Countrywide Financial Corporation v. Group Of One LLC
Claim Number: FA0804001176646
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance
G. Johnson of Roylance, Abrams, Berdo & Goodman,
L.L.P., Washington DC, USA.
Respondent is Group Of One LLC (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <countriwide.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 7, 2008; the National Arbitration Forum received a hard copy of the Complaint April 11, 2008.
On April 8, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <countriwide.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
21, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 12, 2008,
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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <countriwide.com>, is confusingly similar to Complainant’s COUNTRYWIDE mark.
2. Respondent has no rights to or legitimate interests in the <countriwide.com> domain name.
3. Respondent registered and used the <countriwide.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Countrywide Financial Corporation, is in the business of financing home loans. Complainant registered its COUNTRYWIDE mark with the United States Patent and Trademark Office (“USPTO”) on January 5, 1993 (Reg. No. 1,744,794).
Respondent, Group Of One LLC, registered the <countriwide.com> domain name January 28, 2004. The disputed domain name resolves to a website featuring third-party links for services in direct competition with Complainant, some of which display Complainant’s COUNTRYWIDE mark.
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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant established rights in the COUNTRYWIDE mark by its registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <countriwide.com> domain name incorporates Complainant’s entire COUNTRYWIDE mark with a difference of the letter “i” substituted for the letter “y.” The addition of the generic top-level domain “.com” is irrelevant when evaluating if the disputed domain name is confusingly similar to Complainant’s mark. Therefore, the Panel finds that Respondent’s <countriwide.com> domain name is confusingly similar to Complainant’s COUNTRYWIDE mark under Policy ¶ 4(a)(i). SeeBelkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must establish a prima facie case that Respondent lacks rights and legitimate interests in the <countriwide.com> domain name in order for the burden to shift to Respondent to present evidence that it possesses rights and legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie case, and will examine the elements of Policy ¶ 4(c) to determine whether or not evidence suggests that Respondent has rights or legitimate interests in the <countriwide.com> domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
No evidence in the record suggests that Respondent is known by the <countriwide.com> domain name. Complainant contends that Respondent is not authorized to use its COUNTRYWIDE mark in any way. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See eLuxury.com, Inc. v. Sandulli, FA 960178 (Nat. Arb. Forum June 7, 2007) (finding that the respondent was not commonly known by the <eluxury.mobi> domain name where it was not known by the name at the time of registration and the complainant had not given the respondent a license); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
Respondent is using the <countriwide.com> domain name to host a website that displays hyperlinks for various third-party websites in direct competition with Complainant. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <countriwide.com>
domain name to display hyperlinks to various third-party websites in direct
competition with Complainant is presumably for Respondent’s own commercial gain.
The evidence permits an inference that Respondent enjoys the accrual of click-through
fees for these hyperlinks. The Panel
finds that the disputed domain name, and the nature of the
hyperlinks displayed on the resulting website, indicate that Respondent
is attempting to commercially benefit by creating a likelihood of confusion
with Complainant and its business. Such use supports findings that Respondent
registered and is using the domain name in bad faith registration under Policy
¶ 4(b)(iv). See Ass’n
of Junior Leagues Int’l Inc. v. This Domain Name My Be
Moreover, Respondent’s use of the disputed domain name is disrupting Complainant’s business, and this also supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <countriwide.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 2, 2008.
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