Federal Home Loan Mortgage Corporation v. Willie Stroud
Claim Number: FA0304000155173
Complainant is
Federal Home Loan Mortgage Corporation, McLean, VA (“Complainant”)
represented by David M. Kelly, of Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP. Respondent is Willie Stroud, Moreno
Valley, CA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <homesteps.info>, registered with Go Daddy Software.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on April 17, 2003; the Forum received a hard copy of the
Complaint on April 18, 2003.
On April 21, 2003, Go
Daddy Software confirmed by e-mail to the Forum that the domain name <homesteps.info>
is registered with Go Daddy Software and that Respondent is the current
registrant of the name. Go Daddy Software has verified that Respondent is bound
by the Go Daddy Software 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 21, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of May 12, 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@homesteps.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 21, 2003 pursuant
to Complainant's request to have the dispute decided by a single-member Panel,
the Forum appointed Honorable Paul A. Dorf (Ret.) 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 <homesteps.info>
domain name is identical to Complainant’s HOMESTEPS mark.
2. Respondent does not have
any rights or legitimate interests in the <homesteps.info> domain
name.
3. Respondent registered
and used the <homesteps.info> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Congress chartered
Complainant in 1970 to create a continuous flow of funds to mortgage lenders in
support of homeownership and rental housing.
Complainant has indirectly financed one out of six homes in the U.S. and
home ownership for more than 30 million families. Complainant conducts business in the U.S. residential secondary
mortgage market and the global securities market. Specifically, Complainant purchases residential mortgages and
issues mortgage-backed or mortgage-related securities in an effort to provide
homeowners and renters with lower housing costs.
Complainant has a
division called HomeSteps Assets (“HomeSteps”) that has been in business since
1997. HomeSteps’ mission is to improve
the quality of life of all Americans by making accessible housing a reality. In an effort to accomplish this mission
HomeSteps repairs and markets foreclosed homes throughout the United
States. Complainant provides
information to the general public about HomeSteps’ services at the
<freddiemac.com> and <homesteps.com> websites. At the <homesteps.com> website,
Complainant provides comprehensive, up-to-date information about affordable
housing for both real estate brokers and prospective home purchasers, including
financing options and listings of houses available for purchase.
Complainant owns three
newly registered United States trademarks for the HOMESTEPS mark, including
Reg. Nos. 2,565,489; 2,682,303; and 2,682,304.
The earliest registration date for the HOMESTEPS mark is April 30,
2002. However, all of the trademark
registrations with the United States Patent and Trademark Office indicate
November 1997 as the first use in commerce.
The HOMESTEPS mark has garnered a substantial amount of goodwill for
Complainant through extensive and exclusive use of the mark since 1997. Furthermore, due to widespread and
substantial national use, the HOMESTEPS mark has become well-known throughout
the United States and famous in the real estate community.
Respondent registered
the domain name on October 7, 2001.
Complainant has discovered that Respondent is a real estate broker who
maintains a website located at <4smarthomebuyers.com>. Respondent’s website contains information
about Complainant, a link to Complainant’s <freddiemac.com> website, a
description of Complainant’s FREDDIE MAC services and an article quoting
FREDDIE MAC’s market surveys and studies.
Respondent does not
actively use the domain name in connection with a content filled website. The domain name currently links to a webpage
that states “under construction” and “Coming Soon! www.homesteps.info.” The resulting “under construction” webpage
also advertises services of Go Daddy, the Registrar.
Complainant sent a
cease-and-desist letter to Respondent on February 21, 2002, and has not
received a response.
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’s interests
in the HOMESTEPS mark have been protected through trademark registration with
the U.S. Patent and Trademark Office.
The first date of use in commerce for the HOMESTEPS mark was November
1997. While the HOMESTEPS mark did not
receive trademark registration status until April 30, 2002, Complainant
continually used the HOMESTEPS mark since 1997 and thus had common law interests
in the mark prior to Respondent’s registration of the domain name on October 7,
2001. Therefore, Complainant has
demonstrated rights in the HOMESTEPS mark sufficient to bring a claim against
Respondent for registering the domain name.
See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO
Mar. 23, 2000) (noting that the Policy “does not distinguish between registered
and unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
Respondent’s <homesteps.info>
domain name incorporates Complainant’s entire HOMESTEPS mark. The only difference between the <homesteps.info>
domain name and the HOMESTEPS mark is the top level domain “.info.” Since top-level domains are a required feature
of every domain name, they are inconsequential when conducting a Policy ¶
4(a)(i) “identical” analysis.
