Countrywide Financial Corporation v.
Charles Johnson
Claim Number: FA0307000169095
Complainant is Countrywide Financial Corporation,
Calabasas, CA (“Complainant”) represented by Bobby A. Ghajar of Howrey Simon Arnold & White LLP. Respondent is Charles Johnson, Dallas, TX (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwcountrywide.com> registered with Go
Daddy Software, Inc.
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 July 17, 2003; the Forum received a hard copy of the
Complaint on July 21, 2003.
On
July 17, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <wwwcountrywide.com> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
July 21, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 11, 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@wwwcountrywide.com 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
August 19, 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 <wwwcountrywide.com>
domain name is confusingly similar to Complainant’s COUNTRYWIDE mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwcountrywide.com> domain name.
3. Respondent registered and used the <wwwcountrywide.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
leading financial services company both in the United States and abroad,
offering a wide range of financial products and services. Complainant owns
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the COUNTRYWIDE mark, including Reg. No. 1,744,794 (registered on
January 5, 1993) in relation to financial services, namely, banking, insurance
agency and securities brokerage services.
Complainant
registered the <countrywide.com> and <mycountrywide.com> domain
names to expand its business presence to the Internet. These domain names
receive over one million visitors per week.
Respondent
registered the <wwwcountrywide.com> domain name on May 21, 2001.
Respondent is using the disputed domain name to divert Internet traffic to a
website at the <freedebtconsolidation.com> domain name, which is operated
by a company, Free Debt Consolidation, Inc., that competes with Complainant in
the financial services arena. The diversionary website also displays pop-up
advertisements, featuring products and services that compete with
Complainant’s.
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 its rights in the COUNTRYWIDE mark through registration with the USPTO.
See Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <wwwcountrywide.com>
domain name is confusingly similar to Complainant’s COUNTRYWIDE mark because
the disputed domain name incorporates Complainant’s entire mark and adds the
letters “www” to the beginning of the mark. The addition of the letters “www”
to the mark does not distinguish the domain name from the mark because the
added letters capitalize on the common, typographical error of omitting the
period between the letters “www” and the domain name. See Neiman Marcus
Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding
confusing similarity has been established because the prefix "www"
does not sufficiently differentiate the <wwwneimanmarcus.com> domain name
from Complainant's NEIMAN-MARCUS mark); see also Dana Corp. v. $$$ This
Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002)
(finding Respondent's <wwwdana.com> domain name confusingly similar to
Complainant's registered DANA mark because Complainant's mark remains the
dominant feature).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
neglected to favor the Panel with a Response. Therefore, the Panel accepts all
of Complainant’s reasonable allegations and inferences to be true. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Furthermore,
based on Respondent’s failure to respond, the Panel presumes that Respondent
lacks any rights to or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See
Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that
Respondent has no rights or legitimate interests in the domain name because
Respondent never submitted a Response or provided the Panel with evidence to
suggest otherwise); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond).
Respondent is using the <wwwcountrywide.com> domain name to divert
Internet traffic to the website of a competitor in the financial services
industry. The use of a domain name confusingly similar to a registered
trademark to divert Internet users to the mark holder’s business competitor
does not represent a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan.
11, 2002) (finding that Respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services); see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to Respondent’s competing website
through the use of Complainant’s mark).
Moreover, there
is no evidence in the record and Respondent has proffered no proof that it is
commonly known by WWWCOUNTRYWIDE or <wwwcountrywide.com>.
Therefore, the Panel finds that Respondent has failed to establish any rights
to or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See 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"); see also 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 Policy ¶ 4(a)(ii) has been established.
The Panel infers that Respondent earns a
profit from his use of the <wwwcountrywide.com> domain name to
divert Internet traffic to Complainant’s competitor’s website, which also
features pop-up advertisements that offer goods and services in competition
with Complainant’s. Respondent’s use of the disputed domain name suggests that
Respondent is intentionally attempting to attract Internet users to
Respondent’s website for commercial gain by creating a likelihood of confusion
with Complainant’s mark, which evidences bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000)
(finding bad faith where Respondent attempted to attract customers to its
website, <efitnesswholesale.com>, and created confusion by offering
similar products for sale as Complainant); see also Computerized Sec. Sys.,
Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that Respondent’s use of the <saflock.com> domain name to offer goods
competing with Complainant’s illustrates Respondent’s bad faith registration
and use of the domain name, evidence of bad faith registration and use pursuant
to Policy 4(b)(iv)); see also Bama
Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding
bad faith where Respondent attracted users to advertisements).
Moreover, the
very fact that the diversionary website offers goods and services in
competition with Complainant’s business indicates that the <wwwcountrywide.com>
domain name was registered and is being used in bad faith because the
registration of a domain name primarily for the purpose of disrupting the
business of a competitor is evidence of registration and use in bad faith under
Policy ¶ 4(b)(iii). See Gen. Media
Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001)
(finding bad faith where a competitor of Complainant registered and used a
domain name confusingly similar to Complainant’s PENTHOUSE mark to host a
pornographic web site); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business).
Furthermore,
Respondent’s registration and use of a domain name that capitalizes on a common
typographical error such as the omission of the period between the letters
“www” and the domain name itself demonstrates Respondent’s registration and use
of the <wwwcountrywide.com> domain name in bad faith. See Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period
after the “www” portion of [a] web-address,” evidence that the domain name was
registered and used in bad faith); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25,
2003) (inferring that Respondent’s registration of the <wwwremax.com>
domain name, incorporating Complainant’s entire mark, was done with actual
notice of Complainant’s rights in the mark prior to registering the infringing
domain name, evidencing bad faith).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwcountrywide.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
August 29, 2003
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