Federal Home Loan Mortgage Corporation v. Perfect Leads LLC
Claim Number: FA0210000128653
PARTIES
Complainant is
Federal Home Loan Mortgage Corporation, McLean, VA (“Complainant”)
represented by David Kelly, of Finnegan Henderson Farabow Garrett
& Dunner L.L.P. Respondent is
Perfect Leads LLC, South Jordan, UT (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <freddymae.com>, registered with Bulkregister.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint
to the National Arbitration Forum (the “Forum”) electronically on October 17,
2002; the Forum received a hard copy of the Complaint on October 18, 2002.
On October 18, 2002, Bulkregister
confirmed by e-mail to the Forum that the domain name <freddymae.com>
is registered with Bulkregister and that Respondent is the current registrant
of the name. Bulkregister has verified
that Respondent is bound by the Bulkregister 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 October 21, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of Novembe 11, 2002 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@freddymae.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On December 9, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as
Panelist.
Having reviewed the
communications records, the Administrative Panel (the “Panel”) finds that the
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 Forum’s Supplemental Rules and any rules and principles of law that
the Panel deems applicable, without the benefit of any Response from
Respondent.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <freddymae.com>
domain name is confusingly similar to Complainant’s FREDDIE MAC mark.
Respondent does not have
any rights or legitimate interests in the <freddymae.com> domain
name.
Respondent registered
and used the <freddymae.com> domain name in bad faith.
B. Respondent
Respondent failed to
submit a Response in this proceeding.
FINDINGS
Complainant has operated
as a mortgage lender in support of homeownership and rental housing since
1970. For over thirty years,
Complainant has indirectly financed one out of six homes in the United States
and home ownership for more than thirty (30) million families. Complainant prides itself on putting private
investor capital to work for homeowners, which ultimately lowers the housing
costs for homebuyers and renters.
Complainant owns
multiple trademark registrations for the FREDDIE MAC mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. Nos. 1,312,608 and
1,644,364). Complainant has either
filed for or received registration status in at least twenty-three (23) foreign
countries and the European Community for the FREDDIE MAC mark. The FREDDIE MAC mark has gained a significant
amount of goodwill for Complainant, as the mark has denoted Complainant’s
mortgage services since 1970.
Complainant now operates
on the Internet at the <freddiemac.com> domain name, among other
web-addresses. At the
<freddiemac.com> website Complainant provides comprehensive information
about its mortgage services and related products, the residential mortgage
finance market, and affordable housing.
Respondent registered
the <freddymae.com> domain name on August 13, 2001. Respondent uses the subject domain name to
offer competing mortgage-related services on the Internet. Complainant notes that Respondent’s
mortgage-related services do not directly compete with Complainant’s services
because Respondent services the primary mortgage market and Complainant
services the secondary mortgage market.
However, Respondent uses the <freddymae.com> domain name to
operate in the same general mortgage/financial services industry as
Complainant.
DISCUSSION
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 the 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.
Paragraph 4(a) of the
Policy requires that the 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
established its rights in the FREDDIE MAC mark through proof of trademark
registration with the USPTO and continuous use of the mark in commerce since
1970.
Respondent’s <freddymae.com>
domain name has the same appearance as Complainant’s FREDDIE MAC mark at first
glance. The second level domain,
“freddymae,” essentially contains a condensed, differently spelled version of
Complainant’s FREDDIE MAC mark. No
spaces are found in between the words in the second level domain, but that is
because spaces are not permitted in domain names. See Hannover Ruckversicherungs-AG v. Ryu, FA
102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names…”). However, the second level domain appears to
contain two words, “freddy” and “mae.”
The word “freddy” is phonetically the same as the “FREDDIE” portion of
Complainant’s FREDDIE MAC mark. In
addition, the word “mae” deviates from the “MAC” portion of Complainant’s mark
by only one letter, and, as such, merely represents a misspelling. Therefore, the overall second level domain
constitutes a misspelled version of Complainant’s FREDDIE MAC mark, which is
confusingly similar to said mark. See
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a Respondent
does not create a distinct mark but nevertheless renders the domain name
confusingly similar to Complainant’s marks); see also Bama Rags, Inc.
v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the
domain names, <davemathewsband.com> and <davemattewsband.com>, are
common misspellings and therefore confusingly similar).
