IndyMac Bank F.S.B. v. Domain Owner a/k/a
Lee Wigod
Claim
Number: FA0303000150814
Complainant is
IndyMac Bank F.S.B., Pasadena, CA (“Complainant”), represented by
B. Brett Heavner, of Finnegan Henderson Farabow Garrett & Dunner
L.L.P.. Respondent is Domain Owner a/k/a Lee Wigod, Arlington
Heights, IL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <312loanworks.com >,
<chicagoloanworks.com>, <loanworkschicago.com>, registered with
Enom.
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 (the "Forum")
electronically on March 20, 2003; the Forum received a hard copy of the
Complaint on March 21, 2003.
On
March 24, 2003, Enom confirmed by e-mail to the Forum that the domain names <312loanworks.com
>, <chicagoloanworks.com>, and <loanworkschicago.com>
are registered with Enom and that Respondent is the current registrant of the
names. Enom has verified that
Respondent is bound by the Enom registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
March 25, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 14, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@312loanworks.com, postmaster@ chicagoloanworks.com,
and postmaster@loanworkschicago.com, by e-mail.
Respondent
submitted an untimely Response on April 22, 2003. Complainant submitted an untimely Reply on April 24, 2003. The Panel, in its discretion, has considered
these submissions.
On
April 23, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Respondent’s <312loanworks.com
>, <chicagoloanworks.com>, and <loanworkschicago.com>
domain names are confusingly similar to Complainant’s LOANWORKS mark. Respondent does not have any rights or
legitimate interests in these domain names.
Respondent registered and used the domain names in bad faith.
B. Respondent
When the word "loanworks" is combined with other
words, the domain names produced are not identical or confusingly similar or
deceptive to the LOANWORKS mark. Many
other domain names containing the word "loanworks" are registered and
are owned and operated by parties other than the claimant.
The domain name <312loanworks.com
> was registered as an adjunct to the phone number 312-562-6967 (or 312
Loanworks ) that Respondent, Lee Wigod, has owned and used in his business for
many years. This domain address is
inoperative and intended for future usage.
The domain names
<chicagoloanworks.com>and <loanworkschicago.com> were
not registered in order to compete with or to interfere with the business
operations of Complainant, IndyMac Bank, but were intended to aid in taking
advantage of the affiliate program that Indy Mac offers to real estate and
mortgage professionals to direct origination business to IndyMac Bank and to
receive a fee from IndyMac Bank for doing so.
All actions by Respondent under these domain names sought to direct
additional business to the affiliate programs of IndyMac Bank and not to divert
any business as alleged.
Respondent claims no intent to sell domain names to IndyMac
Bank at a profit.
Prior to notice of this dispute, Respondent advertised under
and used both <chicagoloanworks.com> and <loanworkschicago.com>
as tradenames and was commonly known by the general public under these
tradenames.
C. Additional Submission
Complainant
contends that the domain names are confusingly similar to the LOANWORKS
mark. IndyMac Bank has not authorized
Respondent to register and/or use the domain names. Moreover, IndyMac Bank’s authorized Broker Associates are
prohibited from using the LOANWORK marks in any advertising, including domain
names.
Complainant is
one of the leading mortgage lenders in the U.S. and earned $143 million in
2002. Complainant has used the
LOANWORKS mark in relation to its mortgage origination services since
1997. Complainant holds numerous
trademark registrations for the LOANWORKS mark with the U.S. Patent and
Trademark Office including Registration Number 2,238,058 registered on February
19, 1997 and Registration Number 2,238,162 registered on April 13, 1999.
Complainant uses
the mark specifically to identify its online mortgage application services,
such as formal loan approval in three minutes, mortgage loan advance approval
letters, and customized loan rates, fees and cost estimates. The total loans funded through Complainant’s
LOANWORKS program in 2002 was $537 million.
Complainant administers its LOANWORKS services from
<loanworks.com>.
Respondent
registered <312loanworks.com > on July 28, 2002 and both <chicagoloanworks.com>
and <loanworkschicago.com> on October 10, 2001. Respondent is employed by one of
Complainant’s broker associates, Citywide Mortgage Pros. A broker associate is someone who is
licensed to use Complainant’s electronic mortgage information transaction
system to facilitate the processing of mortgage applications. The application to be a broker associate
specifically prohibits the use of the LOANWORKS marks to advertise without
prior written consent by Complainant.
Complainant has never authorized Respondent, or its employer, to use the
LOANWORKS mark.
When contacted
by Complainant’s attorney to cease use of the disputed domain names, Respondent
insisted that it had substantial sums of money invested in the development of
the <312loanworks.com> domain name, and it “could not simply give
it away by transferring it to your client.”
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.
Complainant has
established that it has rights in the LOANWORKS mark through registration with
the U.S. Patent and Trademark Office, as well as continuous use in relation to
its online mortgage services.
