Fisher Financial Group, Inc.
d/b/a NationsChoice Mortgage v. Carlos Machado d/b/a NationsChoice Home Loans d/b/a
NationsChoice Home Loans, Inc.
Claim Number: FA0711001106330
PARTIES
Complainant is Fisher Financial Group, Inc. d/b/a
NationsChoice Mortgage (“Complainant”)
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nationschoicehomeloans.net>, registered
with Godaddy.com,
Inc., and <nationschoicehomeloans.com>, registered
with Enom,
Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 5, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 5, 2007.
On November 5, 2007, Godaddy.com, Inc.
confirmed by e-mail to the National Arbitration Forum that the <nationschoicehomeloans.net>
domain name is registered with Godaddy.com, Inc.,
and that the Respondent is the current registrant of the name. On November 6,
2007, Enom, Inc. confirmed by e-mail to
the National Arbitration Forum that the <nationschoicehomeloans.com>
domain name is registered with Enom, Inc., and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. and Enom, Inc. have verified that Respondent is bound by their
respective registration agreements 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 November 21, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 11, 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@nationschoicehomeloans.com,
and postmaster@nationschoicehomeloans.net
by e-mail.
A timely Response was received and determined to be complete on December 11, 2007.
On December 18, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
NationsChoiceHomeLoans.com AKA NationsChoiceHomeLoans.net are one Respondent, they are both listed as owned /registered by NationsChoice Home Loans located in Anaheim and Santa Ana, CA. The owner (Respondent) is affiliated with both addresses in corporate structure.
NationsChoice Mortgage (NCM) has established a reputation in the marketplace and developed a significant amount of goodwill in our NATIONSCHOICE MORTGAGE mark by providing over 7500 loans to borrowers and built a loan volume of almost three billion dollars over the years. NCM generates millions of dollars in annual revenues and generates almost 100% of its business online. If a prospective borrower Googles “nationschoice,” the Respondent’s address appears surrounded by NCM’s 3 sites. Their confusingly similar address creates confusion for the borrower. The services offered by the Respondent are identical to, or at least substantially similar to, the services offered in connection with the NATIONSCHOICE MORTGAGE name and mark. It is likely to cause customers or potential customers to mistakenly believe there is some affiliation or association with the Respondent’s company and NCM.
Respondent has registered and is using the similar domain name in bad faith. They are using the domain name for commercial benefit by diverting Internet users to their website that sells services similar to those offered by the Complainant.
Respondent is using the domain name for commercial gain to misleadingly divert consumers from the registered trademark.
Respondent is using Complainant’s registered trademark. Use of the domain name, will intentionally attract Internet users to Respondent’s web site or other on-line locations. This creates a strong likelihood of confusion for commercial gain. Therefore, use of the disputed domain name is likely to disrupt Complainant’s business by diverting business away.
B. Respondent
I “Googled” NATIONSCHOICE MORTGAGE, and found only their company information. Furthermore, when I “Googled” NATIONSCHOICE HOME LOANS, my company information came up, as well as NCM. I am an Independent Mortgage Broker who has been in business under the legal name “NATIONSCHOICE HOME LOANS, Inc” since June 2005 using the disputed domains.
Since June of 2005, I have been sole-proprietor, who works extremely hard, by marketing, networking, and self-promotion. Although, proud of what I have sustained, I am what is more commonly known as a “Mom and Pop Shop.”
FINDINGS
For the reasons set forth below the Panel
finds the domain names shall remain with Respondent.
Preliminary Issue: Multiple Respondents
The Panel must first consider whether these proceedings have been properly instituted. Paragraph 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is operating under various asserted alleged aliases. If the Panel disagrees with Complainant’s assertions, the National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires the Panel to dismiss the Complaint in relation to the disputed domain names it deems to be insufficiently linked to Respondent.
Complainant asserts that the listed registrants for the <nationschoicehomeloans.com> and <nationschoicehomeloans.net> domain names indicates that the disputed domain names are owned by the same person. The Complaint states that the aliases “Carlos Machado d/b/aNationsChoice Home Loans” and “Carlos Machado d/b/a NationsChoice Home Loan, Inc.” both contain the same name “Carlos Machado” and the same telephone, fax and e-mail contact information. The Panel finds that the listed aliases are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complaint is justified, proper and in pursuant to Supplemental Rule 4(f)(ii). See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical.").
Primary Issue
Paragraph 15(a) of 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.
