OneWest Bank, FSB v. Voltaire Lepe
Claim Number: FA1301001481699
Complainant is OneWest Bank, FSB (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Voltaire Lepe (“Respondent”), represented by Ajay Gupta, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <indymacshortsale.com>, <indymacshortsales.com>, <onewestbankshortsales.com>, and <onewestshortsales.com>, registered with GoDaddy.com, LLC.
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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2013; the National Arbitration Forum received payment on January 23, 2013.
On January 23, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <indymacshortsale.com>, <indymacshortsales.com>, <onewestbankshortsales.com>, and <onewestshortsales.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 January 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2013 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@indymacshortsale.com, postmaster@indymacshortsales.com, postmaster@onewestbankshortsales.com, postmaster@onewestshortsales.com. Also on January 24, 2013, 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 February 13, 2013.
A timely Additional Submission was submitted by Complainant on February 19, 2013.
On February 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson 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.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant owns federally registered marks for its banking business and products, which it offers throughout the USA. The Complainant uses the ONEWEST and ONEWEST BANK marks in connection with its mortgage and banking services since 1997 and promotes its services at its <onewestbank.com> and <owb.com> domain names.
The Complainant uses its INDYMAC mark to designate its mortgage, banking, and lending services since 1997. The Complainant’s bank operated one of the largest mortgage providers in the USA under the INDYMAC name. The Complainant promotes its services under the INDYMAC mark at the <indymacmortgageservices.com> domain name, the <indymac.com> domain name, and the <indymacbank.com> domain name.
The Complainant advertises its services using its marks extensively and spends a substantial amount of resources in connection with its marketing.
When registering the disputed domain names, the Respondent had knowledge of the Complainant’s rights in the disputed domain names because the Respondent is a real estate agent located in southern California, United States.
The <indymacshortsale.com> and <indymacshortsales.com> domain names are confusingly similar to the Complainant’s INDYMAC mark, and the <onewestbankshortsales.com> and <onewestshortsales.com> domain names are confusingly similar to the Complainant’s ONEWEST mark and the ONEWEST BANK mark. The addition of the terms “short”, “sale” and “sales” heightens the confusing similarity since those terms relate to the Complainant’s business of short-sale transactions that may be conducted by the Complainant in connection with its mortgages-related services.
The Respondent is not commonly known by any of the disputed domain names.
The Respondent does not demonstrate rights or legitimate interests in the domain names, as it uses the domain names to direct Internet users to a sponsored-link webpage.
The Respondent uses the disputed domain names to host commercial websites containing pay-per-click hyperlinks, which lead to other websites that directly compete with the Complainant. The Respondent also offers the domain names for sale on each website that is linked to the resolving webpage. The Respondent’s bad faith registration and use is shown by its offer to sell the domain names, its intent to profit from its use of the domain names, its attempt to disrupt the Complainant’s business, and its pattern of bad faith registration.
B. Respondent
The Respondent has knowledge of the Complainant’s One West Bank and IndyMac Bank and the services they provide, as the Respondent operates in the real estate industry in the state of California, USA, alongside the Complainant.
The disputed domain names were registered with the purpose of using them to improve the Respondent’s search engine optimization and to promote its services to those who seek the Respondent’s services to assist with short sales services.
The Respondent has not yet used any of the disputed domains and does not have any of the disputed domain names linked to any websites. The websites linked to the disputed domain names are landing pages provided by the Registrar. The Respondent derives no profit from these websites.
The Respondent does not offer the domain names for sale. The Complainant is referring to an ad for a “domain buy service” on the web site linked to the disputed domain names where an interested party can use a third party to contact the owner of the domain name. The ad is not affiliated with the Respondent.
The Respondent does not misrepresent itself as associated with the Complainant’s business and does not intend to confuse Internet users.
The Respondent does not act in bad faith by using descriptive terms in its disputed domain names, as the Respondent provides homeowners with free short sale services and numerous clients have benefited from the Respondent’s assistance. The Respondent has never been known as One West Bank or IndyMac Bank but its primary business does involve conducting short sales for clients that have IndyMac Bank and One West Bank as lenders. The Complainant fails to prove that the Respondent’s disputed domain names cause likelihood for confusion. The Respondent’s use of the disputed domain names does not disrupt Complainant’s business and the Respondent has not caused damage to the Complainant.
