national arbitration forum

 

DECISION

 

SCI Services, Inc. v. E-Cloud Services, LLC

Claim Number: FA1109001407828

 

PARTIES

Complainant is SCI Services, Inc. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is E-Cloud Services, LLC (“Respondent”), represented by Krishnan Chittur, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <saxonmortgageclassaction.com>, registered with GoDaddy.com, Inc.

 

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.

 

Anne M. Wallace, Q.C. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2011; the National Arbitration Forum received payment on September 16, 2011.

 

On September 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <saxonmortgageclassaction.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2011 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@saxonmortgageclassaction.com.  Also on September 21, 2011, 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.

 

A timely Response was received and determined to be complete on October 11, 2011.

 

Complainant submitted an Additional Submission on October 13, 2011.

 

Respondent submitted an Additional Submission on October 18, 2011.

 

On October 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.

 

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

 

Complainant submits:

 

• Identical or confusingly similar: Complainant’s well known SAXON marks demonstrate Complainant’s rights in the marks for purposes of satisfying Policy 4(a)(i). Complainant itself and through its subsidiaries and affiliated companies such as Saxon Mortgage Services, Inc., provides residential mortgage services throughout the United States. Complainant owns service mark registrations in the United States including:

 

• SAXON, Reg. No. 2,028,654;
• SAXON MORTGAGE, INC., Reg. No. 2,078,604;
• SAXON HOME MORTGAGE, Reg. No. 3,331,198;
• SAXON CAPITAL, INC., Reg. No. 3,106,618;

 

(herein  called the “SAXON marks”).

 

• Complainant and is predecessors have used the SAXON marks in commerce since as early as 1992 and the marks currently remain in use in the United States. As a result of extensive, use, promotion and advertisement, the SAXON marks are well-known to consumers.

 

• Complainant operates websites located at www.saxonmortgage.com and www.saxononline.com which provide information about and access to Complainant’s mortgage services. In the past National Arbitration Forum Panels have recognized that Complainant has rights in its SAXON marks which are entitled to protection.

 

• The Disputed Domain Name, <saxonmortgageclassaction.com>, which incorporates Complainant’s SAXON mark, is confusingly similar to Complainant’s SAXON marks. The Disputed Domain Name features Complainant’s SAXON mark in its entirety and merely adds the descriptive words “mortgage” which describes Complainant’s business and the words “class action”. The Disputed Domain Name features Complainant’s SAXON MORTGAGE, INC. mark in its entirety (save the generic designation “INC”) and merely adds the descriptive words “class action”. to The addition of descriptive words does nothing to distinguish the Disputed Domain Name from Complainant’s marks. The mere use of descriptive words does not obviate confusing similarity. The Disputed Domain Name is also confusingly similar to Complainant’s SAXON HOME MORTGAGE and SAXON CAPITAL INC. marks. The addition of the gTLD “.com” and elimination of spaces also are irrelevant in distinguishing the Disputed Domain Name from Complainant’s SAXON marks.

 

• Rights or legitimate interests: The WhoIs database gives no indication that Respondent is commonly known by the Disputed Domain Name. Respondent is not licensed by Complainant nor has Complainant ever authorized Respondent to register or to use the SAXON marks or the Disputed Domain Name. Respondent has no relationship whatsoever with Complainant. Thus, Respondent is not commonly known by the Disputed Domain Name.

 

• Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of goods or services or a legitimate or fair use. The Disputed Domain Name resolves to a website which is operated by the law firm of Chittur & Associates, PC, of New York. The address on the web site is the same address as that used for Respondent. Therefore, it appears Respondent is acting as agent for or is an alias of Chittur & Associates with respect to the Disputed Domain Name and website. The website purports to provide information about a lawsuit filed by Chittur & Associates in federal court in New York against Saxon Mortgage Services, Inc., on behalf of two individuals and seeks to retain addition clients as class members for a potential class action lawsuit. Several pages of the website state:

 

For further details contact: Chittur & Associates, P.C., at kchittur@chittur.com.

 

• Another page states:

 

So, if you have been frustrated by our unresponsive bank, you may well have claims under State and federal law. Contact us immediately. Chittur & Associates, P.C., 286 Madison Avenue, New York, New York 10017. Web: www.chittur.com.

 

• More than half the content on the website purports to provide information about potential claims against mortgage services companies in general, not specifically against Saxon Mortgage Services, Inc.

