Federal National Mortgage Association
d/b/a Fannie Mae v. Domain Stuff.com
Claim Number: FA0206000114620
PARTIES
Complainant
is Federal National Mortgage Association
d/b/a Fannie Mae, Washington, DC (“Complainant”) represented by Fabricio Vayra, of Arent Fox Kintner Plotkin & Kahn. Respondent is Domain
Stuff.com, Del Mar, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <fannimae.com>,
registered with Enom.
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.
James
A. Crary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 18, 2002; the Forum received a hard copy of the
Complaint on June 20, 2002.
On
June 24, 2002, Enom confirmed by e-mail to the Forum that the domain name <fannimae.com> is registered with
Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound
by the Enom 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
June 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 15,
2002 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@fannimae.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 22, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <fannimae.com> domain
name is confusingly similar to Complainant’s registered FANNIE MAE mark.
2. Respondent does not have any rights or
legitimate interests in the <fannimae.com> domain name.
3. Respondent registered and used the <fannimae.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is the owner of U.S. Patent
and Trademark Office (“USPTO”) Reg. Nos. 946,030; 1,557,217; and 1,485,429 for
its FANNIE MAE and FANNIEMAE marks (collectively the “FANNIE MAE marks”). The
“Fannie Mae” name has been federally chartered for Complainant’s exclusive use
under 12 U.S.C. 1716 § 309(e). Complainant’s initial registration of its FANNIE
MAE mark was listed on the Principal Register of the USPTO on October 24, 1972.
Since their inception, the distinctive FANNIE MAE marks have been used
continuously and extensively in connection with Complainant’s mortgage loan
service.
Complainant also uses its FANNIE MAE
marks in connection with its websites, located at <fanniemae.com> and
<efanniemae.com>. Complainant has expended many millions of dollars in
connection with advertising. Sales of services under Complainant’s FANNIE MAE
marks have resulted in many millions of dollars.
Because of the substantial advertising
expenditures and sales, the distinctive FANNIE MAE marks have become well-known
and famous.
Respondent registered the disputed domain
name on September 15, 2000. Complainant’s investigation revealed that Respondent
initially used the infringing domain name to route Internet users to commercial
websites that provide pornographic content, although the website is presently
inactive. Complainant did not give Respondent authorization to use the FANNIE
MAE marks.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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; and
(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.
Complainant established rights in the
FANNIE MAE family of marks through registration with the USPTO and continuous
use of the marks in relation to its mortgage business since at least 1972.
Respondent’s <fannimae.com> domain
name is confusingly similar to Complainant’s FANNIE MAE mark. Except for the
omission of a single letter and the deletion of a space between the words
composing Complainant’s mark, the domain name is identical to Complainant’s
FANNIE MAE mark and the authentic <fanniemae.com> domain name.
Respondent’s alteration of Complainant’s famous mark is an insignificant
deviation that fails to create a separate and distinct mark; thus, rendering
Respondent’s domain name confusingly similar to Complainant’s FANNIE MAE mark.
It is probable that many of Complainant’s potential and existing customers will
mistype Complainant’s mark when searching for its products and services on the
Internet, and will then be diverted to Respondent’s website. See State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to the Complainant’s
STATE FARM mark); see also Hewlett-Packard
Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the
domain name <hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate interests in the <fannimae.com> domain name.
See Canadian Imperial Bank of
Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000)
(finding no rights or legitimate interests where no such right or interest was
immediately apparent to the Panel and Respondent did not come forward to
suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to
submit a Response in this proceeding, the Panel is permitted to make all
reasonable inferences in favor of Complainant. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
Complainant’s Submission provides the
Panel with unrefuted evidence that Respondent’s infringing domain name
originally resolved to a website with pornographic content. Respondent’s use of
the domain name likely tarnished Complainant’s famous mark, diluting the
reputation Complainant has established in its FANNIE MAE mark and corresponding
mortgage services. Respondent’s use of <fannimae.com> to divert
Internet users searching for Complainant’s website is not in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it
a legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). See Nat’l Football League
Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding
that the Respondent had no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where the Respondent
linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use).
There
is no evidence that suggests Respondent is commonly known by the <fannimae.com>
domain name pursuant to Policy ¶ 4(c)(ii). No apparent connection exists
between Respondent and the FANNIE MAE mark; Respondent has failed to produce
information suggesting otherwise. Because Complainant’s FANNIE MAE family of
marks have been extensively used since at least 1972 and their use indicates an
obvious connection with Complainant, there is a presumption that Respondent
does not have rights or legitimate interests in a domain name that incorporates
a confusingly similar variation of Complainant’s FANNIE MAE mark. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
The criterion specified in ¶ 4(b) of the
Policy does not represent an exhaustive list of bad faith evidence. The Panel must
take into consideration the totality of circumstances in order to determine if
Respondent registered or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith evidence).
Complainant owns various registrations
for its FANNIE MAE mark listed on the Principal Register of the USPTO.
Complainant’s FANNIE MAE marks have been extensively used in connection with
millions of dollars expended in advertising. Because of the aforementioned
circumstances, and the fact that Respondent’s registration of the infringing
domain name was undoubtedly done because of the recognition associated with
Complainant’s marks, it can be inferred that Respondent had knowledge of
Complainant’s rights in the FANNIE MAE marks. Respondent’s subsequent
registration of the disputed domain name, despite knowledge of Complainant’s
preexisting rights in the FANNIE MAE marks, evidences bad faith registration
pursuant to Policy ¶ 4(a)(iii). See Victoria’s
Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Respondent’s registration of
Complainant’s famous mark with the insignificant variation of one letter
represents an instance of typosquatting. The practice of “typosquatting” has
been recognized as a bad faith use of a domain name under the Policy.
See e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26,
2000) (awarding <wwwalavista.com>, among other misspellings of
altavista.com, to Complainant); see also
Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(awarding domain names <wwwdowjones.com>, <wwwwsj.com>,
<wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
Furthermore, Respondent’s disputed domain
name tarnishes Complainant’s established mark and corresponding reputation because
it resolved to a pornographic website. Such use of an infringing domain name
represents bad faith registration and use under Policy ¶ 4(b)(iv) because
Respondent assuredly profited from the confusion its domain name generated. See
Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to
provide a link to a pornographic site is evidence of bad faith registration and
use); see also Youtv, Inc. v.
Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where
Respondent attracted users to his website for commercial gain and linked his
website to pornographic websites).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <fannimae.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: July 29, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page