SCI Services, Inc. v. Dynamic Visibility Solutions
Claim Number: FA0908001277782
Complainant is SCI
Services, Inc. (“Complainant”), represented by Eric J. Shimanoff, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <saxonmodification.com> and <saxonmodifications.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2009.
On August 5, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <saxonmodification.com> and <saxonmodifications.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 August 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 2009 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@saxonmodification.com and postmaster@saxonmodifications.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <saxonmodification.com> and <saxonmodifications.com> domain names are confusingly similar to Complainant’s SAXON mark.
2. Respondent does not have any rights or legitimate interests in the <saxonmodification.com> and <saxonmodifications.com> domain names.
3. Respondent registered and used the <saxonmodification.com> and <saxonmodifications.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SCI Services, Inc., is a residential mortgage
service provider that services nearly 300,000 residential mortgages throughout
the
Respondent, Dynamic Visibility Solutions, registered the <saxonmodification.com> and <saxonmodifications.com> domain names on July 8, 2009. The disputed domain names resolves to the website at the <fedmodapproval.com> domain name, which also provides strictly competing home financing services under the name “Nationwide Mortgage Solutions LLLP.”
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 submitted evidence of its registration of the SAXON mark with the USPTO (Reg. No. 2,028,654 issued January 7, 1997). Previous panels routinely uphold complainants’ rights in their respective marks under Policy ¶ 4(a)(i) through such registration with a governmental trademark authority. See, e.g., Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel similarly finds that Complainant has satisfactorily demonstrated its rights in the SAXON mark pursuant to Policy ¶ 4(a)(i).
The <saxonmodification.com> and <saxonmodifications.com> domain names contain Complainant’s entire SAXON mark along with the following additions: (1) the word “modification” in singular or plural form; and (2) the generic top-level domain “.com.” As for the latter element, the necessity of each domain name to have a top-level domain means that such additions are irrelevant under the Policy. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Moreover, when words that describe the mark or services provided under the mark are added in a disputed domain name, panels tend to find that confusing similarity under the Policy is actually heightened. See, e.g., Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the <wellfargobank.com> domain name is confusingly similar to the WELLS FARGO mark, because altering the mark by one letter and adding “…the word ’bank,’ a word that both describes the type of business that Complainant engages in and is included in its <wellsfargobank.com> domain name, does not alleviate any confusing similarity.”). In this case, “modification” and “modifications” succinctly describe Complainant’s loan modification services. Therefore, the Panel finds that the <saxonmodification.com> and <saxonmodifications.com> domain names are confusingly similar to Complainant’s SAXON mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant expressly contends that Respondent is not a licensee
of Complainant, and that Respondent has never received authorization to use
Complainant’s SAXON mark in any fashion.
The WHOIS information further lists Respondent only as “Dynamic
Visibility Solutions.” Given the lack of
evidence within the record demonstrating that Respondent is at all commonly
known by the either or both of the disputed domain names, the Panel finds that
Respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); see
also
The <saxonmodification.com> and <saxonmodifications.com> domain
names, which were registered on July 8, 2009, resolve to the website at the
<fedmodapproval.com> domain name.
This resolving website purports to provide strictly competing home
financing services under the name “Nationwide Mortgage Solutions LLLP.” Complainant has submitted screenshots
corroborating this asserted use. Complainant
has further attached WHOIS evidence that Respondent owns the
<fedmodapproval.com> domain name and resolving website. The Panel presumes that Respondent gains
obvious commercial benefit from this competing use in the loan modification
industry. Such commercial uses for
competing benefit have been found to fail as bona fide offerings of goods or services pursuant to
Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses pursuant to Policy ¶
4(c)(iii). See, e.g., Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that
the respondent's “use of the domain name (and Complainant’s mark) to
sell products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”); see
also Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat.
Arb. Forum Dec. 2, 2003) (finding that Respondent lacked rights and legitimate
interests in the <jawsoflife.com> domain name where it was being used to
divert Internet users to the website for Phoenix Rescue Tools, one of
Complainant’s direct competitors).
Consequently, the Panel finds that Respondent lacks rights and
legitimate interests under both Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As noted above, the disputed domain names resolve to a
directly competing website at the <fedmodapproval.com> domain name. Respondent, as owner of this competing
business, clearly sought to disrupt Complainant’s business for monetary gain
through the registration and use of the disputed domain names. Therefore, the Panel finds that Respondent
has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA
328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet
traffic that seeks out the <aol.tv>
domain name to a competitor’s news site.
The Panel strongly finds that appropriating Complainant’s mark to refer
customers seeking Complainant to Complainant’s competitors is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”).
Respondent’s desire for commercial
gain is evident through the commercial use of the competing website redirecting
from the disputed domain names.
Respondent has thus intentionally created a likelihood of confusion as
to Complainant’s endorsement or sponsorship of the confusingly similar disputed
domain names and the resolving website.
This demonstrates that Respondent has registered and continues to use
the dispute domain names in bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v.
Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17,
2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent
registered a domain name confusingly similar to the complainant’s mark and the
domain name was used to host a commercial website that offered similar services
offered by the complainant under its mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saxonmodification.com> and <saxonmodifications.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 17, 2009
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