Federal Home Loan Mortgage Corporation v. Muhammad Arshad a/k/a SRS
Claim Number: FA0207000116767
Complainant is Federal Home Loan Mortgage Corporation, McLean, VA, USA (“Complainant”) represented by Leslie Gutowski, of Finnegan Henderson Farabow Garrett & Dunner L.L.P. Respondent is Muhammad Arshad, Karachi Sindh, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freddiemac.biz>, registered with Intercosmos Media Group, Inc dba DirectNIC.com.
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 July 18, 2002; the Forum received a hard copy of the Complaint on July 19, 2002.
On July 19, 2002, Intercosmos Media Group, Inc dba DirectNIC.com confirmed by e-mail to the Forum that the domain name <freddiemac.biz> is registered with Intercosmos Media Group, Inc dba DirectNIC.com and that the Respondent is the current registrant of the name. Intercosmos Media Group, Inc dba DirectNIC.com has verified that Respondent is bound by the Intercosmos Media Group, Inc dba DirectNIC.com 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 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 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.
A timely Response was received and determined to be complete on August 13, 2002.
The Complainant submitted its Reply, dated August 16, 2002, which was received August 19, 2002, and Respondent submitted an Additional Response, dated August 20, 2002, which was received by the Forum on August 21, 2002 and determined to be timely. The Panel duly considered these additional submissions along with the original papers required by the Policy.
On September 5, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Description of Complainant and its Goods and Services
1. Complainant is a stockholder-owned corporation chartered by the U.S. Congress in 1970 to create a continuous flow of funds to mortgage lenders in support of home ownership and rental housing. Since 1970, Complainant has indirectly financed one out of six homes in the U.S. and home ownership for more than 30 million families. In 2001 alone, Complainant purchased 2,845,868 single-family (1-4 unit) mortgages totaling $384 billion.
2. Complainant’s business is conducted in the U.S. residential mortgage market and in the global securities market. Complainant purchases residential mortgages and issues mortgage-backed or mortgage-related securities. By putting private investor capital to work for homebuyers in general, Complainant ultimately provides homeowners and renters with lower housing costs and better access to low-cost mortgage financing.
3. Complainant’s main website, located at the domain name <freddiemac.com>, provides comprehensive, up-to-date information about Complainant and its products and services, the residential mortgage finance market, and affordable housing. Excerpts of the <freddiemac.com> website were attached to the Complaint.
4. Having been widely promoted among members of the general consuming public since 1970 and having exclusively identified Complainant, the FREDDIE MAC mark and name symbolize the tremendous goodwill associated with Complainant and are property rights of incalculable value. Furthermore, due to widespread and substantial international use, the FREDDIE MAC mark and name have become globally famous.
Complainant’s Trademark Registrations
5. Complainant owns the following U.S. registrations for the mark FREDDIE MAC, printouts of which, from the United States Patent & Trademark Office’s online database, were attached as exhibits:
a. Registration No. 1,312,608, first used March 1, 1983, issued January 1, 1985, covering financial services in the field of mortgage loans and mortgage-backed or mortgage-related securities, in International Class 36.
b. Registration No. 1, 644,364, first used December 12, 1989, issued November 12, 1991, covering financial services in the field of mortgage loans and mortgage-backed or mortgage related securities, in International Class 36.
6. In addition to its trademark registrations in the U.S., Complainant owns numerous registrations and applications for its FREDDIE MAC mark and variations of that mark in countries around the world, including Argentina, Australia, Brazil, Brunei, Canada, China, European Community, Hong Kong, India, Indonesia, Japan, Kuwait, Macau, Malaysia, Mexico, New Zealand, Norway, Philippines, Saudi Arabia, Singapore, South Korea, Sri Lanka, Switzerland, Taiwan, Thailand, Turkey, United Arab Emirates, Venezuela, and Vietnam.
