Chattel Mortgage, Inc. v. Top Sites
Claim Number: FA0206000114710
Complainant is Chattel Mortgage, Inc., Medford, OR (“Complainant”). The registered owner since February 8, 1999, and nominal Respondent is Top Sites, Torrance, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chattelmortgage.net>, registered with Network Solutions, Inc.
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.
G. Gervaise Davis III, Esq., as sole Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 26, 2002; the Forum received a hard copy of the Complaint on June 25, 2002.
On June 27, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <chattelmortgage.net> is registered with Network Solutions, Inc. and that the Respondent Top Sites is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 July 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 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 email@example.com by e-mail.
No Response was received from Top Sites; however, a timely Response from Jackson County Financial, Inc. dba JCF Acceptance, Central Point, Oregon, signed by one Jack B. Jordan, President, was received and determined to be complete on July 15, 2002. Jackson Country Financial, herein called JCF or Respondent, claims in its response that it is the actual owner of the domain name <chattelmortgage.net>; that some unknown person apparently changed the name of the Registrant to a “fictional administrator” without authorization of JCF; and that “Correction [transfer?] will be completed upon a favorable decision ….”
On July 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed G. Gervaise Davis III, Esq., as Panelist.
Because of the inconsistency between the Registered owner and the party that filed as Respondent, and in an attempt to determine who is actually the proper Respondent in this case, the Panel issued an Order (communicated to both JCF and the Complainant, and to the only known email address of Top Sites), on August 5, 2002, directing that JCF and Top Sites explain the relationship of the parties and identify who is the correct party in interest. This Order also permitted Complainant to file its own comments on the issue of proper ownership within five (5) days of any Respondent filing.
In response to the Panel’s Order, one Jack B. Jordan, signing as President of JCF, responded with the following email message to the Forum on August 5, 2002:
“The Respondent(s) would humbly ask the Claimant(s), Forum and/or Panel, to dismiss Respondent(s) Response, as JCF is not the legal owner on record for the site in question, "chattelmortgage.net", and does not wish to pursue assignment of ownership at this time. Respondent(s) would encourage the Forum and/or Panel to award said such domain to the Claimant(s), as there will not be a Response filed from "Top Sites", and the Panel’s Order will not be Answered. The Respondent(s) will provide username and password upon request.”
No subsequent filing or comment was received from Complainant during the additional time allowed, so the Panel must proceed based on this inconsistent and confusing record.
Complainant requests that the domain name(s) be transferred from Respondent to Complainant.
Complainant asserts that it was incorporated in 1998 to provide “Manufactured Home Financing.” It states that its corporate name, ChattelMortgage, Inc., was chosen “to reflect the exact type of financing” it provides – chattel mortgages on mobile homes. Its website further states that the term “chattel mortgage” is the term used when referring to a loan on a mobile or manufactured home. See, its web site at http://www.chattelmortgage.com/About.htm.
Complainant has no apparent registered trademark, and its only claim to intellectual property rights here seems to be derived from its opening description of its claim: “The Trademark/Service Mark in question is CHATTELMORTGAGE, as well as the specific type of home financing that the complainant offers.” The Panel could find no record of any registered trademark on the words “chattel mortgage” in the USPTO database, for the Complainant or any third party.
Complainant acknowledges awareness of the domain name in dispute <chattelmortgage.net> by October 26th, 1999, which it apparently objected to in contacts with Network Solutions, who advised Complainant it could not do anything about it. Later in June 2002, Complainant received a phone call from a consumer at which time Complainant learned that the domain name had been transferred to Top Sites, but nonetheless pointed directly to <jcfinc.com> “who is offering exactly the same services as the complainant and is in direct competition with the complainant.”
Based upon this, Complainant charges that Respondent has no trademark or legitimate intellectual property interest in the domain name <chattelmortgage.net>, has not used or claimed the domain since it is registered to a fictional entity, and therefore is using the domain in bad faith. It explains that the domain was originally registered in Jackson County Financial, Inc., but is now registered to Top Site, yet it points to <jcfinc.com>, which is the web site of JCF. This, Complainant alleges, establishes bad faith use to confuse the public and to damage Complainant’s business or to divert business to a similar enterprise.
Respondent JCF, in its filed Response, recites the history of its business and the use of the domain name at issue, and asserts that until June of 2002, it had never been aware of any confusion or concern on the part of Complainant or of any asserted contrary intellectual property rights. Respondent JCF acknowledges that the domain name was apparently re-registered in the Top Sites name by some person unknown and unauthorized during 1999 and not discovered until recently. Respondent also asserts that the domain has been indexed and used by people and businesses working with JCF for many years and that Complainant has been a relatively unknown entity in this business until recently. It concedes that the two companies are apparently in essentially the same line of business, but unequivocally denies registration or use of the disputed domain name for any improper purpose.
