Regions Asset Company v. We Give Loans, Inc.
Claim Number: FA1207001453857
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is We Give Loans, Inc. (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionshomeloans.com>, registered with GoDaddy.com, LLC.
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 July 17, 2012; the National Arbitration Forum received payment on July 18, 2012.
On July 19, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <regionshomeloans.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 July 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@regionshomeloans.com. Also on July 20, 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 13, 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 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 name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the REGIONS mark:
i. The mark is used in connection with loan services, including home loans.
ii. Complainant owns United States Patent and Trademark Office (“USPTO”) trademark registrations for the REGIONS mark (e.g., Reg. No. 1,881,600 registered February 28, 1995).
b) The <regionshomeloans.com> domain name is confusingly similar to the REGIONS mark:
i. Respondent simply adds the generic phrase “home loans” and the generic top-level domain (“gTLD”) “.com” to the REGIONS mark.
c) Respondent lacks rights and legitimate interests in the disputed domain name:
i. Respondent is not commonly known by the <regionshomeloans.com> domain name.
ii. The <regionshomeloans.com> domain name resolves to a website at the <90dayloans.com> domain name, which offers loan services directly competitive with Complainant’s loan service offerings.
d) Respondent registered and is using the <regionshomeloans.com> domain name in bad faith:
i. The <regionshomeloans.com> domain name is disruptive to Complainant’s business.
ii. Internet users who are misdirected to Respondent’s website will be confused and mistakenly believe that the <regionshomeloans.com> domain name is affiliated with or sponsored by Complainant.
iii. Respondent registered the <regionshomeloans.com> domain name knowledge of Complainant’s rights in the REGIONS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 has rights in the REGIONS mark. The mark, Complainant notes, is used in connection with loan services, including home loans. In addition, Complainant provides evidence to the Panel of Complainant’s ownership of USPTO trademark registrations for the REGIONS mark (e.g., Reg. No. 1,881,600 registered February 28, 1995). Therefore, the Panel finds Complainant has rights in the REGIONS mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant argues that the <regionshomeloans.com> domain name is confusingly similar to the REGIONS mark. Complainant asserts that Respondent simply adds the generic phrase “home loans” and the gTLD “.com” to the REGIONS mark in order to create the disputed domain name. In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), the panel held that the addition of a descriptive term fails to distinguish a disputed domain name from a mark. In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds the <regionshomeloans.com> domain name is confusingly similar to the REGIONS mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 contends that Respondent is not commonly known by the <regionshomeloans.com> domain name. Complainant asserts that it has no relationship with Respondent and has not authorized or licensed Respondent to use the REGIONS mark in a domain name or otherwise. Complainant states the WHOIS record for the <regionshomeloans.com> domain name lists “We Give Loans, Inc.” as the domain name registrant and not “Regions,” “Regions Home Loans,” or “regionshomeloans.” Panels have found that the WHOIS record and information such as authorization, or lack thereof, are illustrative of whether a respondent is commonly known by a disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds Respondent is not commonly known by the <regionshomeloans.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the <regionshomeloans.com> domain name is further evidence of Respondent’s lack of rights and legitimate interests. Complainant states that the <regionshomeloans.com> domain name resolves to a website at the <90dayloans.com> domain name where Respondent offers loan services that directly compete with those that Complainant offers. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), the panel held that a respondent’s offering of competing services via a disputed domain name does not fall within the realm of Policy ¶¶ 4(c)(i) and 4(c)(iii) protection. Therefore, the Panel finds Respondent’s use of the <regionshomeloans.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <regionshomeloans.com> domain name in bad faith. Complainant first asserts that the disputed domain name is disruptive to Complainant’s business. According to Complainant, the <regionshomeloans.com> domain name resolves to a website where Respondent offers loan services that directly compete with those that Complainant offers. In Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), the panel found that the registration and use of a disputed domain name to offer competing goods or services is disruptive. Therefore, the Panel finds Respondent registered and is using the <regionshomeloans.com> domain name disruptively, and thus in bad faith, under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent registered and is using the disputed domain name knowingly and purposefully to take advantage of the confusing similarity between the <regionshomeloans.com> domain name and the REGIONS mark in order to profit from the goodwill associated with the REGIONS mark. Complainant notes that the <regionshomeloans.com> domain name resolves to a website marketing competing loan services. According to Complainant, Internet users who are misdirected to Respondent’s website will be confused and mistakenly believe that the <regionshomeloans.com> domain name is affiliated with or sponsored by Complainant. The Panel finds that Respondent registered and is using the <regionshomeloans.com> domain name in a bad faith attempt to take advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant asserts that Respondent registered the <regionshomeloans.com> domain name with full knowledge of Complainant’s rights in the REGIONS mark. Complainant argues that Complainant’s trademark registrations gave Respondent at least constructive knowledge. Complainant also contends that Respondent registered a confusingly similar domain name in order to market competing services. Any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <regionshomeloans.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 24, 2012
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