Countrywide Financial
Corporation v. Johnson and Sons Systems c/o Ed Johnson
Claim Number: FA0709001073019
PARTIES
Complainant is Countrywide Finanical Corportation (“Complainant”), represented by Lance
G. Johnson and Casimir W. Cook of Roylance, Abrams, Berdo & Goodman,
L.L.P., 1300 19th St., NW, Suite 600, Washington, D.C. 20036. Respondent is Johnson and Sons Systems c/o Ed Johnson (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <countrwide.com>
(the “Disputed Domain Name”), registered with Enom Inc.
PANEL
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 4, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.
On September 4, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <countrwide.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. 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 September 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 2, 2007 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@countrwide.com by
e-mail.
A timely putative Response was received and determined to be complete
on October 2, 2007. However, Respondent did not submit a timely
hard copy version, and as such, a valid response was not filed, as further
discussed below.
On October 11, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant has owned since 1969 service mark rights in the name
COUNTRYWIDE in connection with the financing of home loans, and Complainant is
the owner of a number of trademark registrations in the United States which
includes the word “countrywide.” Among
these registered trademarks are two registrations for the mark COUNTRYWIDE, on
registration being registration number 1,744,794, registered on January 5,
1993, with the following description of services: "financial services,
namely, mortgage banking, insurance agency, and securities brokerage services,"
and the other registration being registration number 1,918,325, registered on
September 12, 1995, with the following description of services: "financial
services, namely mortgage lending, mortgage banking, securities brokerage, and
insurance agency services" (collectively "Complainant's
Trademarks").
Respondent registered the Disputed Domain Name on November 13, 2000.
Respondent’s website is a “link farm” for competing services within the
financial services industry.
The Disputed Domain Name is confusingly similar to Complainant's
Trademarks for purposes of Policy ¶ 4(a)(i) because it is a blatant misspelling
of Complainant's service mark. The misspelling
and the added term, “.com,” does not sufficiently alter or distinguish the
Disputed Domain Name from Complainant's Trademarks and actually promotes
confusion by presenting a false sense of source, sponsorship, affiliation or
endorsement.
Respondent does not have any rights or legitimate interests in the
Disputed Domain Name in violation of Policy ¶ 4(a)(ii) because: firstly, Respondent
is not now known, and has never been known under the name "countrwide” or
"countrywide"; secondly, Respondent is not a licensee, agent,
associate, or in any other way lawfully affiliated with Complainant or the home
financing services offered by Complainant under Complainant's Trademarks;
thirdly, Respondent does not have any registered trademark or service mark
rights in a "countrwide" or "countrywide" designation; and fourthly,
Respondent is using the Disputed Domain Name to divert customers for commercial
gain.
Respondent registered and used the Disputed Domain Name in bad faith in
violation of Policy ¶ 4(a)(iii) because:
firstly, Respondent had at least constructive notice, and most likely actual
notice, of Complainant's prior rights in the mark COUNTRYWIDE for financing
home mortgages; secondly, Respondent offers services that compete with those of
Complainant; thirdly, Respondent uses the Disputed Domain Name to disrupt
Complainant's business by diverting potential customers from Complainant's site
to that of Respondent; and fourthly, Respondent uses the Disputed Domain Name
to create a false sense of source, sponsorship, affiliation or endorsement
between Respondent and Complainant for commercial gain.
B. Respondent
Respondent submitted a putative Response via email to the National
Arbitration Forum which reads: "Hi.
I have previously e-mailed that the name COUNTRWIDE.COM is
currently in Enom registrar and unlocked for immediate transfer although the
UDRP must be withdrawn in order for the transfer to happen as it is currently
under registrar lock. The authorization
code is: [redacted].”
This putative Response was not made in hard copy, and is therefore not
a valid or operative response pursuant to ICANN Rule 5(a). As such, this Panel has not considered this
putative Response in this decision.
FINDINGS
Complainant is the owner of Complainant's Trademarks, which were
registered in the United States Patent and Trademark Office on January 5, 1993
and September 12, 1995, with the following description of services:
"financial services, namely, mortgage banking, insurance agency, and
securities brokerage services," and "financial services, namely
mortgage lending, mortgage banking, securities brokerage, and insurance agency
services.”
Respondent registered the Disputed Domain Name on November 13, 2000.
Respondent's website provides opportunities for an Internet user to
link to Complainant's website (using the correct spelling of Complainant's name
"Countrywide") and numerous opportunities to link to the websites of third-party
companies that compete with Complainant’s financial services products.
The Disputed Domain Name is confusingly similar to Complainant's
Trademarks for purposes of the Policy.
Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name.
Respondent’s use of the Disputed Domain Name was registered and is
being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Policy 4(a)(i) is a threshold consideration.
Under this Policy paragraph, the panel makes a simple comparison between the Complainant’s Trademark and the Disputed Domain Name. In making this comparison, the panel need go no deeper than the alpha-numeric symbols, as this is the relevant level presented to Internet users.
For purposes of making the comparison, generic top-level domains are not relevant and minor misspellings are ignored. See Nev. State Bank v. Modern Limited-Cayman Web Development , FA 204062 (Nat. Arb. Forum March 22, 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.”); see also Isleworth Land Co., v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principal that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)(“The addition of an “s” to the end of the Complainant's [sic] Mark does not prevent a likelihood of confusion caused by the use of the remaining identical mark. The two domain names are similar in sound, appearance, and connotation.”).