The balance of Respondent’s response consists of a strong assertion that the term “chattel mortgage” is such a generic and descriptive term that it could never belong to Complainant or anyone else, and that, in fact, Complainant has no trademark or other rights in the words for this reason. It attaches as exhibits copies of several UDRP decisions discussing the problem of protecting generic and descriptive terms, which will be discussed below.
C. Additional Submissions
See the section above, headed Procedural History, for a description of such subsequent submissions.
Even though the Respondent JCF has apparently withdrawn its defense and the nominal Respondent Top Sites has not filed any Response, the Panel is obligated by the UDRP to enter findings and a decision, based on the UDRP Rules. Accordingly, the Panel finds that:
(1) While the domain name <chattelmortgage.net> is substantially identical to the name of corporate Complainant ChattelMortgage, Inc., Complainant has neither a registered nor a common law trademark or service mark on the words “Chattel Mortgage,” which is a wholly descriptive term, by its own admission, that merely describes the form of financing it offers to mobile home owners;
(2) Respondent has used the domain name in question since 1998, which may even predate the use of the same words by Complainant, which domain name is equally descriptive and essentially available to anyone to use for such a business; and,
(3) Complainant has not established that Respondent registered the domain name in bad faith, and in fact presented virtually no evidence on this issue, instead dealing entirely with its allegation of current use in a deceptive manner. There is some evidence that there is some present confusion in the eyes of consumers, but this is not sufficient to establish bad faith use for the reasons discussed below and there is no evidence presented that Respondent was intentionally using it to create confusion.
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.
Identical and/or Confusingly Similar
As noted above, there is no question that the domain name <chattelmortgage.net> is essentially identical to Complainant’s corporate name. This name however is neither a trademark, service mark nor protectible term. Complainant’s name describes its business and is at best a trade name, which under the ICANN Policy and subsequent pronouncements of WIPO committees studying domain name protection is not protected by the UDRP.
Beyond that, as Respondent correctly points out, the term is generic and descriptive, as evidenced by the fact that there is no listed registered trademark in the USPTO database that uses these terms. Numerous ICANN Panels have based denial of transfers on the genericness of the terms at issue. See, for example, target software solution GmbH v. NetVirtue, Inc., DBIZ2002-00277 (WIPO Aug. 19, 2002) (“Where a domain name is generic, the first person to register it in good faith is entitled to the domain name.”); Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217, (WIPO May 7, 2001) and cases cited therein. Cf., J. Crew Int’l, Inc. v. crew.com, D2000-0054 (WIPO Apr. 20, 2000), strong dissent subsequently cited in many ICANN cases for the proposition that generic and descriptive names are not protected either under the UDRP or general trademark law principles.
Accordingly, the Panel concludes that Complainant has no protectible interest in the words “chattel mortgage” and no basis for bringing this Complaint, and will deny the requested relief.
Rights or Legitimate Interests
Because the terms are generic and descriptive, Respondent has an equal right to use the terms in its domain name, and the Panel therefore rules that Respondent does have a legitimate interest in using and registering the domain name at issue. Further since the two companies started using the words about the same time, Respondent may have a further defense of prior use, which need not be determined, since Complainant has no protectible interest in any event.
Registration and Use in Bad Faith
As noted above, Complainant alleged and provided the Panel with no evidence of bad faith registration by Respondent, which is a sine qua non of prevailing. Similarly, while there is evidence of some confusion because of the generic nature of the terms, there is no evidence that Respondent used the domain name at issue in a bad faith manner. Mere allegations of bad faith use, without evidence or facts, are insufficient under the UDRP and similar procedural rules. See, Intocast AG v. Lee Daeyoon, D2000-1467 (WIPO Jan. 17, 2001) (“The mere allegation of such bad faith on the side of the Respondent is not sufficient.”).
The Panel denies the request of Complainant to transfer the domain name <chattelmortgage.net> to Complainant, and further orders that, in spite of the request of Respondent in its final email, the Panel has no authority to voluntarily transfer the domain name under the circumstances of this case, the Complainant having utterly failed to make out its case. Such an order would exceed the authority of this Panel under the ICANN Policy and Rules.
G. Gervaise Davis III, Esq., Panelist
Dated: August 23, 2002
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