Claim Number: FA0709001075750
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance
G. Johnson, of Roylance, Abrams, Berdo & Goodman
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.
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.
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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org 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.
Complainant requests that the domain names be transferred from Respondent to 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.
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).
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.
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
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
Arb. Forum Apr. 4 2007); Honeywell International v.
Associates, FA1046003 (Nat. Arb. Forum Aug. 14, 2007); Global Affiliates, Inc.
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.
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
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).
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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