Countrywide Financial Corporation v. Laksh Internet Solutions Private Limited
Claim Number: FA0805001189152
PARTIES
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance G. Johnson, of Roylance, Abrams, Berdo & Goodman
L.L.P.,
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <countrywidemortgage.com> and <countrywideloans.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2008.
On May 29, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <countrywidemortgage.com> and <countrywideloans.com> domain names are registered with Lead Networks Domains Pvt. Ltd. and that the Respondent is the current registrant of the names. In response to a notification by the National Arbitration Forum that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 3, 2008. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 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 postmaster@countrywidemortgage.com and postmaster@countrywideloans.com by e-mail.
On June 17, 2008, Respondent filed with the National Arbitration Forum under the National Arbitration Forum’s Supplemental Rule 6 a Request for an Extension of Time in which to Respond to the Complaint. On June 19, 2008, the National Arbitration Forum granted this request extending the deadline by which Respondent could file a Response to the Complaint to July 7, 2008.
On July 3, 2008, Respondent filed with the National Arbitration Forum under National Arbitration Forum’s Supplemental Rule 6 an Additional Request for an Extension of Time in which to Respond to the Complaint. On July 3, 2008, the National Arbitration Forum granted this request extending the deadline by which Respondent could file a Response to the Complaint to July 14, 2008.
A Response was received on July 15, 2008. Pursuant to ICANN’s Rule 5, it was determined to be deficient because it was received late in hard copy.
Complainant submitted a timely Additional Submission on July 21, 2008 in accordance with the National Arbitration Forum’s Supplemental Rule 7. The Panel has considered such Additional Submission in rendering its Decision.
An Additional Submission was submitted by Respondent on July 29, 2008 and was determined to be deficient. The Panel has not chosen to consider this Additional Submission in its Decision.
On
July 25, 2008, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has been in the
business of financing home loans since 1969, and anyone involved in the home
loan financing market would know of Complainant’s established service mark,
COUNTRYWIDE. As of 2000, Complainant was
ranked within Fortune Magazine’s top 500
Complainant has
established
Complainant owns the domain name <countrywide.com>, which receives more than a million Internet visits per week.
The disputed domain names, <countrywidemortgage.com> and <countrywideloans.com>, were registered, respectively, on June 28, 2001 and October 4, 2001. Both names resolve to Respondent’s website, which provides links to services that compete directly with the services offered by Complainant. Presumably, Respondent collects click-through fees for each customer use of the linkage.
With respect to the disputed domain names, Complainant sent a cease-and-desist letter to Respondent on January 28, 2008. Respondent failed to reply.
As the first portion of each disputed domain name is identical to Complainant’s service mark, the names are confusingly similar to that mark. Addition of the words “mortgage” and “loans” do not diminish this similarity, especially since both words describe Complainant’s primary business.
Respondent has no rights or legitimate interests in the names in question. Respondent is not, and has never been, a licensee of Complainant and has not been authorized by Complainant to use its mark in any manner. Complainant believes that Respondent is not commonly known by either disputed domain name.
Respondent registered and is using the disputed domain names in bad faith. As Complainant’s USPTO service mark registrations pre-dated by many years the registrations of both names, Respondent had constructive knowledge of Complainant’s rights. Furthermore, due to the renown of Complainant’s operations, Respondent undoubtedly possessed actual knowledge of those rights, as evidenced by Respondent’s use of the names to link consumers to offerings that compete directly with Complainant’s services. Respondent is thus using the disputed domain names to create a false association with Complainant and its services.
B. Respondent
Respondent paid US $40,000.00 for the disputed domain names on behalf of a client that has not repaid Respondent for the purchase. As a result, Respondent has retained ownership of the names, renewing registration when appropriate.
Respondent is willing to transfer the disputed domain names to Complainant for US $40,000.00, representing Respondent’s out-of-pocket expenses.
Respondent is unaware that Complainant has rights in the COUNTRYWIDE mark, and Complainant has failed to prove exclusive use of it.
Respondent’s parking of the disputed domains names with their registrar is allowable under ICANN rules, and the auctioning of those names while so parked is also permissible. Respondent denies that it collects fees in connection with the current uses of the names.
Though Complainant admits that the
domain names at issue were registered in 2001, Complainant has waited until
2008 to take action to gain a transfer.