7. Complainant also owns Canadian Application No. 1098768 for the mark FREDDIE MAC, filed April 11, 2001, covering financial services, namely, financial services in the field of mortgage loans, and mortgage-backed and mortgage-related securities. (Notably, Mr. Khan, who was an administrative contact for the Domain Name and who corresponded with Complainant regarding the Domain Name, is located in Canada.)
8. Complainant also owns United Arab Emirates Application No. 42827, filed June 9, 2001, covering services in International Class 36. (Notably, one of Respondent Arshad’s addresses of record is located in the United Arab Emirates.)
9. Freddie Mac owns the domain name <freddiemac.com>, which was registered on March 23, 1995 and which has been used to identify Complainant’s website since on or about that date.
10. Complainant’s trademark rights in its FREDDIE MAC mark, based on its U.S. registrations, and filings/registrations in at least twenty-three foreign countries and the European Community, and on its common law rights under United States law acquired through the extensive use of the FREDDIE MAC mark, trade name, and domain name, long predate Respondent’s registration of the domain name <freddiemac.biz> on November 7, 2001.
Respondent’s Infringing Activities and Bad Faith Acts
11. Respondent misappropriated Complainant’s goodwill when he registered the domain name <freddiemac.biz> on November 7, 2001. Given the global fame of the FREDDIE MAC mark, the fact that Complainant owns trademark applications and has a business presence in the countries where Respondent and/or his associates are located, Respondent’s claim that he is a trademark consultant, and the fact that Respondent registered the Domain Name with the intention of selling it by advertising the offer to sell in DirectNIC.com’s WHOIS database, all make clear that Respondent knew of or should have known of Complainant’s rights in its FREDDIE MAC mark.
12. Respondent’s <freddiemac.biz> website is an “under construction” website that contains no content except the sentences “This site is currently being updated please check back soon. Thanks.”
13. Given that Internet users typically associate a domain name comprised of a trademark with the particular company that produces or offers goods and/or services under that mark, the public will reasonably expect to find Complainant’s website located at the domain name <freddiemac.biz>. By design, Internet users will be undeniably misled by Respondent into believing that Respondent’s <freddiemac.biz> website is either operated by Complainant or is operated with Complainant’s permission and authorization.
14. Respondent’s registration and use of the domain name <freddiemac.biz> is also likely to confuse and deceive consumers into mistakenly believing that Respondent and its activities are offered, authorized, or sponsored by Complainant; or are otherwise connected, associated, or affiliated with Complainant.
15. Respondent registered and uses the Domain Name to deprive Complainant of the Internet traffic rightly intended for Complainant, thereby disrupting Complainant’s business. Furthermore, Respondent is interfering with Complainant’s ability to effectively and fully promote its FREDDIE MAC mark and services on the Internet, and to control the images and information associated with its trademarks and logos.
16. On February 21, 2002, Complainant sent Respondent a cease-and-desist letter regarding his infringement of Complainant’s rights in its FREDDIE MAC mark and requesting the transfer of the Domain Name. A copy of that letter was attached as an exhibit.
17. As reflected on the WHOIS record for the Domain Name, on or about March 4, 2002, Respondent changed the registration record to remove Mr. Khan’s name and Respondent’s United Arab Emirates address.
18. On March 18, 2002, Respondent replied to Complainant’s letter stating that his business consisted of web developing, web hosting, and consulting about trademark and service mark registrations. Respondent denied having knowledge of Complainant or its FREDDIE MAC mark; claimed that he registered the Domain Name for his client, “Freddiemac Computers” but provided no documentation that such a company existed, and claimed that his client owns a registered trademark in Pakistan, but did not identify that mark or provide a copy of the registration. A copy of Respondent’s March 18, 2002 e-mail was attached as an exhibit. Complainant was not able to locate any evidence that Respondent’s alleged client “Freddiemac Computers” actually exists.