Furthermore, the
addition of the generic top-level domain “.com” has no source identifying
significance. Top-level domains are
required in domain names and have no legal relevance when undertaking a Policy
4(a)(i) analysis. Therefore,
Respondent’s <freddymae.com> domain name is confusingly similar to
Complainant’s FREDDIE MAC mark. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to
come forward and challenge Complainant’s allegations. Particularly, Respondent has not rebutted the contention that it
has no rights or legitimate interests in the <freddymae.com>
domain name. Due to the fact that
Complainant has submitted a prima facie Complaint and Respondent has not
come forward, the Panel presumes that Respondent has no rights or legitimate
interests in the <freddymae.com> domain name. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336
(eResolution Sept. 23, 2000) (finding no rights or legitimate interests where
no such right or interest was immediately apparent to the Panel and Respondent
did not come forward to suggest any right or interest it may have possessed).
Furthermore, as the
Respondent allowed the Complaint to go uncontested, the Panel accepts
Complainant’s allegations as true and will draw all reasonable inferences in
favor of Complainant. See 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”); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true).
Respondent uses the
domain name to divert Internet traffic to a website that offers
mortgage-related services. Respondent
is using the confusingly similar variation of Complainant’s FREDDIE MAC mark to
offer comparable services to related clientele that Complainant offers under
the mark. Internet users are presumably
being diverted from Complainant’s <freddiemac.com> website to the
Respondent’s misspelled version, <freddymae.com>. Respondent’s actions do not constitute a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor do
they represent a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain
names were confusingly similar to Complainant’s mark and that Respondent’s use
of the domain names to sell competing goods was illegitimate and not a bona
fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet,
Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate
interests where Respondent generated commercial gain by intentionally and
misleadingly diverting users away from Complainant's site to a competing
website).
Respondent has failed to
come forward with any evidence establishing that it is commonly known by FREDDY
MAE or <freddymae.com>.
Respondent’s business identity in this dispute is noted as Perfect Leads
LLC, which has no apparent connection to the <freddymae.com> domain
name. Therefore, Respondent has no
rights or legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark).
Accordingly, the Panel
finds that Respondent has no rights or legitimate interests in the <freddymae.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <freddymae.com>
domain name in competition with Complainant’s FREDDIE MAC mortgage
services. While Complainant and
Respondent do not operate in directly the same mortgage market, Respondent uses
the confusingly similar <freddymae.com> domain name to provide
substantially similar services in the mortgage industry as a whole. Furthermore, Complainant is well established
in the mortgage industry. Respondent,
therefore, uses the <freddymae.com> domain name in a way that
disrupts Complainant’s business. Thus,
the Panel finds that Respondent uses the <freddymae.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO
June 7,2000) (defining “competitor” as "…one who acts in opposition to
another and the context does not imply or demand any restricted meaning such as
commercial or business competitor”); see also EBAY, Inc. v.
MEOdesigns & Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that
the Respondent registered and used the domain name <eebay.com> in bad
faith where Respondent has used the domain name to promote competing auction
sites).
Respondent’s
diversionary use of the confusingly similar <freddymae.com> domain
name has a high capacity to confuse Internet users who are mistakenly searching
for Complainant. Also, Respondent
presumably commercially benefits from the business it draws to its
mortgage-related website. Therefore,
Respondent’s actions constitute bad faith use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where Respondent registered and used an infringing domain name to attract users
to a website sponsored by Respondent); see also Busy Body, Inc. v.
Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith
where Respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as Complainant)
Furthermore, since
Respondent’s <freddymae.com> domain name is comprised of a
misspelled version of Complainant’s FREDDIE MAC mark and there is no evidence
on the record that Respondent randomly selected the domain name, it can be
inferred that Respondent was aware of the strength of Complainant’s mark within
the mortgage industry. Hence,
Respondent had notice of Complainant’s proprietary interest in the FREDDIE MAC
mark prior to registering the <freddymae.com> domain name. Therefore, Respondent registered the <freddymae.com>
domain name in bad faith. See
Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000)
(awarding <davemathewsband.com> and <davemattewsband.com>, common
misspellings of DAVE MATTHEWS BAND to Complainant); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse").
The Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby GRANTED.
Accordingly,
it is Ordered that the domain name <freddymae.com> be TRANSFERRED
from Respondent to Complainant.
Honorable
Paul A. Dorf (Ret.), Panelist
Dated: December 23, 2002
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