Chattel Mortgage, Inc. v. Top Sites
Claim Number: FA0206000114710
PARTIES
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.
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.
G.
Gervaise Davis III, Esq., as sole Panelist.
PROCEDURAL HISTORY
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 postmaster@chattelmortgage.net 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.
RELIEF SOUGHT
Complainant
requests that the domain name(s) be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
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.
FINDINGS
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.
DISCUSSION
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.”).
DECISION
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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