Nationstar Mortgage LLC v. ICS INC.
Claim Number: FA1206001450778
Complainant is Nationstar Mortgage LLC (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationstardm.com>, registered with Tucows, Inc.
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 Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2012; the National Arbitration Forum received payment on July 3, 2012.
On June 27, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationstardm.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 July 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@nationstardm.com. Also on July 10, 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 August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 issues 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 name be transferred from Respondent to Complainant.
A. Complainant
1) Complainant is a leading non-bank residential mortgage servicer with 175 retail and broker referral offices across the United States.
2) Complainant has common law rights in the NATIONSTAR mark through its continuous and extensive use in the mark since 2006.
3) Respondent’s <nationstardm.com> domain name is confusingly similar to Complainant’s NATIONSTAR mark where it merely adds the letters “d” and “m” to the mark along with the generic top-level domain (“gTLD”) “.com.”
4) Respondent does not have rights or legitimate interests in the domain name as it merely resolves to a website featuring third-party links.
5) Respondent is not commonly known by the disputed domain name.
6) Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant asserts that it does not have a trademark registration encompassing the NATIONSTAR mark. The Panel finds that Policy ¶ 4(a)(i) does not require a complainant to have a registered trademark so long as it can establish common law rights in the mark asserted. 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 asserts that it has common law rights in the NATIONSTAR mark. First, Complainant notes that it holds trademark applications with the United States Patent and Trademark Office ("USPTO") for the NATIONSTAR MORTGAGE mark (Ser. No. 78/871,883 filed April 28, 2006) and the NATIONSTAR MORTGAGE & Design mark (Ser. No. 78/872,148 filed April 28, 2006). Complainant asserts that on March 31, 2006 it changed its name from “Centex Home Equity LLC” to “Nationstar Mortgage LLC” in the course of a corporate acquisition and has used the NATIONSTAR name and mark since that time. Complainant contends that it has 175 retail and broker referral offices across the United States and is currently servicing more than 635,000 residential mortgage loans that are worth more than $100 billion. Complainant also asserts that it has registered 36 domain names encompassing the NATIONSTAR mark since 2006. Further, Complainant argues that it has and continues to spend significant resources in developing consumer awareness and goodwill for the NATIONSTAR name and mark, advertising in newspapers, magazines, and online media. Complainant contends that its efforts have resulted in strong secondary meaning for its mark. The Panel agrees and find that Complainant has established rights in the NATIONSTAR mark under Policy ¶ 4(a)(i) through it continuous and extensive use of the mark in commerce since March 31, 2006. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant contends that Respondent’s <nationstardm.com> domain name is confusingly similar to Complainant’s NATIONSTAR mark where it merely adds the letters “d” and “m” to the mark along with the generic top-level domain (“gTLD”) “.com.” The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant has proven this element.
The Panel is reminded that 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, as an individual or business, by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “ICS INC.” as the registrant, which the Panel finds to be dissimilar from the <nationstardm.com> domain name. Therefore, the Panel finds that 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).
Complainant argues that Respondent does not have rights or legitimate interests in the domain name as it merely resolves to a website featuring third-party links. The Panel notes that Complainant includes a screen capture of the resolving domain name within the Complainant, which appears to show many generic third-party links available. The Panel finds that Respondent is not using the <nationstardm.com> domain name for 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) where it is using the domain name as a links directory website. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant has proven this element.
Complainant argues that Respondent is in violation of Policy ¶ 4(b)(iv) because “there is no colorable rationale for use and registration of the disputed domain name other than to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.” Complainant asserts that the only plausible explanation for Respondent’s registration and use of the disputed domain name is to divert Internet users looking for Complainant to Respondent’s website. The Panel notes that Complainant references another domain name, <mynationstarmrg.com>, within its Policy ¶ 4(a)(iii) section but appears to have meant to reference the <nationstardm.com> domain name. Nonetheless, the Panel finds that Respondent’s registration and use of the disputed domain name was made in bad faith pursuant to Policy ¶ 4(b)(iv) based upon the evidence and arguments submitted by Complainant. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant has proven this element.
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 <nationstardm.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 7, 2012
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