national arbitration forum

 

DECISION

 

Midfirst Bank v. WBDWT / Steven Welch

Claim Number: FA1201001424348

 

PARTIES

Complainant is Midfirst Bank (“Complainant”), represented by Andrew B. Peterson of McAfee & Taft A Professional Corporation, Oklahoma, USA.  Respondent is WBDWT / Steven Welch (“Respondent”), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <midlandmortgage.com>, registered with ENOM, 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 January 12, 2012; the National Arbitration Forum received payment on January 12, 2012.

 

On January 13, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <midlandmortgage.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, 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 January 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2012 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@midlandmortgage.com.  Also on January 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 17, 2012.

 

On January 25, 2012, 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 asserts:

 

·        It has long standing common law rights in the MIDLAND MORTGAGE mark and has used the mark in business since as early as 1950. Complainant provides various documents to demonstrate the rights it claims. Complainant is the largest privately owned mortgage service company in the United States. Complainant owns at least five domain names incorporating the MIDLAND MORTGAGE mark.

 

·        The Disputed Domain Name is identical to or confusingly similar to Complainant’s MIDLAND MORTGAGE marks.

 

·        Respondent does not have rights in the Disputed Domain Name. Respondent is not commonly known by the Disputed Domain Name and has no connection with the Disputed Domain Name. Respondent’s use of the Disputed Domain Name to divert users of the Internet looking for Complainant’s web site is not a legitimate interest. Respondent is not making any legitimate non-commercial or fair use of the Disputed Domain Name.

 

·        Respondent’s actions in registering and following registration of the Disputed Domain Name demonstrate Respondent registered and is using the Disputed Domain Name in bad faith because:

 

o   When Respondent registered the name, he did not provide fax, phone or e-mail information. He only provided a box number address in Dubai, UAE. Failure to provide contact information is evidence of bad faith.

 

o   Respondent’s registration of the Domain Name infringes Complainant’s intellectual property rights and breaches the registration agreement. Respondent breached the terms of the Registrar’s agreement by registering a name that is likely to cause confusion with the MIDLAND MORTGAGE mark because the agreement says:

 

You represent and warrant that the statements in your application are true and that so Services are being procured for any unlawful purpose, including but not limited to infringement of any intellectual property right, the unauthorized transfer to yourself or any other party of any domain name or Services, or the violation of any other laws, rules, or regulations (the “Illegal Uses”).

 

o   Since registration of the Disputed Domain Name, Respondent has hosted parked pages. By placing the Disputed Domain Name with a parking service, Respondent is seeking to capitalize on the MIDLAND MORTGAGE marks by attracting users to the site who are searching for Petitioner and then receiving revenue through the use of the click-through advertising.

 

B. Respondent

 

Respondent asserts:

 

·        Respondent has never heard of “Midfirst Bank”, or their subdivision “MidlandMortgage” until this complaint was filed. Respondent is not located in the USA where it assumes Midfirst Bank’s business is well known. Respondent cannot intentionally breach trademark rights with out prior knowledge of this company, or their subdivision.

 

·        Respondent does not claim to be affiliated in anyway, with “Midfirst Bank” or their subdivision “MidlandMortgage”.

 

·        Respondent challenges Complainant to provide evidence of trademark registrations.  The Disputed Domain Name is registered in the UAE.

 

·        “.com” is a gTLD (generic top-level domain) which is not specific to any geographic location. It can be registered anywhere in the world and will apply to anywhere in the world. If Complainant’s trademark applies only to the USA and Respondent had registered “MidlandMortgage.us”, then it could be seen as an intentional breach of Midfirst Bank trademark rights. However, this is not the case. This domain name is registered solely on the use of generic keywords.

 

·        As a domain name investor, part of Respondent’s business involves the registration of generic domain names which may potentially be good assets for future sales. Respondent has a legitimate interest in this domain name as an investment.

 

·        The domain “MidlandMortgage.com” contains two good keywords, “Midland” and “Mortgage”. There are two main reasons for Respondent’s registration of this domain. (1) Respondent registers domain names which contain good keywords that may receive natural type in traffic so Respondent can park the domain and capitalize on the traffic. (2) The generic keywords may be of some interest to a person or business who may potentially request to purchase the domain.

 

·        The domain is registered with the intention of joining two strong generic keywords. The use of generic keywords in domains increases their value and strengthens the investment opportunities.

 

·        “Midland” is a generic locational term which could apply to any where in the world.  The word “Midland” will be used as a prefix to likely thousands of places globally so therefore does not apply specifically to the area of operation for Midfirst Bank. The word “Mortgage” is a premium generic keyword which provides the purpose of the domain.

 

·        “MidlandMortgage” is not a copy of the company “Midland Mortgage”. It is a domain name registered with the combination of two good generic keywords which will be relevant globally.

 

·        Complainant claims the domain is used in bad faith. This is not true. The Disputed Domain Name does not offer services or products as Respondent is not in the mortgage business; we are in the domaining business. Internet users around the world often do not use search engines and so type what they are looking for directly into their browsers address bar. Respondent provides a page with relevant advertisements linked to what users were initially searching. Without this they would end up on a dead page which is not of any use to them. For example, users who are looking for a mortgage in a location accompanied by the word “Midland”, are likely to type in their browser “MidlandMortgage” or something similar. Depending on their location and current advertisement campaigns by companies at the time, our advertisements will attempt to adjust to be specific to the user. Someone searching “midlandmortgage” in the UK may see ads for mortgages in the midlands whereas someone searching in Canada may see ads for mortgages based Midland, Ontario.

