E-Loan, Inc. v. Guilford Capital Corporation
Claim Number: FA0806001203424
Complainant is E-Loan, Inc. (“Complainant”), represented by Michael
W. O. Holihan, of Michael W. O. Holihan, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e-loan-mortgage.com>, registered with Godaddy.com, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2008.
On June 10, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <e-loan-mortgage.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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. Respondent’s <e-loan-mortgage.com> domain name is confusingly similar to Complainant’s E-LOAN mark.
2. Respondent does not have any rights or legitimate interests in the <e-loan-mortgage.com> domain name.
3. Respondent registered and used the <e-loan-mortgage.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been using the E-LOAN mark in conjunction with online lending and mortgage services at least as early as 1996. It is a market leader in online mortgage and lending services. It has funded over $32 billion in mortgage and consumer loans through its main website at the <eloan.com> domain name, which was registered on May 11, 1999. It has registered the E-LOAN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,885,929 issued September 21, 2004).
Respondent’s <e-loan-mortgage.com> domain name was registered on February 11, 2008 and currently resolves to a website containing various links to third-parties, all of which lead to other competing online lending companies.
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."
In view of 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 draw such inferences it 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 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; 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.
Complainant has sufficiently established rights in the E-LOAN mark through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
The <e-loan-mortgage.com> domain name contains
Complainant’s E-LOAN mark in its entirety followed by a hyphen, the descriptive
term “mortgage,” and the generic top-level domain (“gTLD”) “.com.” The word “mortgage” has an obvious relation
to the business Complainant engages in under E-LOAN mark; it describes a
specific service Complainant offers.
Descriptive terms fail to distinguish a disputed domain name under
Policy ¶ 4(a)(i).
See Miller Brewing
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the <e-loan-mortgage.com> domain name pursuant to Policy ¶ 4(a)(ii). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has met this threshold and that the burden is accordingly shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).
No response has been filed in this case. Absent a response, the Panel may presume that Respondent lacks rights and legitimate interests in the <e-loan-mortgage.com> domain name under Policy ¶ 4(c), but will nonetheless examine the record in consideration of the elements listed. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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).
Respondent has not sought nor received permission or license to use the E-LOAN mark. Additionally, there is nothing in the record that indicates that Respondent is or ever was commonly known by the disputed domain name. The WHOIS record identifies Respondent as “Guilford Capital Corporation.” This is, however, insufficient absent a response or any additional evidence. Therefore, the Panel finds that Complainant is not commonly known by the <e-loan-mortgage.com> domain name pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Previous panels have found that a website that displays nothing but a series of links to competitors of a complainant demonstrates a respondent’s lack of rights and legitimate interests in the domain name supporting that website. In Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), the disputed domain name resolved to a website which redirected Internet users “to a website featuring links to travel services … that directly compete with Complainant’s business.” The panel found the respondent’s use of a confusingly similar disputed domain name to redirect Internet users to websites offering products and services in competition with a complainant’s business to be neither “a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Similarly, the disputed domain name in Computer Doctor Franchise Systems, Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000), resolved to a website blank but for links to other websites. The panel found this to not constitute a “legitimate use of the domain names,” and stated that the respondent was “not using the domain names in connection with a bona fide offering of goods and services nor for a legitimate noncommercial purpose [pursuant to Policy ¶ ¶ 4(c)(i) and 4(c)(iii)].” Likewise, Complainant’s use of the disputed domain name, to resolve to a website containing a variety of links to direct competitors of Complainant, is considered by the Panel to constitute neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
The <e-loan-mortgage.com> domain name resolves to a website containing a series of hyperlinks. These links identify and advertise a variety of other online mortgage, lending, and financial services. They are all direct competitors of Complainant and the Panel may presume that this is disruptive to Complainant’s business. As a result, the Panel finds Respondent’s disruptive use of the disputed domain name to establish Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Previous panels that have found a series of links to competitors to constitute bad faith pursuant to Policy ¶ 4(b)(iii) have likewise found bad faith under Policy ¶ 4(b)(iv). When there is no response from a respondent, links to competitors are generally presumed to financially benefit the respondent through either advertising revenue or “click-through” fees. See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website.”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third-party websites). Likewise, regardless of the size of the commercial benefit Respondent has obtained through its competing use of the confusingly similar disputed domain name, the Panel finds this to be additional evidence of Respondent’s bad faith registration and use of the <e-loan-mortgage.com> domain name pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel concludes that Complainant has sufficiently established 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 <e-loan-mortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 29, 2008
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