Federal Home Loan Mortgage Corporation v. Perfect Leads LLC
Claim Number: FA0210000128653
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
Respondent failed to submit a Response in this proceeding.
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.
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.
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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