19. On March 22, 2002, Mr. Khan, who was previously listed as the administrative contact for the Domain Name, sent an unsolicited e-mail to Complainant stating that he had heard that Complainant was “interested” in the Domain Name and asking Complainant to make an offer to purchase the Domain Name, stating “Get the value of your .BIZ name from your market and research department a value for an asset for a name of company worth more than $450,000 millions & net earning is more than 2,500 million.” A copy of Mr. Khan’s March 22, 2002 e-mail was attached as Exhibit 11.
20. On April 26, 2002, Mr. Khan sent a second e-mail to Complainant, asking “what do you think about getting back the ‘freddiemac.biz’” and suggesting a purchase price of 5% of Complainant’s 2001 net profit. Mr. Khan’s question regarding “getting the domain name back” clearly indicates that Respondent and/or his agent Mr. Khan knew of Complainant’s rights in its FREDDIE MAC mark when registering the Domain Name and that the Domain Name was registered expressly for the purpose of selling it to Complainant. A copy of Mr. Khan’s April 26, 2002 e-mail was attached as Exhibit 12.
21. As evidenced above, Respondent’s misappropriation of the Domain Name has injured and will continue to irreparably injure the reputation and hard-earned goodwill of Complainant and its FREDDIE MAC mark. If Respondent is allowed to retain ownership of the infringing domain name <freddiemac.biz>, Complainant will be unable to control the unlimited material and information Respondent can post on a website associated with that domain name, which consumers will confuse and associate with Complainant and/or its FREDDIE MAC mark
Respondent Has No Rights or Legitimate Interests
22. Respondent is not using and has not used or is not demonstrating and has not demonstrated an intent to use the Domain Name in connection with a bona fide offering of goods or services as required by Policy ¶ 4(c)(i).
23. Nor has Respondent satisfied Policy ¶ 4(c)(ii), since Respondent is not and never has been commonly known by the Domain Name. Even assuming that Respondent’s alleged client “Freddiemac Computers” exists, that would not demonstrate Respondent’s legitimate interest in the Domain Name. Further, even if Respondent had claimed his own name was “Freddiemac Computers,” which he did not, the record shows that Respondent registered the Domain Name solely for its value as derived from Complainant’s FREDDIE MAC mark.
24. Respondent is not making legitimate noncommercial or fair use of the Domain Name, without intending to mislead and divert consumers or to tarnish Complainant’s FREDDIE MAC mark for commercial gain.
Respondent’s Bad Faith Under Policy ¶ 4(b)
25. Respondent’s use and registration of the Domain Name meet the bad faith element of Policy ¶ 4(b)(i) because Respondent registered the Domain Name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of Respondent’s documented out-of-pocket expenses. As described above, Respondent used his WHOIS registration record to offer the Domain Name for sale, and also demanded payment from Complainant in excess of the out-of-pocket expenses paid by Respondent to register the Domain Name. See Yahoo! Inc. v. Somsak Sooksripanich, et al., D2000-1461 (WIPO Jan. 29, 2001) (finding bad faith in the respondent’s offer to sell YAHOO!-formative domain names to the complainant); see also America Online, Inc. v. QTR Corp., FA 92016 (Nat. Arb. Forum Feb. 4, 2000) (finding bad faith in the respondents’ offer to sell domain name by listing “this domain name is for sale” in WHOIS directory); see also Robert Ellenbogen v. Mike Pearson, D2000-0001 (WIPO Feb. 17, 2000) (finding that the respondents’ offer to sell domain name to anyone interested without limiting price to out-of-pocket expenses indicated bad faith).
26. Respondent’s registration and use of the Domain Name meet the bad faith element set forth in Policy ¶ 4(b)(iii). Respondent registered and uses the Domain Name to divert Internet traffic from Complainant and to interfere with Complainant’s business and its ability to promote its goods and services under its FREDDIE MAC mark. See S.S. Société Générale de Surveillance S.A. v. Inspectorate, D2000‑0025 (WIPO Mar. 17, 2000) (finding that respondent’s use of a tombstone, or minimalist website, diverts prospective customers and constitutes bad faith).
