Federal National Mortgage Association d/b/a Fannie Mae v. Domain Stuff.com
Claim Number: FA0206000114620
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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
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