Countrywide Financial
Corporation v.
Claim Number: FA0709001075750
PARTIES
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance
G. Johnson, of Roylance, Abrams, Berdo & Goodman
L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <countrywidwbank.com>,
<countrywidwhomeloans.com>, <counrtrywide.com>, <counytrywide.com>, <contriwide.com>,
<countrywidel.com> and
<mycountrwide.com>, registered with Compana, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 11, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 17, 2007.
On September 25, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <countrywidwbank.com>,
<countrywidwhomeloans.com>, <counrtrywide.com>, <counytrywide.com>, <contriwide.com>,
<countrywidel.com> and
<mycountrwide.com> domain names are registered with Compana, LLC and that the Respondent is the
current registrant of the name. Compana, LLC has verified that Respondent is
bound by the Compana, LLC 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 26, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 16, 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 postmaster@countrywidwbank.com,
postmaster@countrywidwhomeloans.com, postmaster@counrtrywide.com,
postmaster@counytrywide.com, postmaster@contriwide.com,
postmaster@countrywidel.com, postmaster@mycountrwide.com by e-mail.
A timely Response was received and determined to be complete on October 17, 2007.
On October 22, 2007, Complainant filed an Additional Written
Submission.
On October 29, 2007, Respondent filed Respondent’s Objection And Reply To Complainant’s Additional Submission.
On October 19, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1969, Complainant has owned service mark rights in the name
COUNTRYWIDE in connection with the financing of home loans. Complainant owns several COUNTRYWIDE
registrations for its business, duly issued by the U.S. Patent and Trademark
Office. Complainant’s service mark
rights are also found in recognized
These registrations are deemed to be “incontestable” under
Complainant, through its subsidiary, Countrywide Home Loans, Inc., owns
the reflective domain names, <countrywide.com> (since July 1994) and
<mycountrywide.com> (Since May 2002).
The domain receives more than a million visitors per week and allows
users to access information about Complainant’s home loan (purchase. refinance,
and home equity), banking, and insurance services.
Countrywide financed more than $300 billion worth of home mortgages in
2004. Countrywide was ranked first in
Respondent’s domain names are confusingly similar to Complainant’s COUNTRYWIDE
mark in violation of the Policy because Complainant owns service mark rights to
COUNTRYWIDE, there is no evidence that Respondent has ever been known by
Countrywide, the use of the disputed domain names divert users to a link farm
site with pay-per-click links that are identified with Complainant’s
COUNTRYWIDE mark and name, and the dominant portion of the domain names is
Complainant’s service mark (or blatant misspellings thereof) sometimes followed
by a confusingly similar variant of Complainant’s service mark and the added
term does not alter the dominant use of the service mark, thereby actually
promoting confusion by presenting a false sense of source, sponsorship,
affiliation or endorsement between Respondent and Complainant.
Respondent does not have any rights or legitimate interests in the
disputed domain names in violation of the Policy. Respondent is not now known, and has not been
known before registration, under the name COUNTRYWIDE. Respondent is not a licensee, agent,
associated, or in any other way lawfully affiliated with Complainant or the
home financing services offered by Complainant.
Respondent has no registered mark for COUNTRYWIDE.
Respondent registered the domain names in bad faith. Respondent had constructive or actual notice
of Complainant’s marks. By registering
and using the confusingly similar domain names for link farms of competing
services, Respondent is creating a false association between the businesses or
Respondent and Complainant for commercial gain.
B. Respondent
In August of 2007, Respondent offered to transfer three of the domain
names to Complainant. Respondent
consents to transfer these domain names in the Response in what Respondent terms
a “unilateral consent to transfer.” As
to the remaining domain names, such names are descriptive and generic terms and
provide no rights under the Policy under any circumstances even if they are
registered. Complainant cites no
authority or rationale to justify this parasitic interference in the free
exchange of information and opportunity and ICANN panels repeatedly recognize
that such limitations are unnecessary.