27. Respondent’s registration and use of the Domain Name meet the bad faith element set forth in Policy ¶ 4(b)(iv). Specifically, Respondent’s use of the Domain Name creates a likelihood of confusion with Complainant’s FREDDIE MAC mark as to the source, sponsorship, affiliation and endorsement of Respondent’s website.
28. Respondent acted in bad faith because he was on notice of Complainant’s rights in its FREDDIE MAC mark when he registered the Domain Name. See Compaq Information Technologies Group, L.P. v. Dealer Direct, Inc. d/b/a/ Inacom Information Systems, FA 97062 (Nat. Arb. Forum June 14, 2001) (finding the respondent registered the domain name in bad faith because it was on notice of the complainant’s rights); see also Europay International S.A. v. Domaines Ltd and Cecilia Ng, D2000-0513 (WIPO July 31, 2000) (holding that respondents must have known they were infringing upon complainant’s exceptionally well known mark by registering it as a domain name).
29. Respondent’s registration of the Domain Name with knowledge of Complainant’s FREDDIE MAC mark and his use of the Domain Name for commercial gain suggests opportunistic bad faith given the widespread use and fame of Complainant’s FREDDIE MAC mark. See Yahoo! Inc. v. David Ashby, D2000-0241 (WIPO June 14, 2000) (finding bad faith where respondent registered the disputed domain name with knowledge of complainant’s mark and used it to seek commercial gain); see also The Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (same).
30. By registering the Domain Name with knowledge of Complainant’s FREDDIE MAC mark and name, Respondent acted in bad faith by breaching his registration contract with DirectNIC.com because he falsely represented that his registration of the Domain Name did not infringe the rights of any third party. This has been held to constitute bad faith under the Policy. See Google Inc. v. www.google.com and Jimmy Siavesh Behain, D2000-1240 (WIPO Nov. 9, 2000) (finding respondent’s false representation to the registrar that its domain name did not infringe the rights of any third party constituted bad faith); see also Sleep-Tone Entm’t Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (same); see also Noodle Time, Inc. v. Max Marketing, AF-0100 (eResolution Mar. 9,2000) (same).
Respondent is in the business of web developing, web hosting and consulting about legal registration of trademarks in Pakistan, under the name of SRSOFT. Due to the September 11, 2001 events, there are money transfer and payment problems from Pakistan so he started banking and making payments from Dubai, UAE, bank accounts like many other Pakistani business vendors. This is why his business address was given as in Dubai rather than Pakistan where his actual business appears to be located.
“My client started his business last year and I submitted his application for a trademark in Pakistan. When I applied to register freddiemac.biz, neither I nor my client [for whom he claims to have registered the domain in his own name, even though he intended to keep title to it for three years] had heard of Federal Home Loan Mortgage Corporation. That company is unknown in Pakistan, because the Federal Home Loan Mortgage Corporation does not exist in Pakistan, and people there do not know about this company as there is no business here with the name of Freddiemac or Federal Home Loan Mortgage Corporation.”
“We are not a competitor of Complainant nor is the nature of business the same so that we can attract internet users for commercial gain. Nor is it a misspelling. Further, I didn't acquire the domain name primarily for the purpose of selling or renting it, as my March 18th’s e-mail establishes. Also my client’s website and logo is totally different. Finally, the Complainant is doing its mortgage financing business in the US, while my client is doing its computer business in Pakistan.”
Furthermore, due to the recent additions of new gTLDs, Internet users should know the difference between “.com” “.biz” and “.info,” especially because the Complainant Federal Home Loan Mortgage uses <freddiemac.com> in all of its publications and Internet uses. See Car Toys, Inc.,v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000); see also Wasabi Sys. Inc. v. G-Net Systems, D2002-0421 (WIPO July 19, 2002).
Respondent does not contest that the disputed domain name resembles the trademark “Freddie Mac” which is apparently registered to the Complainant in various jurisdictions. However, as the holder of a valid trademark in Pakistan, Respondent has rights and legitimate interests in respect of the disputed domain name that counter those of Complainant. See Telamon Corp.v. Telamon Sys., FA 112500 (Nat. Arb. Forum July 1, 2002).
