national arbitration forum

 

DECISION

 

Nationstar Mortgage LLC v. Zhichao Yang

Claim Number: FA1206001450754

 

PARTIES

Complainant is Nationstar Mortgage LLC (“Complainant”), represented by Bruce A. McDonald of BUCHANAN INGERSOLL & ROONEY PC, Virginia, USA.  Respondent is Zhichao Yang (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com>, registered with GoDaddy.com, LLC.

 

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.

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2012; the National Arbitration Forum received payment on June 27, 2012. Complainant submitted an Amended Complaint on August 27, 2012, and an Additional Submission on September 24, 2012.

 

On August 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com><nationstartg.com>, and <nationstarsmortgage.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 29, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nationstarmrg.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 21, 2012, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@nationstarmortage.com.  Also on August 21, 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 Response was received and determined to be complete on September 19, 2012.

 

An Additional Submission was received from Complainant and determined to be complete on September 24, 2012.

 

On August 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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’s Allegations

Complainant uses the NATIONSTAR service mark and NATIONSTAR MORTGAGE trademarks in its business as a non-bank residential mortgage servicer with retail and broker referral offices across the United States. Complainant services residential mortgage loans and securitizes single-family conforming mortgage loans to third-party investors in the secondary market. Complainant has made a substantial, continuous and exclusive use of the NATIONSTAR mark since 2006, using the name in advertising and promotional materials. Complainant has registered and uses 36 domain names incorporating the NATIONSTAR mark since 2006. Complainant provides evidence that it filed for trademark registrations for its NATIONSTAR MORTGAGE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Serial No. 78,871,883 filed April 28, 2006). 

 

Respondent registered the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names, which resolve to a “pay-per-click” website with advertising for competing mortgage assistance programs. The disputed domain names are confusingly similar to Complainant’s NATIONASSTAR and NATIONSTAR MORTGAGE marks. Respondent does not have rights or legitimate interests in the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names and does not make a bona fide offering of goods or services at the resolving website or a legitimate noncommercial or fair use of the domain names because Respondent receives compensation for redirecting Internet traffic to its website. Respondent registered and uses the disputed domain names in bad faith because Respondent makes a commercial gain as a result of confusing Internet consumers to its website by creating confusion with Complainant’s mark. The disputed domain names are typosquatted versions of Complainant’s mark.

 

B. Respondent’s Allegations

Respondent contends that Complainant does not have trademark rights in the NATIONSTAR MORTGAGE mark or the NATIONSTAR mark. Respondent alleges that its domain names are based on the word “Nationstar,” a common word over which Complainant does not have exclusive rights. Respondent does not intentionally attempt to confuse Internet traffic by hosting hyperlinks at the resolving websites. Complainant does not provide any services in China, and the disputed domain names are based on a website in China, at the <nationstar.com> domain name.

 

The Panel notes that Respondent registered the <nationstarmortage.com> on November 8, 2011, and the <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names on April 9, 2012.

 

C. Complainant’s Additional Submission

Complainant’s NATIONSTAR MORTGAGE applications are stayed pending an opposition before the USPTO, in which Complainant is opposing a competing trademark application of Mjuhid Ahmad. The Panel notes that Mr. Ahmad amended his application to an intent-to-use basis with the approval of the Trademark Trial & Appeal Board.

 

FINDINGS AND 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

The Panel notes that Complainant does not have any trademark registrations for its NATIONSTAR or NATIONSTAR MORTGAGE marks, but that Complainant claims to have used the marks extensively in its business since 2006. Policy        ¶ 4(a)(i) does not require that Complainant have a trademark registration with a government agency to secure rights in a mark. See 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).

 

Complainant claims that it has used the NATIONSTAR and NATIONSTAR MORTGAGE marks in business since March 31, 2006 and has made substantial use of the NATIONSTAR  mark in numerous media publications and on its website. Complainant claims to have spent significant resources to develop the NATIONSTAR and NATIONSTAR MORTGAGE marks. Complainant alleges that it operates websites at 36 domain names incorporating the NATIONSTAR mark. Complainant states that it operates 175 retail and broker referral offices throughout the United States and serviced over 635,000 residential mortgage loans. In Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007), the panel concluded that evidence that a mark has developed a secondary meaning, such as length of time doing business under the mark, the nature and extent of advertising, and media recognition, may establish a complainant’s common law rights in the mark.  Accordingly, the Panel finds that Complainant’s history of use and volume of promotion related to the NATIONSTAR and NATIONSTAR MORTGAGE marks demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), dating back to March 31, 2006. The Panel further finds that the evidence of the competing application of Mjuhid Ahmad does not effect this determination of common law rights, since said application was amended to an intent-to-use filing basis.  There is, therefore, no evidence before this Panel of a competing usage which would deflect Complainant’s claim to its establishment of common law rights. 

 

Complainant contends that the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names are confusingly similar to its NATIONSTAR and NATIONSTAR MORTGAGE marks. Complainant alleges that the disputed domain names all include the misspellings of the generic word “mortgage,” abbreviations and “other embellishments”. The Panel notes that the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com> are misspelled versions of Complainant’s mark by the addition of one extra letter, one of which also abbreviates “mortgage” to “mtg”, the <nationstarmortage.com> domain merely pluralizes the word “nationstar”, and the other disputed domains include misspellings of the abbreviation “mtg”. The Panel determines that the disputed domain names are confusingly similar to the NATIONSTAR MORTGAGE mark under Policy ¶ 4(a)(i) due to their incorporation of the entire mark with minor abbreviations and misspellings.

 

Thus, Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant argues that Respondent is not commonly known by the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names as an individual or business. The Panel observes that the WHOIS information associated with the disputed domain names identifies “Zhichao Yang” as the registrant. The Panel concludes that the WHOIS information does not support a finding that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii) and therefore determines that Respondent cannot claim rights or legitimate interests in the domain names. 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).

 

Complainant contends that Respondent does not use the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names in a manner amounting to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses hyperlinks to divert Internet traffic to third-party sites offering products and services that compete with Complainant. The panel in H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), held that the respondent’s disputed domain name resolved to a website containing hyperlinks to third-parties who were in direct competition with the complainant’s business, which demonstrated that the respondent did not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.  The Panel similarly concludes that Respondent’s use of the disputed domain names to offer website visitors hyperlinks to businesses whose products and services compete with Complainant’s business does not demonstrate 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).

 

Further, the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names are merely misspelled or typosquatted versions of Complainant’s NATIONSTAR MORTGAGE mark. This is further evidence that Respondent lacks rights or legitimate interests to these domains.  

 

Thus, Complainant has satisfied Policy 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names in order to prevent Complainant from registering domain names using its NATIONSTAR or NATIONSTAR MORTGAGE marks. The Panel observes that Respondent registered ten domain names in the present case that are typosquatted versions of Complainant’s rights in its NATIONSTAR MORTGAGE mark.  This constitutes bad faith pursuant to Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).

 

Complainant further contends that Respondent disrupts its business through its registration and use of the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names. The Panel observes that Respondent’s use of the domain names to provide competing hyperlinks to third-party entities may cause disruption to Complainant’s business. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel stated that the resolving website diverted Internet traffic to the complainant’s competitors, which showed bad faith registration and use by the respondent. The Panel similarly concludes that Respondent’s registration and use of the multiple domain names to provide third-party links to competing companies demonstrates bad faith pursuant to Policy ¶ 4(b)(iii).

 

Complainant additionally alleges that Respondent registered and uses the <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names in bad faith due to Respondent’s attempt to attract Internet traffic to a website that offers competing hyperlinks.  Complainant claims that Respondent uses the confusingly similar domain names to make a commercial profit and that Respondent intends to divert consumers seeking Complainant on the Internet. The Panel finds that Respondent’s use of the domain names to host a website containing competing hyperlinks and attracting Internet traffic to its website in order to make a financial gain is evidence of Respondent’s bad faith registration and use pursuant to Policy                  ¶ (b)(iv). 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).

The Panel notes that Respondent claims that its webpages are parked sites and  that it has no relationship with the advertisers at the website. Even if this were true, Respondent is nonetheless responsible for the activity at the resolving websites. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site.  Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).

Thus, Complainant has satisfied Policy ¶ 4 (a)(iii).

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 <nationstarmortage.com>, <nationstaremtg.com>, <nationastarmortgage.com>, <nationstarmg.com>, <nationstarmrt.com>, <nationstarmyg.com>, <nationstarsmtg.com>, <nationstarmrg.com>, <nationstartg.com>, and <nationstarsmortgage.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

David A. Einhorn, Panelist

Dated:  October 10, 2012

 

 

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