E-Loan Inc. v. Dwi Indrianto
Claim Number: FA0806001203427
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 <eloanplaza.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (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 11, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <eloanplaza.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 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@eloanplaza.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 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <eloanplaza.com> domain name is confusingly similar to Complainant’s E-LOAN mark.
2. Respondent does not have any rights or legitimate interests in the <eloanplaza.com> domain name.
3. Respondent registered and used the <eloanplaza.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has utilized the E-LOAN mark in connection with its <eloan.com> domain name since at least as early as 1999 to offer online lending and mortgage services. It has funded over $32 billion in mortgage and consumer loans. Complainant registered the E-LOAN mark with the United States Patent and Trademark Office (“USPTO”) and was issued a trademark registration on September 21, 2004 (Reg. No. 2,885,929).
Respondent registered the <eloanplaza.com> domain name on November 28, 2007, and it currently resolves to a web page featuring a series of links to third-parties. All of these third-parties offer similar services as those offered by Complainant under the E-LOAN mark and are in direct competition with Complainant’s mortgage and lending services.
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.
The Panel has no problem finding that Complainant has
established rights in the E-LOAN mark pursuant to Policy ¶ 4(a)(i) because it has provided copies of its registration with
the USPTO. See Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007)
(finding that the complainant’s federal trademark registrations for the
CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights
in the mark pursuant to Policy ¶ 4(a)(i)); see
also
Complainant alleges that the <eloanplaza.com> domain name is confusingly similar to
Complainant’s E-LOAN mark. The disputed
domain name omits the hyphen in Complainant’s mark and includes the generic
top-level domain (“gTLD”) “.com.”
However, it is well-established that the omission of punctuation and
inclusion of gTLDs is irrelevant to a Policy ¶ 4(a)(i)
analysis. See Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27,
2003) (“The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name.”); see also Innomed Techs., Inc.
v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level
domains are irrelevant for purposes of the Policy); see also Ritz-Carlton Hotel
Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000)
(finding that removing a hyphen in the domain names is not sufficient to
differentiate the domain names from the mark). The disputed domain name
does incorporate the generic term “plaza.”
The Panel finds that “plaza” can refer to a multitude of locations or
situations, making it generic, which on its own is insufficient to distinguish
the disputed domain name. See Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
subject domain name incorporates the VIAGRA mark in its entirety, and deviates
only by the addition of the word “bomb,” the domain name is rendered
confusingly similar to the complainant’s mark); see also Gen. Elec. Co. v.
Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com>
domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC
mark).
Accordingly, the Panel finds that Respondent’s <eloanplaza.com> domain name is
confusingly similar to Complainant’s E-LOAN mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Policy ¶ 4(a)(i) has been established.
Initially, Complainant must make a prima facie showing under Policy ¶ 4(a)(ii) demonstrating that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case against Respondent, and that the burden is consequently shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
In this case though, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has failed to submit a Response to the Complaint. However, the Panel will still examine the record in consideration of the elements listed under Policy ¶ 4(c). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
The WHOIS information for the disputed domain name lists “Dwi Indrianto.” On
first impression, there is no logical connection between “Dwi
Indrianto” and the <eloanplaza.com>
domain name. Absent any additional
evidence in the record, the Panel declines to find that Respondent is or ever
was commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Previous panels have maintained the principle that when a
competing use is made of a confusingly similar domain name, it does not
constitute 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). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb.
Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar
domain name to advertise real estate services which competed with the
complainant’s business did not constitute 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)); see also DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”). In this situation, Respondent is using the <eloanplaza.com> domain name to list a series of web links to various
third-parties, all of whom offer mortgage and lending services in direct
competition with those offered under the E-LOAN mark. As a result, this Panel finds that this
competing use of Respondent’s confusingly similar disputed domain name does not
constitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommericial
or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel concludes that Policy ¶ 4(a)(ii) has been established.
Disputed domain
names which are confusingly similar to a given mark and contain links to
competitors of the goods or services offered under that mark are presumptively
held to have been registered and used in bad faith for the purpose of
disrupting the business conducted under the related mark. 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business).
The Panel likewise finds
that Respondent’s disruptive use of the <eloanplaza.com> domain name to display a series of links
to Complainant’s direct competitors establishes in the absence of a response
from Respondent that Respondent registered and is using the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iii). See
also Classic Metal Roofs, LLC v.
Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding
that the respondent registered and used the <classicmetalroofing.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet
users to the respondent’s competing website).
Furthermore, many previous panels have held that links to web
pages, which contain mostly links to competitors of a complainant, can be
presumed to commercially benefit the respondent. See,
e.g. Associated Newspapers
Ltd. v. Domain Manager, FA 201976 (Nat.
Arb. Forum Nov. 19, 2003) (“the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”). Such use of a disputed domain name for a
respondent’s own commercial gain establishes evidence of its bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
Similarly,
Respondent’s <eloanplaza.com>
domain name resolves to a website displaying a series of links to Complainant’s
direct competitors. The Panel presumes
that this leads to a likelihood of confusion for Internet users and that Respondent
is commercially benefiting from such use.
Accordingly, the Panel finds this to be further evidence of Respondent’s
bad faith registration and use of the disputed domain name pursuant to Policy ¶
4(b)(iv). See
also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)
(finding that the respondent engaged in bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant).
The Panel concludes that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eloanplaza.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 25, 2008
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