 

• Thus, the main purpose of the website and Disputed Domain Name is to solicit potential clients for Chittur & Associates, whether or not such representation would involve litigation against Saxon Mortgage Services Inc.. The information about the lawsuit against Saxon Mortgage Services Inc. is provided merely as a means to a commercial end. This commercial use of the Disputed Domain Name does not constitute a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii).

 

• Respondent does not have any legitimate rights in the Disputed Domain Name, given the prior use and registration of Complainant’s SAXON marks. Complainant’s prior use and registration give Respondent actual, or at a minimum constructive knowledge of such use and registration.

 

• Bad faith: Respondent’s use of a confusingly similar domain name for commercial use is sufficient evidence off bad faith registration and use of the Disputed Domain Name.

 

• Bad faith is also shown here because Respondent registered the Disputed Domain Name because of its targeted purpose to promote litigation against Complainant and thus disrupt Complainant’s business.

 

• Respondent’s website content shows Respondent had actual knowledge of Complainant’s SAXON marks before the time it registered the Disputed Domain Name. In any event, Complainant’s registration of the SAXON marks amounts to constructive knowledge of Complainant’s marks.

 

B. Respondent

 

Respondent submits:

 

• No confusion or possibility of confusion exists in connection with the Disputed Domain Name. Complainant is in the mortgage lending and refinancing business. Respondent’s website does not seek, espouse or have anything to do with that business. Complainant does not claim the website has somehow siphoned off business or created confusion in the minds of its consumers or potential customers. The website concerns a class action lawsuit against Saxon Mortgage, and is meant to provide timely information to potential class members on that lawsuit. The class action and developments are matters of tremendous public interest, so that the hundreds of thousands of class members are kept informed of material developments and do not have to run from pillar to post for such information. The complaint should be dismissed with costs.

 

• Respondent cites various authorities under The Lanham Act. Respondent says a person’s choice of a domain name incorporating a trademark which is not competing with the holder is usually considered legitimate where the parties are engaged in entirely different enterprises and not competitors for the same consumers. A domain name used in such manner may be confusingly similar to Complainant’s mark without there being a likelihood of confusion. Respondent’s registration and use of the Disputed Domain Name is in no way violative of Complainant’s marks. There is not even an arguable potential for consumer confusion. Respondent does not offer the same services as Complainant and does not compete with Complainant. Complainant does not and cannot contend that Complainant provides legal services. Respondent is not attempting to pass off as Saxon Mortgage or divert any business of mortgage servicing from Saxon to Respondent or someone else. Respondent’s website is not a product for sale to the public with which any of Saxon’s products competed or are competing. The website is a public service announcement for providing accurate, contemporaneous information about a matter of public interest, i.e., the pending class action against Saxon which may affect tens of thousands of class members.

 

• Complainant’s lawyers wrote Respondent raising this dispute and professing a desire to reach an amicable, non-adversarial resolution of the matter. Respondent conducted appropriate legal research and detailed their research in a response to Complainant’s lawyers so neither Complainant nor Respondent would have to waste any more time or resources on this issue. Respondent asked Complainant’s lawyers that if they believed Respondent had overlooked something, or was in error, they should let Respondent know. Complainant’s lawyers never responded. Instead, they filed this Complaint warranting further waste of time and resources by Respondent and now the Panel. Complaint should be dismissed with costs and with prejudice.

 

C. Additional Submissions

 

In its Additional Submission, Complainant largely repeats the original submissions, but in addition asserts:

 

• Respondent appears to be under the mistaken impression that the issue before the Panel is one concerning trademark infringement under the federal Lanham Act as opposed to a domain name dispute under the Policy. The only issue under Policy 4(a)(i) is whether the Disputed Domain Name itself is confusingly similar to a mark in which Complainant has rights. The content of Respondent’s website is irrelevant when determining whether the Disputed Domain Name is confusingly similar to Complainants marks. Respondent’s argument that its use of this Disputed Domain Name is not likely to confuse consumers is irrelevant to determining whether the Disputed Domain Name is confusingly similar for purposes of Policy 4(a)(i).