Respondent may fairly use descriptive or generic terms or acronyms of
such as a commercial domain name, regardless of whether they are federally
registered. Having demonstrated that the
various permutations of the generic and descriptive phrase “country wide” are
generic and/or merely descriptive it must follow that Respondent did not
register, and is not using, the disputed domain names in bad faith. Respondent is not obliged to search the
United States Patent Office records. The
constructive notice argument has been long rejected. The general rule is that the domain name is
owned by the first to register, even where the Complainant is well known.
C. Additional Submission by Complainant.
Respondent fails to contradict the facts in the Complaint and does not
show any facts which warrant a finding in favor of Respondent. Under Respondent’s view, the international
negotiations leading to the UDRP would be abrogated. Trademark owners would have no recourse
against a domain name registrant who selected common typographical misspellings
of Complainant’s famous mark for financial services, but allowed a third party
to populate the site with pay-per click links to competing financial providers,
while receiving substantial income from the confusion among consumers for
financial services caused by the typographical errors found in the selection,
registration and use of the disputed domain names for competing services.
Respondent has been involved in over 35 other UDRP proceedings before
the National Arbitration Forum. A
notorious cybersquatter and typosquatter, Respondent has been continually found
to have registered and used the disputed domain names in bad faith and ordered
to transfer the domain names to the respective complainants.
D. Respondent’s Objection And Reply To Complainant’s Additional Submission.
Respondent objects to Complainant’s Additional Submission on the ground
that such additional pleadings are beyond the scope of the Rules and
Supplemental Rules, and are not permitted without a request from the
Panel. It is further contended that the
Submission amends the Complaint in an impermissible manner. Respondent objects to Complainant’s citation of
the numerous domain dispute cases in which Respondent has been a party. Respondent is the registrant of thousands of
domain names which consist of generic words.
Merely comparing the number of complaints without considering the
broader context is misleading. The Panel
should not consider past domain dispute proceedings involving this Respondent
based upon the precedent represented by the case of PlasmaNet, Inc. v.
Zuccarini, D2002-1101 (WIPO Feb. 11, 2003).
FINDINGS
1.
Complainant
is a well known financial services company with incontestable registrations
with the United States Patent and Trademark Office for the service mark
COUNTRYWIDE.
2.
Complainant,
through its subsidiary, owns the domain names <countrywide.com> and
<mycountrywide.com> which receives more than a million visitors per week
and allows users to access information about Complainant’s home loan business.
3.
All of
the disputed domain names at issue in this case are slight misspellings of
Complainant’s service mark except <mycountrwide.com>
which is a slight misspelling of Complainant’s domain name
<mycountrywide.com>.
4.
Respondent
has no rights to or legitimate interests in the disputed domain names.
5.
The
disputed domain names were registered and used in bad faith.
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.
Respondent
agrees to the transfer of three of the disputed domain names: <countrywidwhomeloans.com>,
<countrywidwbank.com> and <mycountrwide.com>
to Complainant in this proceeding.
Complainant requests the same result.
As to these three domain names, no traditional analysis is
necessary. These domain names are
ordered transferred. See Boehringer
Ingelheim In’l GmbH v. Modern
Ltd.-Cayman Web Dev. FA133625 (Nat. Arb. Forum Jan. 9, 2003) and Malev Hungarian Airlines, Ltd. v. Vertical
Axis Inc. FA212653 (Nat. Arb. Forum Jan. 13, 2004).
It must first be shown that Complainant has
rights in the mark, COUNTRYWIDE.
Complainant asserts rights in the COUNTRYWIDE
mark (Reg. No 1,744,794 issued January 5, 1993) through registration of the
mark with the United States Patent and Trademark Office. This registration sufficiently establishes
rights in the mark pursuant to Policy, Paragraph 4(a)(i). See
Innomed Techs., Inc. v. DRP Servs., FA221171 (Nat. Arb. Forum Feb. 18,
2004) holding that Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant’s rights in the mark.
See also VICORP Rests. Inc. v.
Triantafillos, FA485933 (Nat. Arb. Forum July 14, 2005).