Therefore, since the second level domain is nothing more than a
reflection of Complainant’s HOMESTEPS mark, Respondent’s <homesteps.info>
domain name is identical to said mark. See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding
that the top level of the domain name such as “.net” or “.com” does not affect
the domain name for the purpose of determining whether it is identical or
confusingly similar); see also Blue Sky Software Corp. v. Digital
Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to Complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
The Panel finds that
Policy ¶ 4(a)(i) is satisfied.
Complainant
has submitted a prima facie Complaint, which contains allegations that
Respondent lacks rights or legitimate interests in the <homesteps.info>
domain name. Respondent has allowed
Complainant’s assertions to go uncontested.
As such, the Panel may presume that Complainant’s allegations are true,
including Complainant’s reasoning for Respondent’s lack of rights or legitimate
interests in the <homesteps.info> domain name. See 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”); see also
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard”).
Furthermore,
in the absence of a Response, the Panel will draw all reasonable inferences in
Complainant’s favor. See Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Respondent
has held the <homesteps.info> domain name for approximately one
and a half years without developing a use in association with an active
website. The <homesteps.info>
domain name currently resolves to a website that claims that an active website
is under development. Complainant
contends that Respondent was aware of Complainant’s interest in the HOMESTEPS
mark because Respondent operates in the real estate industry. Respondent has not contested this allegation
and has not come forward to provide proof of a legitimate website development
plan. Therefore, Respondent’s passive
holding of the <homesteps.info> domain name does not constitute a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a legitimate noncommercial or fair use pursuant to Policy
¶4(c)(iii). See Am. Home
Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no
rights or legitimate interests in the domain name <solgarvitamins.com>
where Respondent merely passively held the domain name); see also Ziegenfelder
Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that
failure to provide a product or service or develop the site demonstrates that
Respondents have not established any rights or legitimate interests in the
domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has
advanced no basis on which the Panel could conclude that it has a right or legitimate
interest in the domain names, and no use of the domain names has been
established).
Complainant
claims that Respondent is a real estate broker who maintains a website at
<4smarthomebuyers.com>.
Respondent does not come forward to deny this and the Panel presumes
that the <4smarthomebuyers.com> web-address is Respondent’s business
identity. Moreover, the domain name
registrant is Willie Stroud. No
evidence exists that would establish Respondent’s common identity as the <homesteps.info>
domain name. Therefore, Respondent has
no rights or legitimate interests under 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).
Accordingly,
the Panel finds that Respondent has no rights or legitimate interests in the <homesteps.info>
domain name; thus, Policy ¶ 4(a)(ii) is satisfied.
Policy
paragraph 4(b) presents a non-exhaustive listing of bad faith criteria and the
Policy expressly recognizes that other circumstances can evidence bad faith
registration and use. When deciding whether Respondent registered or used the
domain name in bad faith the Panel may consider the “totality of circumstances”
surrounding the dispute. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”); see also Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”).
The fact
that Respondent conducts business in the real estate market and Complainant has
a large presence in the real estate industry suggests that Respondent was aware
of Complainant’s interests in the HOMESTEPS mark, which Complainant extensively
used for nearly five years prior to Respondent registering the identical domain
name. At Respondent’s
<4smarthomebuyers.com> website, there are multiple references to
Complainant and its FREDDIE MAC services.
Given that Respondent was knowledgeable about Complainant’s FREDDIE MAC
services, since both parties are involved in the real estate industry, the
Panel infers that Respondent was aware of Complainant’s interest in the
HOMESTEPS mark at the time it registered the <homesteps.info>
domain name. Therefore, the Panel finds
that Respondent registered the <homesteps.info> domain name in bad
faith. See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been aware
of Complainant’s trademarks, actually or constructively”); see also 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").
Furthermore,
the inactive use of the <homesteps.info> domain name to resolve to
a website that merely claims a website is under development warrants a finding
of bad faith use. The Panel need not
wait until there is an actual infringing use of the disputed domain name; it is
enough that Respondent was aware of the HOMESTEPS mark and has not used the
disputed domain name for any non-infringing legitimate purpose. The Panel finds that Respondent’s inactive
use of the <homesteps.info> domain name for approximately one and
a half years constitutes bad faith use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial
Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s
passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of
the Policy); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb.
Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or
website that connects with the domain name, and that passive holding of a
domain name permits an inference of registration and use in bad faith).
The Panel
finds that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <homesteps.info> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable
Paul A. Dorf (Ret.) Panelist
Dated: June 9, 2003