As evidence of his good faith, Respondent changed the website contents and made the home page indicate it was down for updating when he found out there was a dispute, after receiving an e-mail from Federal Home Loan Mortgage on Feb. 21, 2002. This condition is not a bad faith or evidence of lack of legitimate interests as the Complaint claims. See Wasabi Sys. Inc. v. G-Net Sys., D2002-0421 (WIPO July 19, 2002).
“Mr. Salman A Khan [the original contact point for the domain name owner listed with the Registrar until March 2002] was working with us as a web administrator till January 2002.” Due to his intention of selling domains SRS fired him because “he takes out some of our organizations secrets.” He also changed the information of a few domains held by SRS. He added “domain for sale” as an organization name also in e-mail address of *@domainforsale.info, which we changed when we discovered it.
C. Additional Submissions
Summarizing Complainant’s Reply to Respondent’s Answer, Complainant argues that Respondent is trying to claim a legitimate interest and right in the domain name merely because he is a trademark consultant, doing business under the name SRSOFT, yet he filed a trademark application for his client, Muhammad Aman, for the Freddiemac Computers mark in Pakistan in March 2001. Thus, Respondent is not the owner of the mark he relies on for his authority to register the domain in dispute.
Complainant points out that Respondent, by his own admission, is not commonly known as Freddiemac, but SRSOFT. It argues that the fact someone else has a right in the application for a Pakistani trademark does not give Respondent, himself, any rights under the Policy. Complainant also points out that the sole evidence on the issue here is an application for a trademark, not a registered mark, and that on its face, the application indicates that it is still subject to review and has not been registered. Thus, it is subject to contest by Complainant or anyone else with a conflicting right.
Complainant cites a series of cases for the proposition that mere application for a trademark does not establish ownership or rights in it, since if that were the case any cybersquatter could defeat the Policy by merely filing a trademark application. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000); and other cases cited.
Complainant argues that Respondent cannot escape the bad faith evidence of the efforts of Mr. Khan to sell the domain name to Complainant, as Respondent’s representative, merely by claiming that he was a rogue agent acting without authority. Respondent, Complainant claims, provided no evidence of this misconduct beyond such an allegation and even long after Respondent claims to have fired Mr. Khan, Khan was still negotiating for Respondent and seeking to sell the domain to Complainant. As evidence of this, Complainant says that even after the Complaint was sent only to Respondent to his e-mail address of record, on July 23, 2002, Mr. Khan was still e-mailing Complainant with solicitations for “a best offer so I can discuss directly with Freddiemac Computers” the proposed offer to sell it to Complainant.
Complainant also continues its claim of bad faith registration and use, based on the worldwide operations and general knowledge of Complainant and its trademarks, even in Dubai, where Respondent had his banking connections. It also points out that Mr. Khan, Respondent’s agent argued in his e-mails that the name of Complainant was extremely valuable, thereby evidencing that he and his principal know of this entity and were quite familiar with it or its operations. Further, because Complainant has operated a website at <freddiemac.com> for more than seven years, it also feels that anyone with a legitimate interest in adopting this name would have been able to find it in active use with a search engine in a matter of seconds.
Respondent’s final supplemental filing is a somewhat rambling discussion, highlighted by an allegation that perhaps Complainant and Mr. Khan have entered into an alliance or conspiracy to defeat the interests of Respondent in the domain name. He provides no evidence of this, but merely relies on his continuing assertions that he personally has never made any effort to sell the domain and that he is just running his business, with the intention of using this domain for “my clients” for whom he registers domain names and then turns them over to them after three years, based on contracts that he has with them. As with his initial Response, he provides no evidence of the actual existence of the client, the client’s plan of use, or any evidence that he, himself, has any rights to the use of the disputed name. He does offer the Panel, in his final filing, an opportunity to request copies of the confidential contracts he uses for his business.