Respondent’s <chicagoloanworks.com>
and <loanworkschicago.com> domain names are confusingly
similar to Complainant’s LOANWORKS mark because Respondent merely added the
name “Chicago,” a geographic identifier at the beginning or end of
Complainant’s LOANWORKS mark. The
addition of geographic terms to another’s mark does not add any distinct
characteristics capable of overcoming a claim of confusing similarity. See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000)
(finding that the Respondent’s registration of the domain name
<net2phone-europe.com> is confusingly similar to Complainant’s mark and
that "the combination of a geographic
term with the mark does not prevent a domain name from being found confusingly
similar"); see also VeriSign,
Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing
similarity between the Complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where
Respondent added the word “India” to Complainant’s mark).
Respondent’s
<312loanworks.com> domain name is confusingly similar to
Complainant’s LOANWORKS mark because it merely adds the numerical prefix
“312.” This addition of numbers does
not hold any distinctive significance and thus does not create a domain name
capable of overcoming a Policy ¶ 4(a)(i) analysis. See Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes
"502" and "520" to the ICQ trademark does little to reduce
the potential for confusion); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31,
2000) (finding that the addition of the numeral 4 in the domain name
<4icq.com> does nothing to deflect the impact on the viewer of the mark
ICQ and is therefore confusingly similar).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to demonstrate rights and legitimate interests in the domain name. When Complainant asserts a prima facie
case against Respondent, the burden of proof shifts to Respondent to show that
it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name).
Because
Respondent registered and uses the domain names to infringe Complainant’s
rights in its LOANWORKS mark and to trade off of Complainant’s goodwill,
Respondent’s registration and use/intended use of the domain names does not and
cannot constitute a bona fide offering of goods or services pursuant to
Section 4(c)(i) of the UDRP. See
Yahoo! Inc. v. Microbiz, Inc., D2000-1050 (WIPO November 7, 2000) (“use
that intentionally trades on the fame of another can not constitute a ‘bona
fide’ offering of goods or services”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet traffic is not a legitimate use of the
domain name); see also Big Dog
Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no
legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
Respondent
is not commonly known as CHICAGO LOANWORKS, LOANWORKS CHICAGO, 312 LOANWORKS,
<chicagoloanworks.com>, <loanworkschicago.com> or
<312loanworks.com>. Based
on the fact that the license agreement of Respondent’s employer specifically
states that Respondent needs special permission to use Complainant’s trademark,
and that Respondent does not have this permission, it is clear that Respondent
cannot be commonly known by any variation of the LOANWORKS mark. Respondent cannot justify his
misappropriation of a trademark in a domain name merely through use of a trade
name. See Eurotech, Inc. Cosmos European
Travels AG,
213 F. Supp.2d 612 (E.D. Va. 2002) (infringer's incorporation of the allegedly
infringing domain name did not make it a legal name or commonly used name); see also Yahoo! Inc. v. Yahoo-Asian
Company Limited,
D2001-0051 (WIPO February 28, 2001) (finding that respondent’s business name
failed to establish respondent’s legitimate interest in the disputed domain
names); see also The Stanley Works and Stanley Logistics, Inc. v.
Camp Creek Co., Inc., D2000-0113 (WIPO April 13, 2000) (holding that
"the collateral trademark use necessary to allow resale of [c]omplainant's
products is not enough to give [r]espondent proprietary rights in
[c]omplainant's trademarks, and certainly not enough to confer the right to use
these trademarks as domain names" including <bostitchnails.com> and
<bostitchtools.com>). Thus, the
Panel finds that Respondent does not have rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is an
employee of one of Complainant’s broker associates. Broker associates are not licensed to use Complainant’s mark
without special written permission.
Based on this information the Panel infers that Respondent has actual
notice of Complainant’s rights in the LOANWORKS mark. Respondent registered <chicagoloanworks.com>, <loanworkschicago.com>
and <312loanworks.com> despite this actual notice. Registration of an infringing domain name,
despite actual notice of Complainant’s rights, is evidence of bad faith
pursuant to Policy ¶ 4(a)(iii). The
Panel finds that Respondent registered <chicagoloanworks.com>,
<loanworkschicago.com> and <312loanworks.com> in bad
faith pursuant to Policy ¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse"); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
Respondent is
using the disputed domain names to attract Internet users interested in
Complainant to Respondent’s own website.
Respondent, like Complainant, is a provider of mortgage services and is
therefore profiting from the user confusion created by its use of <chicagoloanworks.com>,
<loanworkschicago.com> and <312loanworks.com>. The use of an infringing domain name to
cause Internet user confusion for Respondent’s commercial gain is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent).
Respondent’s
registration of the three LOANWORKS-formative domain names that are the subject
of this Complaint constitutes a pattern of registering trademark-related domain
names in bad faith pursuant to Section 4(b)(ii) of the UDRP. See General Electric Company v. Normina
Anstalt a/k/a Igor Fyodorov, D2000-0452 (WIPO July 10, 2000) (finding bad
faith in the respondent’s registration of three trademark-related domain
names).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <312loanworks.com >,
<chicagoloanworks.com>, and <loanworkschicago.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 1, 2003
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