In effect, Complainant has waited until the registration of the names
switched from a person in the
Neither of the disputed domain names is confusingly similar to Complainant’s claimed service mark.
The disputed domain names are not
stolen property, and the prior owner had full rights to sell them to
Respondent. Thus, Respondent has
legitimate interests in the names by virtue of payment for them. Respondent has also established common law
interests in those names under the laws of
Respondent is not guilty of bad faith with respect to the disputed domain names, since it does not decide what the registrar does with the names while they are parked. Respondent is not attempting to disrupt Complainant’s business as Respondent does not operate in competition with Complainant. Furthermore, Respondent has in no way intentionally attempted to attract, for commercial gain, Internet users to its website by creating the likelihood of confusion with Complainant’s mark.
C. Complainant’s Additional Submission
Respondent’s Response in this proceeding is untimely (received on July 15, 2008, when due by July 14, 2008) and should not be considered.
Respondent provides no evidence of its out-of-pocket costs to purchase the disputed domain names, much less that such costs amounted to US $40,000.00. Respondent’s contention on this issue is actually an attempt to sell the names and evidence of bad faith registration and use of the same. If Respondent truly believes it has a claim for said amount of money, Respondent must look solely to its alleged client for recompense.
Many prior UDRP panels have recognized the scope and strength of Complainant’s service mark.
Respondent has made no showing that it falls within the parameters of paragraph 4(c) of the Policy in establishing its rights or legitimate interest in the disputed domain names. In citing the registrar’s use of the parked names, Respondent refuses to acknowledge its own responsibility to select website content or take down the sites entirely.
Respondent is a self-admitted “domain taster” who, according to published reports, generates as much as $0.73 cents per click-through. Such action constitutes real and direct harm to Complainant.
Respondent claims not to know of Complainant, but then fails to explain why the website at the disputed domain names are populated with links to financial service providers.
FINDINGS
Complainant is a
very well-known
Respondent is listed as the registrant of the disputed domain names <countrywidemortgage.com> and <countrywideloans.com>, and the records of registration were created on June 28, 2001 and October 4, 2001, respectively. Respondent has parked the names with their registrar, and the websites attached to the names provide Internet users with links to financial services that compete directly with those offered by Complainant.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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 duly notes that Respondent filed its Response in these proceedings after the filing deadline, despite having been granted two filing extensions. However, since the filing was only one day late and the Panel can detect no undue burden placed upon Complainant because of that one-day tardiness, the Panel shall, pursuant to its discretion under paragraph 10 of the Rules and the interest of justice, consider the Response in rendering its decision. See Bd. of Governors of Univ. of Alberta v. Katz d/b/a Domain Names for Sale, D2000-0378 (WIPO June 22, 2000) (“…the panelist has considered the contents of the late Response on the grounds that it was only one day late and was received before the panelist was appointed and before any substantive review was begun.”); see also Vandergriff & Vandergriff Motorsports, Ltd. v. Sklute & Racers Edge Photography, FA 959691 (Nat. Arb. Forum May 29, 2007).
Complainant observes rightly that it has brought many prior cases before UDRP panels. In all of those cases, the respective panels have concluded that Complainant has rights in the service mark COUNTRYWIDE. In view of the registration evidence presented by Complainant (Exhibit 3), the Panel sees no reason to deviate from those conclusions. See Countrywide Fin. Corp. v. Search Terms c/o Domain Admin, FA 629218 (Nat. Arb. Form Mar. 7, 2006); see also Countrywide Fin. Corp. v. Hokabyan, FA 638287 (Nat. Arb. Forum Mar. 22, 2006).
In comparing the disputed domain names to Complainant’s valid mark, the Panel notes that both names include the full mark as the first and dominant term. To Complainant’s mark, Respondent has added in each case a descriptive word, i.e., “mortgage” and “loans.” Complainant contends that both words are directly descriptive of Complainant’s primary business, which involves home loan mortgages. The Panel agrees: the added words do not reduce the confusing similarity between the names and the mark and probably even increase their similarity. As a result, the Panel finds that the disputed domain names are confusingly similar to Complainant’s service mark. See Porsche AG v. Terkin, D2003-0888 (WIPO Jan. 6, 2004) (where the panel found the disputed domain name <porsche-autoparts.com> confusingly similar to complainant’s mark PORSCHE); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark).
Consequently, the Panel finds that Complainant has shown that the disputed domain names are each identical or confusingly similar to a service mark in which the Complainant has rights.
