Waterstone Mortgage Corporation v. Britney Beamon
Claim Number: FA1803001774602
Complainant is Waterstone Mortgage Corporation (“Complainant”), represented by Alyssa A. Johnson of Hinshaw & Culbertson, LLP., Wisconsin, USA. Respondent is Britney Beamon (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <waterstonealabama.com>, registered with Godaddy.Com, Llc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2018; the Forum received payment on March 7, 2018.
On March 6, 2018, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <waterstonealabama.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@waterstonealabama.com. Also on March 14, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 14, 2018.
On March 19, 2018 an additional submission was received from Complainant in a timely manner pursuant to the Forum's Supplemental Rule #7.
On March 20, 2018 an additional submission was received from Respondent in a timely manner pursuant to the Forum's Supplemental Rule #7.
On April 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is organized under the laws of Wisconsin and is headquartered in Wisconsin. Since its founding in 2000, Complainant has originated residential mortgage loans. Complainant has rights in the WATERSTONE MORTGAGE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,391,739, registered Aug. 27, 2013). See Compl. Ex. F. Respondent’s <waterstonealabama.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the dominant portion of the WATERSTONE MORTGAGE mark, adds the word “Alabama,” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <waterstonealabama.com> domain name. Respondent is not commonly known by the disputed domain name. Further, while Complainant used to employ Respondent, that arrangement has since ended, and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark in the domain name. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to a different domain located at <waterstonecounseling.org>, however Respondent could at any point in the future offer competing services to harm Complainant.
Respondent registered and uses the <waterstonealabama.com> domain name in bad faith. First, Respondent offered to sell the domain name to Complainant for $2,000, a price clearly in excess of any reasonable out-of-pocket cost related to the domain name. See Compl. Ex. I (Johnson Affidavit). Next, Respondent uses the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. This confusion disrupts Complainant’s business, as Respondent could direct users to a competing website at any moment. Further, Respondent failed to respond to the specific allegations listed in Complainant’s cease and desist letter. Id. Additionally, after Complainant contacted Respondent regarding the infringing use of the domain name, Respondent attempted to conceal its identity by using a privacy service. See Compl. Ex. N.
B. Respondent
Respondent made the following contentions.
Respondent registered the <waterstonealabama.com> domain name prior to its employment with Complainant with full knowledge and consent from Complainant. Further, Respondent makes no reference to Complainant on the resolving webpage, and is reserving the domain name to promote “Waterstone Counseling,” a company located in Alabama and not at all affiliated with Complainant’s mortgage business.
Respondent registered the <waterstonealabama.com> domain name in good faith with consent from Complainant. At a later date, Complainant approached Respondent to withdraw the consent to use the domain name, and Respondent responded by taking down all content from the resolving webpage and changing domain names to comply with the request. Further, Respondent is reserving the domain name to promote “Waterstone Counseling,” a company located in Alabama and not at all affiliated with Complainant’s mortgage business.
C. Additional Submissions
1. COMPLAINANT
Complainant made the following further submissions.
The Respondent’s Domain Name is Either Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights.
Respondent Has No Rights or Legitimate Interests in the Disputed Domain Name.
The Disputed Domain Name was registered and is being used by Respondent in bad faith.
Based upon the above arguments, this Complaint was not filed in bad faith or in a manner that is considered reverse domain name hijacking. Instead, the Complaint was filed to preserve and protect Complainant’s valuable rights in its trade and design mark.
2. RESPONDENT
Respondent made the following further submissions.
Quite simply, the current use of the domain does not confuse or imply use for a Mortgage Company and its current registered user does not explicitly violate any rules related to trademark or domain use.
Points made in the previous response are still valid, even if the response generally addressed the abundant information Waterstone Mortgage Corporation is trying to have taken into consideration for this filing: which is mostly not about the registrant named in the case, is substantially irrelevant and many points are unsupported by any factual evidence.
What is important is that there is no intent to sell or redirect the domain beyond its current use to promote Waterstone Counseling and the current use is not in violation of any rules or trademark. Furthermore, the current registrant has no commitment or obligation to Waterstone Mortgage Corporation.
Taking into account the simplified facts noted here should allow the current registrant to continue use and rights to the domain waterstonealabama.com.
1. Complainant is a United States company engaged in the provision of mortgages and related services.
2. Complainant has established its trademark rights to the WATERSTONE MORTGAGE mark by its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,391,739, registered Aug. 27, 2013).