A. The domain name is substantially identical to Complainant’s registered trademarks.
B. The Registrant has no rights or legitimate interest in the name used in the domain, although it is possible (but unlikely in the Panel’s view) that Registrant’s customer might eventually establish some right in it in Pakistan as long as no one contests it.
C. The Registrant registered and is using the disputed domain name in bad faith, as evidenced by the various items outlined in the Complaint and discussed below.
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
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has established its trademark rights arising from its multiple and multinational trademark registrations and use of FREDDIE MAC. Respondent acknowledges and does not contest the existence of Complainant’s trademark rights or that the domain name in issue is identical to the trademark (stripped of the TLD). This first point is therefore uncontested and favors Complainant.
Rights or Legitimate Interests
Respondent acknowledges that the domain name at issue was registered in his name, and that Salman Khan, c/o Domainsforsale.info, in Toronto, Canada, was initially designated as the Contact of Record for the domain owner until early March 2002. Respondent alleges that Mr. Khan was his web administrator and agent until then, and argues that he was discharged for misconduct in March. Respondent, however, never denies that Mr. Khan represented him in his efforts to sell the domain to Complainant, or that he lacked authority to try to sell the domain for the true owner, whomever that might be, if Respondent was not really the owner. Respondent merely conjures up the concept that perhaps Mr. Khan is in a conspiracy with Complainant to take the name away. This is not evidence. What it does accomplish is to raise serious doubts not only about Respondent’s good faith, but also whether the alleged business he claims to be working for exists for any purpose other than to sell the domain name to Complainant.
The essence of Respondent’s position is that he is a consultant who assists third parties in registering domain names and trademarks, apparently assists in having their websites hosted, and then after a three year period transfers the domains to the people with whom he has contracted. In this case, he relies for ownership on a Pakistani application for a trademark filed on March 7, 2001 by a third party named Muhammed Aman, for a logo and mark “Freddiemac Computers.” This application has not ripened into an actual trademark registration and states on its face that it is subject to review before issuance of any registration certificate.
As noted in the recital of the facts and positions, as part of his defense, Respondent acknowledges that he is not the intended long-term owner and that the name really will eventually belong to his client, Mr. Aman, who is the one who has a trademark application pending in Pakistan for the name “Freddiemac Computers.” Respondent provides no credible explanation why a Pakistani named Muhammad Aman would name his business “Freddiemac Computers,” a strange and unusual name for such a business in any country. Aside from a copy of the trademark application, Respondent provided this Panel with virtually no evidence that Mr. Aman actually exists, that Aman is and has been operating a business under that name, or that there is any contractual or other relationship between the parties or, if there is, what the basis for it is. The Panel is not obligated to accept unsubstantiated statements of a party as conclusive evidence. See Espirito Santo Fin. Group S.A. v. Colman, D2001-1214 (WIPO Jan. 22, 2002) (refusing to accept Respondent’s evidence because “it amounts to no more than unsubstantiated assertions”).
Nonetheless, by taking the position that his rights are derived from a third party’s trademark application, Respondent, in effect, admits that he has no rights in the name, other than as a temporary conduit for his client. The developing law of domain name dispute cases uniformly holds that a Respondent cannot rely on third party ownership of a name or mark for his registration and use of a domain name. See Seagate Tech. LLC v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002) (finding that a Respondent cannot assert the rights of a third party to demonstrate rights or legitimate interests pursuant to STOP Policy ¶ 4(a)(ii) when that third party has not formally intervened in the proceeding).
Even if this were not the decisional law, Paragraph 4(c) of the Policy clearly states in each example of how to prove a right or legitimate interest that the Respondent must prove one of the following fact situations, each of which refers specifically to the Respondent (“YOU”) and not to some third party:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent, here, has not shown that he can meet any one of these requirements. Instead he alleges that the mysterious Muhammad Aman has these rights. This Panel, along with other Panels, holds that the right or legitimate interest referred to in Paragraph 4(a) must be one held by the Respondent and not some third party not involved in the proceeding.