 

·        Respondent is not capitalizing on the business of Midfirst bank. Respondent is capitalizing on the generic key words used in the domain name. Respondent’s advertisements are relevant to the domain name keyword “mortgage”.

 

·        Midfirst Bank or any other company that would find this domain name useful or applicable to them, are welcome to make an offer of purchase.

 

FINDINGS

1.    Complainant has established common law rights in the MIDLAND MORTGAGE and similar marks.

 

2.    The Disputed Domain Name is confusingly similar to Complaint’s marks.

 

3.    Respondent has no rights or legitimate interests in the Disputed Domain Name.

 

4.    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

 

Under Policy ¶ 4(a)(i), the Panel notes that Complainant is required to establish rights in the MIDLAND MORTGAGE mark. Complainant states that it has not registered the mark with a governmental trademark authority in any jurisdiction. However, Complainant argues that a registration is not required to establish rights in a mark under Policy ¶ 4(a)(i). Previous panels have concurred with Complainant in its argument regarding rights in a mark under this provision. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).  Therefore, the Panel finds that Complainant’s has rights in the MIDLAND MORTGAGE mark under Policy ¶ 4(a)(i) even without a registration for the mark.

 

Complainant argues that it has established its rights in the MIDLAND MORTGAGE mark through long term and continuous use of the mark in conjunction with its business.  According to Complainant, it has been offering mortgage products and services under the mark since as early as 1950. Complainant submits a declaration from its President claiming that the mark has been used on letterhead, in advertising, on its website, other correspondence and many other documents associated with the operation of its business.   Complainant also submits documentary evidence verifying that the mark is in fact used in the domain name for its primary website. Complainant argues that these factors have led customers and the general public to link the MIDLAND MORTGAGE mark with the services provided under that mark by Complainant in such a way as to create a secondary meaning for the mark and establish Complainant’s rights in the mark. The Panel finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i) dating back to 1950. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).

 

Complainant argues that Respondent’s <midlandmortgage.com> domain name is identical to its MIDLAND MORTGAGE mark. According to Complainant, the Disputed Domain Name includes the entire mark, merely removing the spaces between terms and adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that these changes fail to differentiate the Disputed Domain Name from Complainant’s mark in any way, making the two identical under Policy ¶ 4(a)(i).  See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the Disputed Domain Name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

While Respondent contends that the <midlandmortgage.com> domain name is comprised of a common, generic, and descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the Disputed Domain Name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s Disputed Domain Name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the Disputed Domain Name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

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.”).

 

Complainant asserts that Respondent is not commonly known by the Disputed Domain Name. The WHOIS information identifies the registrant of the Disputed Domain Name as “WBDWT / Steven Welch.”  Respondent does not claim to be commonly known by the Disputed Domain Name and the Panel finds Respondent is not commonly known by the Disputed Domain Name under Policy ¶ 4(c)(ii).  See 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); see also 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).

 

Complainant asserts Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant states that Respondent’s Disputed Domain Name resolves to a parked pay-per-click website offering links to its competitors in the mortgage industry. Previous panels have determined the offering a website with links to competing businesses does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this 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).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel agrees and concludes Respondent has failed to make 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).

 

Although Complainant does not argue this point, the Panel notes that, in its Response, Respondent made a tacit offer of sale to Complainant. The Panel finds that this offer to sell by Respondent further demonstrates that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”). 

 

Registration and Use in Bad Faith

 

The Panel notes that in its Response, Respondent offered the sell the Disputed Domain Name to Complainant. Given Respondent’s admission of its intent to sell the Disputed Domain Name to Complainant, or others, the Panel finds such conduct indicates bad faith registration and use by Respondent under Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the Disputed Domain Name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).

 

Complainant alleges that Respondent’s Disputed Domain Name disrupts its business demonstrating bad faith registration and use. The Disputed Domain Name resolves to a parked pay-per-click website offering links to Complainant’s competitors.  The Panel notes that Internet users may arrive at the website and then click-through to one of the linked sites. Once there, the Internet user may then utilize the services of a competitor rather than Complainant. The Panel finds that Respondent’s registration and use clearly disrupts Complainant’s business, demonstrating bad faith registration and use under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the Disputed Domain Names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the Disputed Domain Name to operate a commercial search engine with links to the complainant’s competitors).

 

Complainant also alleges that Respondent’s Disputed Domain Name was registered and is used for commercial gain constituting bad faith. The Disputed Domain Name resolves to a website offering links to Complainant’s competitors in a classic pay-per-click format.  Respondent admits it registers domain names that may receive traffic so Respondent can park the domain name and capitalize on the traffic. Based upon this use, the Panel finds that Respondent registered and is using the Disputed Domain Name for its own commercial gain, constituting bad faith registration and use under Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also 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).

 

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

 

 

Anne M. Wallace, Q.C., Panelist

Dated:  February 1, 2012

 

 

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