DECISION

 

IndyMac Bank F.S.B. v. Bernard Fristch a/k/a FIFC SA

Claim Number: FA0211000133762

 

PARTIES

Complainant is IndyMac Bank F.S.B., Pasadena, CA, USA (“Complainant”) represented by B. Brett Heavner, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.  Respondent is Bernard Fritstch a/k/a FIFC SA, Harj, ESTONIA (“Respondent”) represented by Erik Simons.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <loanworks.net>, registered with Tucows.

 

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 November 20, 2002; the Forum received a hard copy of the Complaint on November 21, 2002.

 

On November 21, 2002, Tucows confirmed by e-mail to the Forum that the domain name <loanworks.net> is registered with Tucows and that the Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 November 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 12, 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@loanworks.net by e-mail.

 

A timely Response was received and determined to be complete on December 12, 2002.

 

Complainant’s additional submissions were received on December 17, 2002.  Respondent’s additional submissions were received on December 23, 2002.

 

On December 27, 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.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain name at issue fully incorporates and is confusingly similar to Complainant’s famous registered marks; that Respondent does not have any rights or a legitimate interest in the domain name at issue; and that Respondent registered and is using the domain name at issue in bad faith.

 

B. Respondent

Respondent contends that the domain name at issue consists of generic terms; that Complainant’s mark was not known to any representatives or officers of Respondent prior to registration of the domain name at issue; and that the domain name at issue was registered in good faith.

 

C. Additional Submissions

Complainant’s Additional Submission reaffirms its original contentions as outlined above.  Further, Complainant offers rebuttal arguments as to Respondent’s representation that Respondent has no history of registering trademark-related domain names in bad faith.  Complainant also offers additional evidence to show that Complainant’s rights in the trademark are in full force and effect.

 

Respondent’s Additional Submission offers rebuttal arguments to Complainant’s allegations of cybersquatting, its rights to the related trademark, and that it has not registered the domain name at issue in bad faith.

 

FINDINGS

Complainant is a federally chartered savings bank based in Pasadena, California, and is a wholly owned subsidiary of IndyMac Bancorp, Inc., a public company traded on the New York Stock Exchange.  Complainant states it is one of the leading mortgage lenders in the U.S.  

 

Complainant states it is a technology-based mortgage banker offering multi-channel distribution of its mortgage products and services through a network of mortgage brokers, bankers and community financial institutions, and also offers programs directly to consumers and through realtors and home builders.  In addition to these services, Complainant offers web-enhanced banking services, and Complainant’s Internet business has been substantial, earning it a number two rating in overall Internet mortgage websites by Gomez, the Internet quality measurement firm.

 

Complainant has used the LOANWORKS marks since 1997, and in April 2000 established a separate division called Loan Works for its Business-to-Realtor services.  Under its LOANWORKS marks, Complainant provides online mortgage application services and showcases these services at its website located at <loanworks.com>.

 

Complainant is the owner of several trademark registrations, including LOANWORKS, filed February 19, 1997, issued April 13, 1999; the stylized mark LOANWORKS, filed June 9, 1997, issued April 13, 1999, and the mark LOANWORKS and Design, filed July 17, 1997, issued April 13, 1999.  These three marks cover services in International Class 36 (financial services, namely, mortgage lending and banking).  Complainant also holds a trademark registration for LOANWORKS.COM, filed May 21, 1999, issued April 11, 2000, covering services in International Class 36 (financial services, namely mortgage lending and banking services available through a global computer network). 

 

Complainant also owns the domain name registration for <loanworks.com>, registered on April 2, 1997. 

 

Complainant has established trademark and common law rights in the LOANWORKS marks.

 

Respondent is a Latvian company providing consulting and fulfillment services.  Respondent uses advanced software to identify domains, which are available and contain keywords known to be highly searched words on search engines. Respondent subsequently registers these domains for use.  Respondent owns and operates over 500 additional mortgage-related websites, all of which contain at least in part, terms relating to the lending industry.  These affiliate sites direct leads to mortgage companies. 

 

Respondent’s Director, Erik Simons, has a history of cybersquatting using famous and federally registered trademarks. 

 

The domain name at issue was registered on July 10, 2002 at the request of an officer of Netfisher, via a registration service provider, Peter Okilo, and then updated to the correct holding address for Respondent.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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 domain name at issue is identical to Complainant’s famous mark, with the addition of a generic top-level domain.  See Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL ONLINE trademark…also the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark…thus, the domain name in its entirety is confusingly similar to Complainant’s family of marks).

 

Rights or Legitimate Interests

 

Respondent has not provided any evidence that it has or intends to use the domain name at issue for a bona fide offering of goods or services or in connection with a noncommercial or fair use of the domain name.  The domain name at issue, when accessed, appears to resolve to a page containing a mortgage calculator and links to other information on mortgage services.  Further, Respondent has provided no evidence that it has been commonly known by the domain name at issue. See Sears, Roebuck and Co. v. Hanna Law Office, D2000-0669 (WIPO Sept. 8, 2000) (finding that Respondent has no rights in the domain name because (1) Respondent did not use the domain name in connection with a bona fide offering of goods and services, (2) Respondent was not commonly known by the mark, and (3) Respondent was not using the domain name in connection with a noncommercial purpose).

 

Registration and Use in Bad Faith

 

Respondent has demonstrated a pattern of conduct of registering trademark-related domain names.  See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

 

Respondent appears to have used false and/or incorrect contact information when registering the domain name at issue. See Quixtar Inv., Inc. v. Smithberger & QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that the residual bases provided by the preamble of Policy paragraph 4(b), includes a respondent’s submission of false or misleading contact information in connection with registration of a domain name).

 

Respondent reveals in its Response search engine links, which a simple Internet search would have revealed Complainant’s famous marks.  Each of the four search links provided by Respondent lists Complainant’s website located at <loanworks.com> as the first search result.  As “.com” domain names are the most popular and have the largest number of registrations, it would appear that Respondent would have seen Complainant’s registration and use of the trademarks in a corresponding domain name prior to its registration of the domain name at issue.  See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (holding that Respondent should have known of Complainant’s marks at the time of registration given the widespread use and fame of Complainant’s DEUTSCHE BANK mark).

DECISION

As all three elements required by the ICANN Policy have been satisfied, it is the decision of this Panel that the requested relief be GRANTED.  Accordingly, for all of the foregoing reasons, it is ordered that the domain name <loanworks.net> be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Paul A. Dorf (Ret.) Panelist
Dated:  January 14, 2003

 

 

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