In many prior UDRP rulings, panels have noted that if a complainant makes a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name pursuant to Policy paragraph 4(a)(ii), then the burden shifts to that respondent to show that it does have rights or legitimate interests. See G.D Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In the present case, Complainant has established clearly its rights in a service mark, to which the disputed domain names have been found by the Panel to be confusingly similar. Moreover, Complainant states plainly, in both the Complaint and its Additional Submission, that Respondent has neither been a licensee of Complainant nor been otherwise authorized by Complainant to use its COUNTRYWIDE mark in any way. Thus, the requisite prima facie case is made.
In its Response, Respondent made no reference to paragraph 4(c) of the Policy in asserting its rights or legitimate interests in the disputed domain names. Given Respondent’s name, which does not relate to the disputed domain names in any way, and its admission that it has merely “parked” the names with their registrar, the Panel doubts that Respondent could have framed a convincing argument based on the requirements of that paragraph in any event. Paragraph 4(c) of the Policy simply does not benefit Respondent in this case. See Hoffmann-La Roche Inc. v. Truskowski, FA 808287 (Nat. Arb. Forum Nov. 14, 2006) (“…the operation of a ‘parking page’ in connection with the disputed domain name does not constitute a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)[i] or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)[iii].”); see also Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007).
Respondent does argue that it has rights or legitimate interests in the disputed domain names merely because it purchased the names for US $40,000.00 from the former owner of the names. Obviously, this is an insufficient argument, as the entire purpose of the Policy is to allow legitimate trademark or service mark holders to challenge the ownership of domain names, whether acquired through registration or purchase, that infringe upon those marks.
Respondent also
claims that its use of the domain names at issue has conferred upon it some
sort of common law rights under Indian as well as
As reasoned above, the Panel determines that Complainant has sustained its burden to show that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent points out that it is not the initial registrant of the disputed domain names. However, previous UDRP cases have noted that this circumstance does not prevent a finding of bad faith registration, and the Panel will consider Respondent’s acquisition of the names as equivalent to registration of the same. See BWR Res. Ltd v. Waitomo Adventures Ltd, D2000-0861 (WIPO Oct. 4, 2000); see also MC Enter. v. Segal (Namegiant.com), D2005-1270 (WIPO Jan. 27, 2006) (“The Respondent is not the original registrant of the subject domain name, but for the purposes of the Policy, his acquisition of the subject domain name constitutes registration.”).
Respondent has also contended that it purchased the disputed domain names for U.S. $40,000.00 at the behest of a client, although Respondent has provided the Panel with no evidence substantiating the existence of said client. For that matter, Respondent also has not furnished evidence that it actually did pay that sum. The Panel is curious as to why the domain names would command such a high price. The only reasonable conclusion the Panel can reach is that this price would result from drawing a significant number of Internet users to websites attached to the names based upon their confusing similarity to Complainant’s service mark. Certainly, that seems to be the business theory under which the names are being used currently since—as Complainant contends and Respondent does not dispute—the names are attached to websites that offer links to services that are similar to those offered by Complainant.
Respondent claims
that it does not profit from this linkage—one more claim that Respondent does
not bother to back up with evidence—and that it should not be held accountable
for that use because the registrar, with whom Respondent has parked the names,
decided on the links. First, the Panel
determines that Respondent cannot hide behind the discretion of the registrar
to avoid culpability as to use of the disputed domain names. See
Ideal Prod., LLC v.
Second, the Panel believes that someone, registrar or Respondent (or both), is gaining commercially from the links to competing websites. Thus, the Panel finds that, as Respondent bears ultimate responsibility for this use, it has in effect intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website—a circumstance giving rise to a finding of bad faith per Policy paragraph 4(b)(iv).
In its defense,
Respondent has put forward the argument that Complainant initiated the
Complaint only after ownership of the disputed domain names switched from an American
to an Indian company (Respondent), and is thus motivated by discrimination. The Panel finds nowhere in the Policy or the
Rules the relevance of discrimination with respect to domain name
disputes. Moreover, Complainant has
initiated numerous prior Policy proceedings to protect its rights against
Accordingly, the Panel rules that Complainant has proved that Respondent registered and is using the disputed domain names in bad faith.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <countrywidemortgage.com>and <countrywideloans.com> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: August 8, 2008
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