The Panel finds that Complainant has sufficiently established its rights
in the NATIONSCHOICE MORTGAGE mark through registration with the United States
Patent and Trademark Office (“USPTO”) pursuant to Policy ¶ 4(a)(i) (Reg. No. 2,587,586 issued July 2, 2002). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also U.S. Office of Pers. Mgmt.
v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Both of the <nationschoicehomeloans.com> and <nationschoicehomeloans.net> contain the dominant part “nationschoice” of Complainant’s NATIONSCHOICE MORTAGE mark and then replace the word “mortgage” with “home loans.” Additionally, both disputed domain names include the generic top-level domain (“gTLD”) “.com” or “.net.” The Panel finds that the inclusion of a gTLD is irrelevant for a Policy ¶ 4(a)(i) analysis. Additionally, the Panel finds that replacement of the word “mortgage” with similar descriptive words such as “home loans” does not distinguish a disputed domain name. As a result, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Complainant has proven this
element.
The Panel finds that Complainant has not established
a prima facie case Respondent lacks rights and legitimate interests
under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum
Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its
burden and as a result found that the respondent had rights and legitimate
interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v.
Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the
respondent overcame the complainant’s burden by showing it was making a bona
fide offering of goods or services at the disputed domain name).
Complainant does not assert that Respondent is not known by the disputed domain names. As a result, the Panel finds that Complainant did not make a prima facie showing under Policy ¶ 4(a)(ii). See Am. Credit Union Buyers Ass’n v. Acuba Ltd., FA 164306 (Nat. Arb. Forum July 16, 2003) (finding that complainant’s allegations that “[n]o evidence indicates that Respondent has been known . . . by the Domain Name” did not acknowledge or address evidence that respondent was known by the disputed domain name, having registered <acuba.com> under the name Acuba Limited, and, therefore, were not a prima facie showing under Policy ¶ 4(a)(ii)).
Additionally, Respondent asserts
that it is a “mom and pop shop” legitimately offering its services since 2005
and that although they may compete with Complainant, this alone does not make
them illegitimate. The Panel finds that Respondent has made
demonstrable preparations to use the disputed domain names in connection with a
bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec.
20, 2004) (finding that the respondent used
the <salesigns.com> domain name for a bona fide offering of goods
or services, which was established by the respondent’s “longstanding
involvement in the ‘sale sign’ market and its use of a descriptive domain name
to further its competition in that market”);
see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb.
Forum June 2, 2003) (finding that the respondent’s operation of a bona fide
business of online prop rentals for over two years was evidence that the
respondent had rights or legitimate interests in the disputed domain name).
Complainant has not proven this element.
The Panel has found that it has not
been shown this Respondent does not have rights or legitimate interests in the <nationschoicehomeloans.com> and <nationschoicehomeloans.net>
domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds it is not shown this
Respondent registered or use the disputed domain names in bad faith pursuant to
Policy ¶ 4(a)(iii).
See Lockheed Martin Corp.
v. Skunkworx Custom Cycle,
D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith
registration and use was moot once the panel found the respondent had rights or
legitimate interests in the disputed domain name); see also Vanguard Group
Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18,
2007) (“Because Respondent has rights and legitimate interests in the disputed
domain name, his registration is not in bad faith.”).
Respondent contends that its disputed domain names do not create a likelihood of confusion when the company names “Nationschoice Mortgage” or “Nationschoice Home Loans” are entered into a Google search, because such searches find exclusively the websites of either Complainant or Respondent exclusively. Complainant contended confusion, because of a search which only used “nationschoice.” Respondent asserts that this does not a create confusion or competitive behavior that evidences bad faith registration and use. The Panel finds that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith use, even though the respondent’s ownership and purported use of the domain name frustrated the complainant’s business efforts, because nothing indicated that the respondent intended to prevent the complainant from reflecting its mark in a corresponding domain name, to disrupt the complainant’s business, or to intentionally attract the complainant’s customers to the respondent’s site by creating a likelihood of confusion).
Complainant has failed to provide any evidence to support its assertions outside of a copy of a Google search. The Panel finds this insufficient to establish Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii). See Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (refusing to find bad faith registration where the complainant failed to submit any evidence that the domain name was registered in bad faith); see also Miele, Inc. v. Absolute Air Cleaners & Purifiers, D2000-0756 (WIPO Sept. 11, 2000) (refusing to transfer the domain name where the respondent used the domain name in bad faith by linking it to another website, but did not register the domain name in bad faith because he registered the domain name for use in connection with his Miele Appliance Dealership).
Complainant has not proven this
element.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <nationschoicehomeloans.com> and <nationschoicehomeloans.net>
domain names remain with Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 14, 2008
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