 

• Respondent has failed to rebut the prima facie case set forth by Complainant that Respondent has no legitimate rights in the Disputed Domain Name. Respondent suggests the website is a public service announcement. The website printouts, however, show that Respondent goes well beyond dissemination of general information to the public. The website actively seeks to solicit potential clients for the law firm Chittur & Associates for commercial gain. This takes Respondent out of the realm of legitimate fair use.

 

• While the website does provide some general information about the class action lawsuit against Saxon Mortgage, Inc., there are numerous links and solicitations for the internet user to contact the law firm Chittur & Associates in order to bring claims against Complainant and/or its subsidiaries and affiliates. The use of the website for commercial gain clearly takes Respondent’s conduct outside that which is permitted fair use under the Policy.

 

• Whatever free speech Respondent would like to assert, Respondent is not entitled to do so by using Complainant’s marks in a domain name, especially for its own commercial gain. Thus, Complainant has established Respondent has not rights or legitimate interests in the Disputed Domain Name.

 

• Since, despite any fair use, Respondent is using the domain name for commercial gain, Respondent is acting in bad faith. In addition, the use of Complainant’s mark to provide litigation against Complainant and thus disrupt Complainant’s business is additional evidence of bad faith.

 

In its Additional Submission, Respondent also repeats its original submissions, but in addition asserts:

 

• Complainant does not dispute the factual assertion that the website has not and does not have the potential to siphon off business or create confusion in the minds of customers or potential customers of Complainant. The website does not seek inquiries or solicit business for mortgage financing. Complainant’s argument about confusion is “purely legalistic”. Complainant’s customers would not and cannot go to the class action website for mortgage refinancing.

 

• The website discourages litigation against Complainant by homeowners in distress by informing them of the pending class action so they don’t commence lawsuits themselves. Thus, the website seeks to preclude potential lawsuits against Complainant which could otherwise be saddled with thousands of lawsuits which might be commenced by every homeowner whose HAMP application was wrongly denied.

 

• The link to Chittur & Associates for those seeking further information about the lawsuit is only there to assist people who are seeking more information about the lawsuit. The law firm is obviously the best source of timely and accurate information about the lawsuit. Almost the entire website is a reproduction of the complaint filed in the class action lawsuit.

 

FINDINGS

The Panel finds:

 

• Complainant has rights in the SAXON marks.
• The Disputed Domain Name is confusingly similar to Complainant’s marks.
• Respondent has no rights or legitimate interests in the Disputed Domain Name.
• Respondent registered and is using the Disputed Domain Name in bad faith.

 

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."

 

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

 

Complainant claims that it has established its rights in the SAXON mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,028,654 registered January 7, 1997). Complainant submits multiple trademark certificates to verify that it holds not only a registration in the SAXON mark but also in other marks analogous to it.  Previous panels have determined that registering a mark with the USPTO establishes the registrant’s rights in the registered mark.  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).  The Panel finds that Complainant has established its rights in the SAXON mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO.

 

Complainant also claims that Respondent’s Disputed Domain Name is confusingly similar to the SAXON mark. The Disputed Domain Name includes the entire SAXON mark while adding the generic top-level domain (“gTLD”) “.com,” the descriptive term “mortgage,” and two generic terms, “class” and “action.”  None of these changes sufficiently differentiates the Disputed Domain Name from Complainant’s SAXON mark. This is especially so when SAXON MORTGAGE is also part of one of Complainant’s marks. The Disputed Domain Name is confusingly similar to Complainant’s marks within the meaning of Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). 

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the Disputed Domain Name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

There is no information to show Respondent has been licensed by or has otherwise received permission from Complainant to use Complainant’s marks. There is nothing before the Panel to show Respondent is commonly known by the Disputed Domain Name. The WHOIS information, which identifies the registrant of the Disputed Domain Name as “E-Cloud Services, LLC,” indicates that Respondent is not commonly known by the Disputed Domain Name. Respondent does not contend to be commonly known by the Disputed Domain Name in its Response. Based on these factors, the Panel finds that Respondent is not commonly known by the Disputed Domain Name under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the Disputed Domain Name).

