SCI Services, Inc. v. saxonmortgagecorp.com c/o Lindsay Selkirk
Claim Number: FA1004001318143
Complainant is SCI Services, Inc. (“Complainant”), represented by Eric
J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New
York, USA. Respondent is saxonmortgagecorp.com
c/o Lindsay Selkirk (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <saxonmortgagecorp.com>, registered with Wild West Domains, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 8, 2010. On April 9, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <saxonmortgagecorp.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@saxonmortgagecorp.com. Also on April 16, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of a Written Notice, as defined in Rule 1. 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. The domain name that Respondent registered, <saxonmortgagecorp.com>, is confusingly similar to Complainant’s SAXON mark.
2. Respondent has no rights to or legitimate interests in the <saxonmortgagecorp.com> domain name.
3. Respondent registered and used the <saxonmortgagecorp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SCI Services,
Inc., is a residential mortgage servicer.
Complainant holds numerous trademark registrations with the
United States Patent and Trademark Office (“USPTO”) for the SAXON mark (e.g., Reg. No. 2,028,654 registered on January
7, 1997).
Respondent, Lindsay Selkirk, registered the disputed <saxonmortgagecorp.com> domain name December 30, 2009. The disputed domain name resolves to a parked website that features links to third-party websites, some of which compete with Complainant’s business.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 asserts rights in the SAXON mark through its registration of this mark with the USPTO (e.g., Reg. No. 2,028,654 registered on January 7, 1997). The Panel finds that this registration establishes Complainant’s rights in the SAXON mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant claims that Respondent’s <saxonmortgagecorp.com> domain name is confusingly similar to Complainant’s SAXON mark. Respondent incorporates Complainant’s mark in its entirety in the disputed domain name. Respondent then adds the generic terms “mortgage” and “corp,” a common abbreviation of “corporation,” to Complainant’s mark in the disputed domain name. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds that these additions do not distinguish Respondent’s disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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).
Therefore, the Panel finds that Respondent’s disputed <saxonmortgagecorp.com> domain name is confusingly similar to Complainant’s SAXON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing that Respondent lacks rights or legitimate interests in the <saxonmortgagecorp.com> domain name. The burden of proof then shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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.”).
Despite Respondent’s failure to respond, however, this Panel still evaluates the record to determine if evidence there suggests that Respondent has such rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant also claims that it has not given Respondent permission to use Complainant’s mark in a domain name. In addition, the WHOIS information lists “Lindsay Selkirk” as the registrant. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further
urges that Respondent’s disputed <saxonmortgagecorp.com>
domain name resolves to a parked
website displaying links to third-party websites. Complainant claims that Respondent profits
from this use of the disputed domain name in the form of “click-through”
fees. The Panel finds Respondent’s use
of a parked website with third-party links is not 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 St. Farm
Mutual Auto. Insr.
The Panel finds that Respondent has no rights to or legitimate interests in the domain name containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and uses the <saxonmortgagecorp.com> domain name in
bad faith. Respondent used the domain
name as a parked website that provides links to third-party websites, some of
which compete with Complainant’s business.
The Panel finds that Respondent is using the disputed domain name to disrupt Complainant’s
business by diverting Internet users to the websites of Complainant’s competitors. Therefore, the Panel finds that Respondent’s
disruption supports findings of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).
See Am. Airlines, Inc. v.
Complainant also argues that Respondent is using the
disputed domain name to intentionally attract, for commercial gain, Internet
users to its parked website by creating confusion as to Complainant’s
sponsorship and affiliation with the disputed domain name. As previously discussed, Respondent’s
disputed domain name is confusingly similar to Complainant’s SAXON mark. In addition, the Panel is permitted to make
an inference that Respondent most likely receives click-through fees from its
use of the disputed <saxonmortgagecorp.com>
domain name. The Panel finds that this
behavior supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile
USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues
Int’l Inc. v. This Domain Name My Be For
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saxonmortgagecorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 25, 2010.
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