Furthermore, as Complainant points out in the discussion above, the law also firmly holds that even if the Respondent were to have a pending trademark application pending, that alone does not suffice to prove the necessary right or legitimate interest in the name. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (Intent to Use Application insufficient evidence); see also Pioneer Hi-Bred Int’l, Inc. v. Ingescom and Samuel Duran, D2001-0202 (WIPO May 22, 2001) (pending applications in another country insufficient evidence); see also Biogen, Inc. v. SRI Tech Consulting, Inc., D2001-0444 (WIPO June 27, 2001) (application filed for arbitrary name for a business, filed after discussions over sale of the name, insufficient to support any right in the name).
Finally, as Complainant points out in its Supplemental filing, even after the Complaint was served on Respondent himself (and up to four months after he was allegedly discharged) Mr. Khan continued his vigorous efforts to try to sell the domain for millions of dollars to Complainant, in e-mails acknowledging the substantial value of the domain because of the fact Complainant was so well known in the world of finance. Permitting such activity by an agent is hardly evidence of long standing rights and intentions to use the domain name, and is also evidence of bad faith registration and use. Notably, Respondent never disclaimed or objected to the activities of Mr. Khan until Respondent’s filings in this case.
Accordingly, the Panel finds that Complainant has established that Respondent has no right or legitimate interest in the domain name at issue, and that Respondent has failed to establish a believable defense on this issue.
Registration and Use in Bad Faith
Given the clear establishment that Respondent, himself, has no right or legitimate interest in the domain name, it almost per se establishes that he registered and used it in bad faith. However, the Panel believes the situation goes beyond that because of the evidence Complainant produced of obvious efforts from the very beginning of the registration to sell the domain to the trademark owner. The Panel took the unusual step of including, at length, the highly detailed factual allegations by the Complainant and of the Respondent because it felt that this evidence would eliminate here the necessity to repeat those facts in this portion of the decision.
The mere fact that the Contact person, Mr. Khan, had his address at Domainsforsale.info strongly suggests that Respondent intended from the outset to sell it. This fact, combined with the numerous and clumsy efforts by Mr. Khan to solicit a purchase offer from Complainant, which efforts continued even after the notification to Respondent of this proceeding, establishes a clear and convincing pattern of bad faith registration and bad faith use of the domain name by Respondent. Little more need be said, as the facts do speak for themselves in this case.
Even recognizing Respondent’s understandable difficulties in dealing with the English language in what is a multinational legal proceeding, this Panel is nonetheless convinced that on the facts set out above, there can be no question that Respondent was not acting in good faith when he registered as a domain name a unique name or mark that Complainant was able to register as a trademark in nearly thirty countries. This conclusion is further supported by the fact that the name is a unique, fanciful term devised by the financial industry to describe one of the largest and most important U.S. home financing organizations. Its name is neither generic, geographic, or common – it is an unusual term for an unusual and well-known organization. It stretches credulity to believe that a computer store in Pakistan arbitrarily chose to use this name for its business and that Respondent just happened to register the term for the domain name. If there were any evidence that the store-owner selected it and the Panel were given some reason for this step, one might give it more credence, but here the name was obviously selected by one who, by his own admission, is a “trademark consultant” who must have known of its significant value, as touted by his own agent, Mr. Khan.
The Panel, therefore, rules that Complainant has established the requisite bad faith registration and use of the domain by Respondent and that Respondent has failed to establish any credible evidence of the defenses authorized by the Policy as described above.
The Panel concludes that Complainant has proven all three required points under Paragraph 4(a) of the Policy; that Respondent has established none of the defenses available; and that the domain name <freddiemac.biz> shall be transferred forthwith to Complainant under the process established in the Policy and accompanying rules.
G. Gervaise Davis III, Esq., Panelist
Dated: September 19, 2002
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