3. Respondent registered the <waterstonealabama.com> domain name on May 11, 2017.
4. The disputed domain name resolves to the website of the domain name <waterstonecounseling.org> which is the domain name of a business in Alabama engaged in the provision of counseling services
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.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has trademark rights in the WATERSTONE MORTGAGE mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,391,739, registered Aug. 27, 2013). See Compl. Ex. F. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the WATERSTONE MORTGAGE mark for the purposes of Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WATERSTONE MORTGAGE mark. Complainant argues that Respondent’s <waterstonealabama.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the dominant portion of the WATERSTONE MORTGAGE mark, adds the word “alabama,” and adds the gTLD “.com.” Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
In particular, in the present case the addition of the word “alabama” to the WATERSTONE portion of the trademark emphasizes the confusing similarity between the domain name and the trademark, as internet users would assume that the domain name related to the activities of Complainant conducted under the WATERSTONE MORTGAGE trademark in the State of Alabama.
The Panel therefore finds that the <waterstonealabama.com> domain name is confusingly similar to the WATERSTONE MORTGAGE mark under Policy ¶4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WATERSTONE MORTGAGE trademark and to use WATERSTONE, the dominant portion of that trademark, in its domain name, adding the word “alabama”;
(b) Respondent registered the <waterstonealabama.com> domain name on May 11, 2017;
(c) Complainant had and has a branch in Alabama, which must have raised the possibility in the mind of internet users that the <waterstonealabama.com> domain name was an official domain name of Complainant that dealt with the activities of Complainant conducted under the trademark and in Alabama;
(d) Respondent has used the domain name to redirect internet users to the website of a different domain name, <waterstonecounseling.org>, related to a business with an address in Birmingham, Alabama, strengthening the notion that the <waterstonealabama.com> domain name was an official domain name of Complainant that dealt with the activities of Complainant conducted under the trademark and in Alabama;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <waterstonealabama.com> domain name as Respondent is not commonly known by the domain name, one of the indicia giving rise to a right or legitimate interest in the domain name. In determining that issue, relevant information that may be considered is generally accepted to include the WHOIS record relating to the registration of the domain name and any other evidence regarding the nature of Complainant’s relationship with the registrant of the domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS in the present case identifies “Brittany Beamon” as the registrant. Complainant thus submits that Respondent is not commonly known by the domain name, and that Complainant had not given Respondent permission to use its trademark or any part of it in any manner. It is therefore clear from the evidence that Respondent is not commonly known as <waterstonealabama.com> but as Brittany Beamon. Accordingly, the Panel finds that that Respondent is not commonly known by the <waterstonealabama.com> domain name under Policy ¶ 4(c)(ii).
All of these matters go to make out the prima facie case against Respondent.
As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
No submission or evidence has been made in the name of Respondent and that is a significant omission from its case. However, a Response and an additional submission have been filed by Robert Austin Parker setting out Mr. Parker’s version of events and purporting to be on behalf of Respondent who is married to Mr. Parker. The Panel will therefore assume that the Response and additional submission have been filed by or on behalf of Respondent.
In the Response, the submission states in substance, first, that Mr. Parker registered the domain name “prior to his date of hire” by Complainant. The domain name was registered on May 11, 2017. Mr. Parker does not give the date when he commenced to be employed by Complainant. The evidence of Complainant by way of a sworn affidavit by its President and CEO is that Mr. Parker was employed from May 5, 2017. The Panel finds that Mr. Parker was employed by Complainant by the time the domain name was registered. In any event, Mr. Parker agrees that the consent that he asserts was given by Complainant to the registration was withdrawn while he was employed. Moreover, when his employment came to an end, which it did, any implied consent of the sort apparently alleged by Mr. Parker must have come to an end, ending any entitlement to have the domain name registered or to use it. The Panel therefore rejects any notion that Mr. Parker has a right or legitimate interest in the domain name arising from any form of consent by Complainant to Mr. Parker’s being entitled to register or use the domain name.
The Response states secondly that Complainant consented to the internet address at <waterstonealabama.com> to be used as Mr. Parker’s “redirect” for communications to him as an employee of Complainant. That is of course possible, but it is in the opinion of the Panel highly unlikely. It would mean that Complainant as a mortgage provider consented to business communications sent to it by email, which were presumably from potential customers, being forward to a counseling firm with no connection to Complainant. That seems to the Panel so unlikely that it could not reach such a conclusion without evidence to that effect, of which there is none.