The remaining domain names at issue are <counrtrywide.com>,
<counytrywide.com>, <contriwide.com> and <countrywidel.com>. Each of them is a slight misspelling of Complainant’s mark,
COUNTRYWIDE. Such intentional
misspellings of a mark of another constitute a situation where the disputed
domain names are confusingly similar to Complainant’s mark. See JELD-WEN Inc. v.
The addition of the top level of the domain
name such as “.com” does not affect the domain name for the purpose determining
whether it is identical or confusingly similar. See Rollerblade, Inc. v. McCrady, D2000-0420 (WIPO June 25, 2000).
The finding is made that the disputed domain
names are confusingly similar to Complainant’s mark under the facts and
circumstances of this case.
Complainant has established the requirements
of Policy, Paragraph 4(a)(i) and prevails on this issue.
Once Complainant establishes a prima facie
case, the burden shifts to the Respondent to show that Respondent does possess
rights or legitimate interests pursuant to Policy, Paragraph 4(a)(ii). See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent.”
Respondent comes forward with the following
proposition. Respondent contends that it
may trade off the trademark of another, when Respondent determines that the
mark is descriptive or generic notwithstanding that the trademark is registered
with the United States Patent and Trademark Office. Respondent makes no effort to explain the
intent or purpose of the slight misspellings of Complainant’s mark.
Respondent’s proposition has been addressed other
Panels. See Associated Bank Corp. v.
As a threshold issue, the Respondent raises
an allegation to the effect that the Complainant’s ASSOCIATED BANK Mark is
either generic…or is highly descriptive…Respondent then ostensibly contends
that this mark…has no significance as a federal trademark…Questions of
trademark invalidity, including questions of whether a mark is generic or
highly descriptive and hence not susceptible of legal exclusivity as a valid
federal trademark, are simply not within the purview of a UDRP proceeding and
are best left for either court adjudication or inter-partes adjudication before
appropriate governmental bodies having requisite jurisdiction and competence to
handle such issues. Not only are such
questions outside the very limited and focused jurisdiction afforded to UDRP
panels under the Policy, but, moreover, the summary and rather abbreviated
nature of UDRP proceedings totally precluded the establishment of a fully
developed factual record that must underlie the determination of such
questions.
In the year 2007 alone, Texas International
Property Associates has been the Respondent in thirty-eight domain dispute
proceedings before the National Arbitration Forum, asserting the contentions
above stated. It has been Respondent in
at least nineteen WIPO domain dispute proceedings. The Respondent’s position
has been disapproved by a vast majority of Panels. It is rejected by this Panel.
The disputed domain names in this case
resolve to search engine websites, most of which appear to offer products and
services in direct competition with those offered by Complainant. Respondent’s use of these websites is neither
a bona fide offering of goods or services pursuant to Policy, Paragraph 4(c)(i)
nor a legitimate noncommercial or fair use pursuant to Policy, Paragraph
4(c)(iii). See Charles Letts & Co. v. Citipublications, FA692150 (Nat.
Arb. Forum July 17, 2006) holding that the respondent’s use of a domain name
that was confusingly similar to the complainant’s mark to display links to the
complainant’s competitors did not constitute a bona fide offering of goods and
services pursuant to Policy, Paragraph 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy, Paragraph 4(c)(iii). See
also Expedia Inc. v. Compaid, FA520654 (Nat. Arb. Forum Aug. 30, 2005)
finding that the respondent’s use of the <expediate.com> domain name to
redirect Internet users to a website featuring links to travel services that
competed with the complainant was not a bona fide offering of goods and
services or a noncommercial or fair use pursuant to the Policy.
Complainant has not authorized Respondent to
use or exploit Complainant’s COUNTRYWIDE mark in any way. The analysis of Respondent’s WHOIS
registration information indicates that the registrant is “Texas International
Property Associates.” Respondent is not
commonly known by the disputed domain names pursuant to the Policy. See
Reese v. Morgan, FA917029 (Nat. Arb. Forum Apr. 5, 2007).