C. Additional Submissions
As registrant the Respondent controls and is responsible for the use of the disputed domain names. The Respondent’s allowing the Registrar or other third parties to use the disputed domain names for pay-per-click websites does not establish any rights or legitimate interests of the Respondent in the disputed domain names.
The Respondent’s intended use of the disputed domain names to attract Internet users through higher search results ranking through unauthorized use of the Complainant’s trademarks in the domain names fails to demonstrate any legitimate interests.
The Respondent’s intended use of the disputed domain names to offer real estate brokerage services for properties mortgaged by the Complainant and other lenders is commercial. The fact that some of the Respondent’s real estate services may be offered in connection with properties mortgaged by the Complainant does not confer on the Respondent the right to use the Complainant’s marks in the disputed domains without the Complainant’s permission, or convert the Respondent’s infringing activities into fair use.
The Respondent’s intended use of the disputed domain names also constitutes bad faith, because the Respondent intends to use the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants trade marks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent, his activities, and/or its future websites associated with the disputed domain names. Because the Respondent intends to use the disputed domain names to refer to the Complainant and its services, confusion is not only likely but inevitable.
The Complainant holds the following service mark registrations with the United States Patent and Trademark Office (“USPTO”):
- ONEWEST: Reg. No. 3,735,171 registered January 5, 2010,
- ONEWEST BANK: Reg. No. 3,735,172 registered January 5, 2010,
- INDYMAC: Reg. No. 2,522,907 registered December 25, 2001, and
- INDY MAC: Reg. No. 2,357,857 registered June 13, 2000.
The disputed domain names were registered by the Complainant on July 13, 2012.
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.
The Complainant asserts that its USPTO registrations demonstrate rights in the ONEWEST, ONEWEST BANK, INDYMAC and INDY MAC marks. The Panel finds that the Complainant has established rights to these marks by the USPTO records submitted. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), were the Panel stated that the complainant’s rights in its numerous marks were established by its USPTO trademark registrations.
The Complainant claims that each of the disputed domain names respectively are confusingly similar to the Complainant’s registered marks, since the disputed domain names all are comprised of one of the Complainant’s marks together with a generic or descriptive term and the non-distinguishing gTLD “.com.” The Complainant also alleges that the terms “short”, “sale” and “sales” heightens the confusing similarity since those terms relate to the Complainant’s business of short-sale transactions that may be conducted by the Complainant in connection with its mortgages-related services.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel notes that the disputed domain names and the Complainant’s trademarks differ only by the addition of the terms “short”, “sale” and “sales”, an excluded space in the ONEWEST BANK mark and the gTLD. The Panel finds that using the Complainant’s entire mark together with the terms mentioned, eliminating a space and adding the gTLD do not create domain names distinguishable from the Complainant’s marks. Accordingly, the Panel finds the disputed domain names to be confusingly similar to the Complainant’s marks. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); 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.”).
The first element of the Policy is thus fulfilled.
The Panel finds that the Complainant must first make a prima facie case that the 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).
The Complainant argues that the Respondent is not commonly known by any of the disputed domain names, and cites the WHOIS records as evidence. The Respondent states that it has never been known as ONE WEST BANK or INDYMAC and does not claim to be known by any of the disputed domain names.
The Panel notes that the WHOIS information for each of the disputed domain names identifies the registrant as “Voltaire Lepe.” The Panel finds no evidence on the record that the Respondent is commonly known by any of the disputed domain names. 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).
The Complainant asserts that the Respondent uses the disputed domain names to maintain websites that displays commercial links to third-party websites unrelated to the Complainant’s banking business, including websites offering directly competing financial services, and that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Complainant also states that the Respondent, as the registrant of the disputed domain names, controls and is responsible for the disputed domain names and their use and that a registrar or third party use of the domain names for pay-per-click websites does not establish any rights or legitimate interests.
The Respondent adduces that it has not yet used the disputed domain names and that the websites linked to the disputed domain names are provided by the Registrar. The Respondent alleges that it is planning to use the disputed domain names to improve its search engine optimization and to promote its business in order to give clients in default free advice regarding short sales.
