Federal Home Loan Mortgage Corporation v.
Suren Deep
Claim
Number: FA0304000154102
Complainant is
Federal Home Loan Mortgage Corporation, McLean, VA, USA (“Complainant”),
represented by David Kelly, of Finnegan Henderson Farabow Garrett
& Dunner L.L.P. Respondent is Suren Deep, North Sydney, NSW,
AUSTRALIA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <freddiemac.info>, registered with Intercosmos
Media Group.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 4, 2003; the Forum received a hard copy of the
Complaint on April 7, 2003.
On
April 7, 2003, Intercosmos Media Group confirmed by e-mail to the Forum that
the domain name <freddiemac.info> is registered with Intercosmos
Media Group and that Respondent is the current registrant of the name. Intercosmos
Media Group has verified that Respondent is bound by the Intercosmos Media
Group 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
April 8, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 28, 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@freddiemac.info by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 6, 2003, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 makes the following assertions:
1. Respondent’s <freddiemac.info>
domain name is identical to Complainant’s FREDDIE MAC mark.
2. Respondent does not have any rights or
legitimate interests in the <freddiemac.info> domain name.
3. Respondent registered and used the <freddiemac.info>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Federal Home Loan Mortgage Corp., is a “corporate instrumentality of the United
States of America” created to promote a stable secondary mortgage market for
residential mortgages in the U.S. Specifically, Complainant is a stockholder-owned
corporation chartered by Congress in 1970 to create a continuous flow of funds
to mortgage lenders in support of homeownership and rental housing.
Complainant
holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,664,364 for the
FREDDIE MAC mark registered on the Principal Register on November 12, 1991.
Complainant also holds Australian Reg. No. 744,344 for the FREDDIE MAC mark
registered on September 18, 1997.
Since 1970,
Complainant has indirectly financed one out of six homes in the U.S. and home
ownership for more than 30 million families. In 2001 alone, Complainant
purchased 2,845,868 single-family mortgages totaling $384 billion.
Complainant’s FREDDIE MAC mark has been widely promoted among members of the
general consuming public since 1970, and it has come to symbolize the
substantial goodwill associated with Complainant and its mortgage services.
Furthermore, due to widespread and significant international use, the FREDDIE
MAC mark has become globally famous.
Respondent,
Suren Deep, registered the <freddiemac.info> domain name on
September 13, 2001, and uses it for a website that advertises Respondent’s
offer to sell the domain name registration. Respondent’s website prominently
displays banners and advertisements indicating that the domain name
registration is for sale (e.g., “this domain is FOR SALE”).
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."
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.
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 rights in the FREDDIE MAC mark through registration and continuous
use of the mark in commerce since at least 1970. See The Men’s Wearhouse,
Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”).
Respondent’s <freddiemac.info>
domain name is identical to Complainant’s FREDDIE MAC mark. Respondent’s
domain name incorporates Complainant’s famous mark in its entirety.
Additionally, because spaces are impermissible and top-level domains (such as
“.info”) are a required feature, their presence or absence is inconsequential
in determining “identicality” under Policy ¶ 4(a)(i). See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s
Submission establishes a legitimate prima facie case against Respondent,
effectively shifting the burden to Respondent. Because Respondent failed to
submit any materials in this proceeding, Complainant’s assertions are
unopposed. Therefore, it is proper for the Panel to accept all of Complainant’s
reasonable inferences as true, unless clearly contradicted by the evidence. 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 in respect of the domain name, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); 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”).
Uncontested
circumstances indicate that Respondent’s domain name resolves to a website that
prominently displays advertisements such as, “this domain is FOR SALE.”
Respondent’s willingness to dispose of its rights in the domain name suggests
it has no legitimate interests in <freddiemac.info>. Respondent’s
failure to use the domain name for any purpose other than to offer the
registration for sale fails to establish rights in the domain name under Policy
¶¶ 4(c)(i) and (iii). See J. Paul
Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7,
2000) (finding rights or legitimate interests do not exist when one has made no
use of the websites that are located at the domain names at issue, other than
to sell the domain name registrations for profit); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name with the
intention of selling its rights).
No evidence
before the Panel suggests Respondent is commonly known by the domain name, or
the “freddiemac” second-level domain. The domain name’s WHOIS information
records Respondent as “Suren Deep.” Additionally, because Complainant’s FREDDIE
MAC mark is famous and internationally well-known, there is a presumption that
Respondent is not commonly known by an identical domain name; thus, Respondent
fails to establish rights in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
registration and use of the <freddiemac.info> domain name meets
the bad faith criterion specified under Policy ¶ 4(b)(i). More specifically,
unrefuted evidence indicates that Respondent registered the domain name
primarily to sell, rent or otherwise transfer its rights in the domain name for
valuable consideration. Previous panels have determined that general offers to
sell a domain name registration, despite no specific price being advertised,
satisfy the requirements of Policy ¶ 4(b)(i). As described above, Respondent
uses the disputed domain name for a website that advertises Respondent’s offer
to sell its rights in the domain name. Such registration and use, for the
purpose of exploiting a famous mark in the hopes of commercial gain, is conduct
explicitly proscribed by the Policy. See Pocatello Idaho Auditorium Dist. v.
CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner"); see
also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
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 <freddiemac.info> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
May 12, 2003
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