From the evidence and Panel authority
reviewed by this Panel, it must be found that Complainant has proved that
Respondent is without rights to or legitimate interests in the disputed domain
names and that Respondent has advanced no evidence or circumstances to
illustrate that Respondent has rights to or legitimate interests in the
disputed domain names.
Complainant prevails under Policy, Paragraph 4(a)(ii).
The Policy recognizes that respondent’s
pattern of conduct can amount to bad faith.
This
Respondent has established a pattern of
conduct which is illustrated in fifty-seven
domain name dispute cases. In some of
these cases Respondent registered domain
names that entirely appropriated another’s
trademark. See Mary’s Futons, Inc. v.
International
Property Associates, FA1012059
(Nat. Arb. Forum July 3, 2007) and
Outdoor
Cap Company, Inc. v.
(Nat. Arb. Forum July 20, 2007). In the majority of the cases Respondent
typosquatted
the domain names to be misspellings of
another’s mark. See JELD-WEN, Inc. v.
International
Property Associates, FA882053
(Nat. Arb. Forum Feb. 2, 2007); West
Publishing
Corporation v.
Arb. Forum Apr. 4 2007); Honeywell International v.
Associates,
FA1046003 (Nat. Arb. Forum
Aug. 14, 2007); Global Affiliates, Inc.
v.
2007).
These cases are a few examples contained in the archives of the National
Arbitration Forum. There are eighteen WIPO cases of the same
sort. What seems
obvious from all of these cases is that
Respondent is exercising an extensive use the
marks of others for Respondent’s financial
gain. The Panel will not cite or analyze
all of
the numerous cases involving this
Respondent. This pattern of conduct
alone shows bad
faith registration and use in this case.
Respondent is using the disputed domain names
to operate websites that offer links to
Complainant’s competitors. Such use is a
disruption of Complainant’s business and
therefore amounts to registration and use in bad faith
pursuant to Policy, Paragraph 4(b)
(iii).
See Persohn v. Lim, FA874447
(Nat. Arb. Forum Feb. 19, 2007) finding bad faith
registration and use pursuant to the Policy
where a respondent used the disrupted domain
name to operate a commercial search engine
with links to the complainant’s competitors.
See
also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA877982 (Nat. Arb. Forum Feb.
13, 2007).
The inference can be made that Respondent
receives commercial gain from its use of the
disputed domain names in the form of
click-through advertising fees. Internet
users,
seeking information on Complainant’s business
may become confused as to the source
and affiliation of the material found on the
websites associated with the disputed domain
names.
Respondent’s use of these domain names amounts to diversion of Internet
traffic
for commercial gain by click-through fees in
violation of the Policy. See Allianz of
Am
Corp. v. Bond, FA680624
(Nat. Arb. Forum June 2, 2006) finding bad faith
Registration and use where respondent was
diverting Internet users searching for the
Complainant to its own website and likely
profiting from click-through fees. See also
Asbury
Auto. Group, Inc. v.
29, 2007) finding that the respondent’s use
of the disputed domain name to advertise
car dealerships that competed with the
complainant’s business would likely lead to
confusion among Internet users as to the
sponsorship or affiliation of those competing
dealerships, and was evidence of bad faith
registration and use pursuant to the Policy.
There are several grounds upon which bad
faith can be based in this case. In
instances
where a respondent has a pattern of
cybersquatting or a pattern of registering domain
names incorporating well-known third party
trademarks, such conduct is evidence of
bad faith registration and use. See Sony Kabushiki Kaisha v. Anderson, FA198809
(Nat.
Arb. Forum Nov. 20, 20003) and Nat’l Abortion Fed’n v. Dom 4 Sale, Inc. FA170643
(Nat. Arb. Forum Sept. 9, 2003).
Complainant prevails under the requirements
of Policy, Paragraph 4(a)(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 <countrywidwbank.com>,
<countrywidwhomeloans.com>, <counrtrywide.com>, <counytrywide.com>, <contriwide.com>,
<countrywidel.com> and
<mycountrwide.com> domain names be TRANSFERRED from
Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 2, 2007
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