In this matter, Complainant’s Trademarks are COUNTRYWIDE, and the Disputed Domain Name is “countrwide.”
This Panel has no difficulty finding that the Disputed Domain Name is confusingly similar.
As such, Complainant has satisfied the requirement of Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) provides a potential safe harbor for respondents.
Policy ¶ 4(a) places the burden as to this element on the complainant, and most panels have interpreted ¶ 4(a)(ii) as being a light burden. Once Complainant satisfies this light burden, the burden then shifts to Respondent to rebut. See G. D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum, Oct. 1, 2002) (holding that where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting the assertion because this information is "uniquely within the knowledge and control of the respondent.”); see also AOL v. Gerberg, FA 780200 (Nat. Arb. Forum, Sept. 25, 2006) (“The Complainant must make a prima facia showing that the Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If the Complainant satisfies its burden, then the burden shifts to Respondent to show that it s does have rights or legitimate interest in the subject domain names.”).
In the present case, Complainant has asserted that Respondent does not have rights or legitimate interests with respect to the Disputed Domain Name, and Respondent has failed to rebut.
In addition, many panels, including this Panel,
have gone beyond the three non-exclusive examples within Policy ¶ 4(c) and have
found that a respondent does not have rights and legitimate interests in a
domain name where: the domain name is identical or confusingly similar to a
complainant’s trademark; the respondent and the complainant are commercial competitors;
and the respondent has selected the Disputed Domain Name intentionally to
profit from the complainant’s goodwill.
This has been found even where the respondent’s use of the domain name
is otherwise in connection with the offering of bona fide goods or services.
See America Online, Inc., v. Fu,
D2000-1374 (WIPO Dec. 12, 2000) (“It would be unconscionable to find a bona
fide offering of services in a Respondent’s operation of a website using a
domain name which is confusingly similar to Complainant’s mark and for the same
business.”); see also Pfizer, Inc. v.
Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that
because the VIAGRA mark was clearly well-known at the time of the respondent’s
registration of the domain name it can be inferred that the Respondent is
attempting to capitalize on the confusing created by the domain name’s
similarity to the mark); see also MBS
Computers Ltd., v. Workman, FA 96632 (Nt. Arb. Forum Mar. 16, 2001) (finding
no rights or legitimate interest when the respondent is using a domain name
identical to the complainant’s mark and is offering similar services).
In this present matter, Complainant has demonstrated by way of exhibits attached to its Complaint that Respondent is using the Disputed Domain Name to direct Internet users to websites of third-parties who compete with Complainant. Under the noted standard, this use is not consistent with a finding of Respondent having rights or legitimate interests in the Disputed Domain Name.
As such, the Complainant has satisfied the requirement of Policy ¶4(a)(ii).
Policy ¶ 4(b) sets forth four nonexclusive
examples of conduct which constitute “bad faith.” Complainant does not raise issues under the
first two of these, which are abusive offers to sell a domain name to the owner
of an identical or similar trademark and an abusive effort to block a trademark
owner from reflecting the mark in a corresponding domain name.
Complainant does raise an issue about the
third of these examples, namely that Respondent has registered the Disputed
Domain Name primarily for the purpose of disrupting the business of a
competitor. However, this panel
disagrees that competitive conduct, whether fair or unfair, constitutes
business disruption for purposes of Policy ¶ 4(b)(iii). This Policy paragraph is more narrowly
tailored for the circumstance where a respondent’s intention is to disrupt, as
opposed to disruption being a byproduct of competition. This Panel does not believe that in the
present case Respondent’s intention has been to disrupt Complainant’s
business.
Policy ¶ 4(b)(iv) states: "The following
circumstances... shall be evidence of the registration and use of the domain in
bad faith: by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your website or other on-line
location, by creating a likelihood of confusion with the complainant's mark as
to the source, sponsorship, affiliation, or endorsement of your website or
location or of a product or service on your website or location.”
All of these elements exist in the present
case.
Respondent’s use of the Disputed Domain Name
does create a likelihood of confusion as to source, sponsorship, affiliation,
or endorsement. For those Internet users
who do not notice the distinction between Complainant’s Trademarks and the
Disputed Domain Name, there would be confusion as to the source, sponsorship,
and affiliation of Respondent's website.
Whereas this Panel cannot know the number of times this has occurred or
may occur, this Panel can state that initially, when first reviewing the papers
in this matter, it did not notice the distinction between Complainant's
Trademarks and the Disputed Domain Name, and this Panel can from this infer such
will occur from time to time among Internet users. And further, this panel is aware that
typographical errors are not uncommon with respect to domain names, in fact
they are annoyingly common. As such, it
is likely that in some not insignificant number of instances an Internet user
seeking to find Complainant’s website will find Respondent's website, will not
be aware of the error, and thereby will be confused as contemplated by the
Policy.
It is unlikely that Respondent chose the
disputed domain name innocently or accidentally. The absence of the letter "y” from the
word "countrywide" is not consistent with an independent effort to
create a domain name.
No direct evidence has been presented by
Complainant about whether Respondent’s website is a commercial enterprise
resulting in commercial gain. However,
it is unlikely that Respondent would have expended the effort to create an
elaborate website, such as is Respondent’s website, without the incentive of
some direct financial benefit. As such,
commercial gain can be inferred.
Given the foregoing, it follows that
Respondent has intentionally attempted to use the Disputed Domain Name to
attract Internet users to Respondent’s website.
As such, Complainant has satisfied the requirement
of Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <countrwide.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated: October 24, 2007
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