 

Based on the foregoing, Complainant has established a prima facie case and the burden shifts to Respondent to establish rights or legitimate interests under Policy 4(c). Respondent has brought no evidence to establish it prepared to use the Disputed Domain Name for a bona fide offering of goods or services before notice of the dispute, nor has Respondent demonstrated a legitimate noncommercial or fair use of the Disputed Domain Name. Respondent’s <saxonmortgageclassaction.com> domain name resolves to a website seeking to add members to a class currently filing a class action lawsuit against Complainant. Complainant contends that one entity suing another entity does not have the right to utilize the mark of the sued party as part of a domain name. Complainant claims in its Complaint and in its Additional Submission that the sole purpose of the website is for Respondent to add members to a class action suit that its counsel is filing. Previous panels have determined that using a Disputed Domain Name in this manner does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of a Disputed Domain Name. See Am. Int’l Group, Inc. v. Levin, FA 591254 (Nat. Arb. Forum Dec. 21, 2005) (finding that registration of domain name <aigclassaction.com> “on behalf of attorney Debra G. Speyer . . . to provide information for actual and potential clients of Ms. Speyer’s law practice, which specializes in securities fraud, insurance fraud and class actions against publicly traded corporations, such as AIG” was not bona fide or fair use under the Policy since use was for commercial gain); see also Key Bank N.A. v. Griffin, FA 562478 (Nat. Arb. Forum Nov. 1, 2005) (holding that there was no legitimate use of <championmortgageclassaction.com> where “the domain name links Internet users to a website providing consumers with information and services regarding a lawsuit against Complainant”).  Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the Disputed Domain Name under Policy ¶ 4(c)(iii). 

 

Registration and Use in Bad Faith

 

Complainant asserts in its Complaint and Additional Submission that Respondent is attempting to disrupt its business by promoting litigation against Complainant, which indicates bad faith registration and use on the part of Respondent. The Disputed Domain Name resolves to a website offering legal services and information that urge Internet users arriving at the site to become part of a class action lawsuit against Complainant. While Respondent tries to argue the website’s purpose is informational only, based on our review of the material before us, the Panel finds that it is more likely than not that the Disputed Domain Name is being used to promote litigation against Complainant and that it disrupts Complainant’s business as a result under Policy ¶ 4(b)(iii), suggesting bad faith registration and use.  See Ginn Real Estate Co. LLC v. Wiener, FA 1211342 (Nat. Arb. Forum Aug. 20, 2008) (“Respondent’s primary motivation in registering the domain name and setting up his website was to disrupt the business of the Complainant by encouraging litigation against it, with all of the time, cost and diversion of resources that goes with it, to the detriment of the Complainant”); see also Minacs Corp. v. T Brown, FA 1304642 (Nat. Arb. Forum Mar. 5, 2010) (determining that the use of the domain name <minacsclassaction.com> “is a disruption to Complainant’s business and is damaging to its reputation”).

 

Under Policy ¶ 4(b)(iv), bad faith is deemed to be established where Respondent uses the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

While the facts of this case do not fall squarely within Policy 4(b)(iv), it is open to the Panel to find bad faith in similar circumstances. In this case, Respondent had to have known of the SAXON marks, given that the website contains significant content about a class action against Complainant. Complainant asserts Respondent is using the Disputed Domain Name for its own commercial gain, signifying bad faith registration and use. Complainant states, as does Respondent, that the Disputed Domain Name resolves to a website offering legal services for a class action suit being filed against Complainant. Complainant asserts in its Additional Submission that Respondent is seeking to add clients through the confusingly similar domain name and thereby gain commercially from each Internet user that becomes a member of Respondent’s class action. The Panel finds that this scheme was intended to commercially benefit Respondent. In the Panel’s view, registration and use of the Disputed Domain Name in this manner amounts to bad faith.

 

Furthermore, Respondent had actual notice of its rights in the SAXON mark, further suggesting bad faith registration and use. Complainant states that the manner in which Respondent is using the Disputed Domain Name should lead the Panel to the obvious conclusion that Respondent knew Complainant had rights in the mark. By using the Disputed Domain Name to build a class action lawsuit against Complainant, Complainant contends the circumstances establish actual notice of its rights in the SAXON mark. Put simply, how could Respondent claim not to know of the SAXON mark when its class action lawsuit against SAXON is the basis of the website? The Panel agrees that the circumstances surrounding the registration and use of the Disputed Domain Name are such that Respondent had actual notice of Complainant’s rights in the SAXON mark and as a result has registered and is using the Disputed Domain Name in bad faith under Policy ¶ 4(a)(i).  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).  

 

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 <saxonmortgageclassaction.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Anne M. Wallace, Q.C., Panelist

Dated:  November 5, 2011