It is undisputed that the Complainant has not authorized the Respondent to use its marks. The Panel notes that the screenshots of the Respondent’s resolving websites submitted by the Complainant, includes advertisements and links for inter alia real estate and foreclosures. The websites linked to <indymacshortsale.com>, <onewestbankshortsales.com> and <onewestshortsales.com> includes links and advertisements that are related to the Complainant’s offered services. This does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Rolex Watch U.S.A., Inc. v. Vadim Krivitsky , D2008-0396 (WIPO May 13, 2008) (“The use of the Domain Name for third-party advertising in the interim cannot be considered a use in connection with a “bona fide offering of goods or services”, where the Domain Name incorporates a well-known and distinctive trademark (not, for example, a dictionary word or descriptive phrase) and the website links to advertising for products that compete with the Complainant’s.”)
All in all, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names. The Panel finds that there is no evidence submitted by the Respondent that proves that the Respondent has rights or legitimate interests in respect of the disputed domain names.
In accordance with the Panel’s findings above, the second element of the Policy is fulfilled.
The Complainant makes the contention that the Respondent, by offering to sell the disputed domain names at its resolving website, demonstrates bad faith registration and use.
The Respondent claims that it does not offer the domain names for sale and states that the Complainant is referring to an advertisement not affiliated with the Respondent.
The Panel finds that the text “Would you like to buy this domain?” on the web pages linked to the disputed domain names does not in itself prove that the Respondent is offering the disputed domain names for sale or bad faith registration. The Complainant has not submitted sufficient evidence to determine that the Respondent attempted to sell the disputed domain names. Therefore, the Panel finds that the Complainant has not proven that the Respondent has registered the disputed domain names for the purpose of selling them. See PRIMEDIA Special Interest Publ’ns Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that the respondent did not register the domain names in bad faith where there is no evidence that the respondent intended to sell the domain names and actually refused several offers from third parties).
The Complainant argues that the Respondent establishes a bad faith pattern of registration and use due to its registration of the four domain names at issue. The Respondent makes no contentions with regards to this argument.
The Panel concludes that Respondent has registered multiple infringing domain names in the current case and that such registrations lead to a finding of bad faith under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), where the panel stated that registering several infringing domain names satisfies Policy ¶ 4(b)(ii).
The Complainant makes the allegation that the Respondent disrupts the Complainant’s business by using the domain names to host a website that features links to goods and services that are in competition with the Complainant’s business. The Complainant also asserts that the Respondent attempts to create confusion to consumers as to the affiliation between the Complainant and the Respondent’s websites in order to make a profit by attracting Internet users to its website, which is evidence of bad faith registration and use. The Complainant argues that the Respondent receives revenue from click-through commissions as a result of the posted hyperlinks.
The Respondent alleges that its use of the disputed domain names does not disrupt the Complainant’s business, because the domain names are not advertised in any way and no potential client of the Complainant would ever “stumble upon” any of the disputed domain names. The Respondent contends that its use of the descriptive term “shortsale” in the domain names does not contribute to Internet users’ confusion, as the Respondent deals in the business of providing homeowners facing short sales with free information, and its clients benefit from the Respondent’s services. Further, the Respondent argues that the pay-per-click links found at the resolving website were placed by the Registrar, and that the Respondent does not make any revenue from the links, nor does it financially benefit from the domain names through any means.
The Panel finds that the statements of the Respondent shows that it knew about the Complainant and its business under the ONEWEST and INDYMAC marks at the time of the registration of the disputed domain names and that it is intending to use the disputed domain names in order to improve the Respondent’s search engine optimization and to promote its services.
It’s the Respondent’s responsibility to make sure that its domain names do not infringe or violate the Complainant’s rights. A finding of bad faith does not require that the Respondent itself has gained from the use of the disputed domain names. See WIPO Overview 2.0, para 3.8 “It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant.” The Panel finds that maintenance of domain names whose use disrupt a complainant’s business by offering competing hyperlinks may be considered a use in bad faith and that such use has been made of three of the disputed domain names. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
All in all, the Panel finds that the Complinant has proven that the disputed domain names have been registered and used in bad faith pursuant to the Policy.
The third and final element of the Policy is thus fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indymacshortsale.com>, <indymacshortsales.com>, <onewestbankshortsales.com>, and <onewestshortsales.com> domain names be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: March 4, 2013
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