national arbitration forum

 

DECISION

 

Richard R. Waterfield, J. Randall Waterfield & Waterfield Enterprises, LLC v. Domain Admin

Claim Number: FA0910001287927

 

PARTIES

Complainant is Richard R. Waterfield, J. Randall Waterfield & Waterfield Enterprises, LLC (“Complainant”), represented by Penina Michlin Chiu, of Frederic Dorwart, Lawyers, Oklahoma, USA.  Respondent is Domain Admin (“Respondent”), North Carolina.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <waterfieldmortgage.com>, registered with Hostweb.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 8, 2009.

 

On October 6, 2009, Hostweb confirmed by e-mail to the National Arbitration Forum that the <waterfieldmortgage.com> domain name is registered with Hostweb and that Respondent is the current registrant of the name.  Hostweb has verified that Respondent is bound by the Hostweb 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 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 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@waterfieldmortgage.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <waterfieldmortgage.com> domain name is confusingly similar to Complainant’s WATERFIELD ENTERPRISES mark.

 

2.      Respondent does not have any rights or legitimate interests in the <waterfieldmortgage.com> domain name.

 

3.      Respondent registered and used the <waterfieldmortgage.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Richard R. Waterfield, J. Randall Waterfield & Waterfield Enterprises, LLC (together referred to as “Complainant”) is a provider of financial services under the WATERFIELD ENTERPRISES mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on November 13, 2007 (Reg. No. 3,335,272).  Complainant has used the WATERFIELD ENTERPRISES mark continuously in commerce since at least as early as 1928, and Complainant is the largest privately-held mortgage company in the United States, with $20 billion in mortgage servicing and $10 billion in annual single-family loan originations.

 

Respondent registered the <waterfieldmortgage.com> domain name on August 7, 2009.  The disputed domain name resolves to a website containing sponsored links to third-party websites that offer services similar to or competitive with Complainant’s services.

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the WATERFIELD ENTERPRISES mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,335,272 issued November 13, 2007).  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Respondent’s <waterfieldmortgage.com> domain name is confusingly similar to its WATERFIELD ENTERPRISES mark.  The <waterfieldmortgage.com> domain name differs from Complainant’s mark in three ways: (1) the space has been removed from the mark; (2) the term “enterprises” has been replaced by the descriptive term “mortgage;” and (3) the generic top-level domain (“gTLD”) “.com” has been added.  The Panel finds that the removal of a space does not sufficiently distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i).  See Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).  The Panel also finds that the replacement of a term in a mark with a term that describes Complainant’s business – in this case, Complainant’s commerce in mortgages – fails distinguish a disputed domain name from that mark.  See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).  Furthermore, the Panel finds that the addition of a gTLD does not reduce the likelihood of confusion between the domain name and the mark because every domain name must contain a gTLD.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  The Panel finds that because these changes do not eliminate or diminish the likelihood that Internet visitors will confuse the disputed domain name with Complainant’s mark, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks all rights and legitimate interests in the <waterfieldmortgage.com> domain name.  Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name.  The Panel finds that Complainant has submitted evidence that makes a prima facie case under Policy ¶ 4(a)(ii).  See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name.  The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.  Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one.  These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”).

 

Respondent has failed to reply in this case.  Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name.  Nonetheless, the Panel will proceed to examine the record in consideration of the elements listed under Policy ¶ 4(c).  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); 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 is not commonly known by the <waterfieldmortgage.com> domain name nor has it ever been the owner or licensee of the WATERFIELD ENTERPRISES mark.  The WHOIS record for the disputed domain name lists the registrant as “Domain Admin.”  There is no evidence to show that Respondent is commonly known by the <waterfieldmortgage.com> domain name pursuant to 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

The <waterfieldmortgage.com> domain name resolves to a website that features links to other third-party websites offering goods and services that are in competition with Complainant’s offerings.  The Panel finds that Respondent’s competitive offering of office products and services constitutes 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).  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The confusingly similar disputed domain name directs Internet customers to Respondent’s website that resolves from the disputed domain name, where they are further diverted to third-party websites competing with Complainant for business.  The Panel finds that Respondent is disrupting Complainant’s business by its competitive use of the confusingly similar disputed domain name, and therefore, that Respondent’s registration and use of the disputed domain name is in bad faith pursuant to Policy ¶ 4(b)(iii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).

 

Respondent gains commercially from collecting “click-through” fees from the third-party websites.  The Panel finds that Respondent is intentionally using the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), further evidence of Respondent’s registration and use in bad faith.  See 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 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); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

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 relief shall be GRANTED.

 

Accordingly, it is Ordered that the <waterfieldmortgage.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra J. Franklin, Panelist

Dated:  November 16, 2009

 

 

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