not notice the distinction between Complainant’s Trademarks and the Disputed Domain Name, there would be confusion as to the source, sponsorship, and affiliation of Respondent's website. Whereas this Panel cannot know the number of times this has occurred or may occur, this Panel can state that initially, when first reviewing the papers in this matter, it did not notice the distinction between Complainant's Trademarks and the Disputed Domain Name, and this Panel can from this infer such will occur from time to time among Internet users. And further, this panel is aware that typographical errors are not uncommon with respect to domain names, in fact they are annoyingly common. As such, it is likely that in some not insignificant number of instances an Internet user seeking to find Complainant’s website will find Respondent's website, will not be aware of the error, and thereby will be confused as contemplated by the Policy.
It is unlikely that Respondent chose the disputed domain name innocently or accidentally. The absence of the letter "y” from the word "countrywide" is not consistent with an independent effort to create a domain name.
No direct evidence has been presented by Complainant about whether Respondent’s website is a commercial enterprise resulting in commercial gain. However, it is unlikely that Respondent would have expended the effort to create an elaborate website, such as is Respondent’s website, without the incentive of some direct financial benefit. As such, commercial gain can be inferred.
Given the foregoing, it follows that Respondent has intentionally attempted to use the Disputed Domain Name to attract Internet users to Respondent’s website.
As such, Complainant has satisfied the requirement of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <countrwide.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: October 24, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum