Nationstar Mortgage LLC v. ICS INC.
Claim Number: FA1206001450756
Complainant is Nationstar Mortgage LLC (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is ICS INC. (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mynationstarmrg.com> and <mynationstarmortage.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2012; the National Arbitration Forum received payment on June 27, 2012.
On June 27, 2012, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the c are registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 July 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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@mynationstarmrg.com and postmaster@mynationstarmortage.com. Also on July 3, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns common law rights in the NATIONSTAR mark. Complainant owns two service mark applications with the United States Patent and Trademark Office (“USPTO”) for marks that contain the NATIONSTAR mark: the NATIONSTAR MORTGAGE (App. No. 78/871,883 filed April 28, 2006) and NATIONSTAR MORTGAGE & Design marks (App. No. 78/872,148 registered April 28, 2006).
2. Complainant began using the NATIONSTAR mark on March 31, 2006, when Complainant changed its name to “Nationstar Mortgage LLC.”
3. Complainant has continuously and exclusively used the NATIONSTAR mark since that time.
4. Complainant services residential mortgage loans and sells single-family conforming mortgage loans in the secondary market.
5. Complainant owns numerous domain names containing the NATIONSTAR mark and variations of the mark, such as <nationstarmortgage.us> and <nationstarmtg.com>, all registered in 2006.
6. Complainant provides its principal website at the <nationstarmtg.com> domain name and has done so since November 29, 2006.
7. Complainant has advertised and promoted its NATIONSTAR mark in newspapers, magazines, and other print and online media.
8. The <mynationstarmrg.com> and <mynationstarmortage.com> domain names are confusingly similar to Complainant’s NATIONSTAR mark. The <mynationstarmrg.com> and <mynationstarmortage.com> domain names contain the prefix “my” and the descriptive terms “mrg,” which is an abbreviation for “mortgage,” and “mortage,” which is a misspelled version of the term “mortgage.” The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant under the Policy.
9. Respondent is not commonly known by the <mynationstarmrg.com> and <mynationstarmortage.com> domain names.
10. Respondent uses the <mynationstarmrg.com> and <mynationstarmortage.com> domain names to resolve to websites hosting hyperlinks that resolve to websites that offer competing goods and services, which is evidence that Respondent lacks rights and legitimate interests in the disputed domain names.
11. Respondent registered and uses the <mynationstarmrg.com> and <mynationstarmortage.com> domain names in bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Nationstar Mortage LLC, a publicly traded company, is a non-bank residential mortgage servicer with 175 retail and broker referral offices across the United States. Complainant services residential mortgage loans and sells single-family conforming mortgage loans in the secondary market. Complainant is currently servicing over 635,000 residential mortgage loans in the 48 contiguous States with an aggregate value of more than $100 billion.
Complainant owns common law rights in the NATIONSTAR mark. Complainant owns two service mark applications with the United States Patent and Trademark Office (“USPTO”) for marks that contain the NATIONSTAR mark: the NATIONSTAR MORTGAGE (App. No. 78/871,883 filed April 28, 2006) and NATIONSTAR MORTGAGE & Design marks (App. No. 78/872,148 registered April 28, 2006). Complainant began using the NATIONSTAR mark on March 31, 2006, when Complainant changed its name to “Nationstar Mortgage LLC.” Complainant has continuously and exclusively used the NATIONSTAR mark since that time. Complainant has advertised and promoted its NATIONSTAR mark in newspapers, magazines, and other print and online media.
Respondent, ICS, INC., registered the <mynationstarmrg.com> domain name on January 14, 2012 and <mynationstarmortage.com> domain names on February 22, 2012. Respondent uses the domain names to resolve to websites hosting hyperlinks that resolve to websites that offer competing goods and services.
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.
In view of 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 draw such inferences it 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.”).
Although Complainant does not have a trademark registration for the NATIONSTAR mark with a national trademark authority, Complainant has common law rights in the NATIONSTAR mark dating back to March 31, 2006, for the purposes of Policy ¶ 4(a)(i). See 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 the <mynationstarmrg.com> and <mynationstarmortage.com> domain names are confusingly similar to Complainant’s NATIONSTAR mark. Complainant claims that the <mynationstarmrg.com> and <mynationstarmortage.com> domain names contain the prefix “my” and the descriptive terms “mrg,” which is an abbreviation for “mortgage,” and “mortage.” The Panel finds that the addition of generic and descriptive terms, even those that are misspelled, fail to adequately distinguish the disputed domain names from Complainant’s mark. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); 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)). Further, the addition of the gTLD “.com” is irrelevant under the Policy. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds that Respondent’s <mynationstarmrg.com> and <mynationstarmortage.com> domain names are confusingly similar to Complainant’s NATIONSTAR mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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).
Complainant contends that Respondent is not commonly known by the <mynationstarmrg.com> and <mynationstarmortage.com> domain names. While Complainant does not make any further allegations under Policy ¶ 4(c)(ii), Respondent did not respond to this case and did not provide any evidence that Respondent is commonly known by the disputed domain names. Moreover, the registrant of the <mynationstarmrg.com> and <mynationstarmortage.com> domain names is listed as “ICS INC.” in the WHOIS information. Based on the limited evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant avers that Respondent uses the <mynationstarmrg.com> and <mynationstarmortage.com> domain names to resolve to websites hosting hyperlinks that resolve to websites that offer competing goods and services. Presumably, Respondent commercially benefits from these hyperlinks. Therefore, the Panel finds that such a use is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <mynationstarmrg.com> and <mynationstarmortage.com> domain names. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant asserts that Respondent registered and uses the <mynationstarmrg.com> and <mynationstarmortage.com> domain names in bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent is attempting to attract, for commercial gain, Internet users to the resolving websites by creating a likelihood of confusion with Complainant’s mark. As noted above, Respondent hosts competing hyperlinks that Respondent commercially benefits from. As Respondent is attempting to create Internet user confusion for the purpose of commercially gain, the Panel finds that Respondent registered and uses the <mynationstarmrg.com> and <mynationstarmortage.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mynationstarmrg.com> and <mynationstarmortage.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 15, 2012
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