Complainant further argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, another of the criteria that would show that Respondent has a right or legitimate interest in the domain name. Complainant submits that Respondent uses the domain name to redirect users to the website of a different domain name, <waterstonecounseling.org>. Using a confusingly similar domain name to promote services by anyone other than Complainant can evince the lack of a bona fide offering of goods or services or legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Complainant provides screenshots of the alleged webpage resolving from <waterstonecounseling.org>, which deals with counseling and related mental health services. The Panel has verified this by using the disputed domain name and finding that it redirects to <waterstonecounseling.org>. Such a use of the domain name, giving to internet users the impression that these services are those of Complainant when they are not, cannot be a bona fide or legitimate use of the domain name as it is misleading to internet users. The use the Respondent is making of the domain name is therefore such that it does not give rise to a right or legitimate interest in the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
The Panel is also influenced by the fact that the website to which the domain name <waterstonecounseling.org> resolves gives the address of the counseling business promoted on the website as in Birmingham, Alabama. As Complainant has a branch office in Alabama, this enhances the fact that internet users being redirected to <waterstonecounseling.org> may well conclude that the site is affiliated with or approved by Complainant, which it is not.
Respondent appears to advance a further argument to show that it has a right or legitimate interest in the domain name by submitting that “The use of the domain’s current registered owner has been reserved to promote Waterstone Counseling, a company located in Alabama which does not have affiliation with any mortgage company or any of the parties involved in this dispute.” Respondent appears to be arguing that as the domain name does not resolve to a rival firm engaged in the mortgage business, such a use of the domain name is legitimate. The Panel does not accept that submission. Respondent can establish a right or legitimate interest in the domain name if it can point to some proper basis for its registering and using it. Redirecting hits on the domain name to a business different from that of Complainant is not bona fide, legitimate or justified in any way for at least three reasons; first, internet users may conclude that the site is part of Complainant’s business, which it is not, and will therefore have been misled; secondly, they may conclude that Complainant is no longer in the mortgage business or may be confused as to whether it is or not, which has the potential for Complainant to lose business; and thirdly, and probably most significantly, if it is held that Respondent has a right or legitimate interest in the domain name for the reason claimed, the domain name could still be used at any time in the future for a link to a competing mortgage business which inevitably must do commercial damage to Complainant.
Further, it must be remembered that Mr. Parker’s entire dealings with the domain name must be viewed against the background of the terms of his employment with Complainant. The affidavit of Complainant’s President and CEO, which is in evidence, states that Mr. Parker was employed pursuant to a contract in writing. This provided in clause 1.4(b) that he may not “use any name, trade name, trade mark, service mark or logo of (Complainant) without the prior written approval of an office of (Complainant)…” which was never given. The contract is not in evidence, as it is confidential, but the Panel accepts that the foregoing is an accurate statement of the relevant clause. The Panel’s view is that the terms referred to are wide enough to include a prohibition on using the domain name and, in any event, they clearly cover the use of the dominant part of the WATERSTONE MORTGAGE trademark in the domain name. Accordingly, the Panel finds that such a use by Mr. Parker of the domain name as described above was in breach of his contract of employment, negating any notion of legitimacy.
The Panel therefore finds that none of the grounds relied on by Respondent to show that it has a right or legitimate interest in the disputed domain name is valid or capable of rebutting the prima facie case against Respondent. The Panel concludes that Respondent has no such right or legitimate interest.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent offered to sell the <waterstonealabama.com> domain name to Complainant in excess of any reasonable out-of-pocket costs. Offering a confusingly similar domain name for sale can, depending on the evidence, evince bad faith registration. See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Complainant claims that Respondent responded to Complainant’s cease and desist letter stating that it would be willing to transfer the domain name to Complainant for $2,000. See Compl. Ex. I (Johnson Affidavit). As such, the Panel has considered Respondent’s offering of the domain name for sale to Complainant when making its determination of bad faith under Policy ¶ 4(b)(i) and it so finds.
Secondly, Complainant argues that Respondent registered and uses the <waterstonealabama.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name for commercial gain. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). As noted previously, Complainant’s screenshots that have been tendered in evidence appear to be associated with different, yet similar, URLs, and the resolving domain name at www.waterstonealabama.org appears to offer counseling services rather than competing mortgage facilities. See Compl. Ex. Q. However, the Panel regards the redirection to www.waterstonealabamna.org as just as disruptive to Complainant as it would be if redirected to a site offering mortgage facilities. Moreover, as Complainant argues, while Respondent does not currently use the domain name to offer competing loan services, Respondent was previously employed by Complainant as a loan officer and could begin offering those services at any moment, using the disputed domain name.
Thirdly, Complainant contends that Respondent failed to respond to the specific allegations listed in Complainant’s cease and desist letter. See Compl. Ex. I. Failure to respond to cease and desist letters may contribute towards a finding of bad faith in an appropriate case. See Garrison Keillor, Minnesota Public Radio, Inc. v. Paul Stanton, FA 98422 (Forum Aug. 28, 2001) (Respondent’s failure to respond to Complainant's June 12, 2001, letter further demonstrates Respondent's lack of good faith intent in registration and use of the domain name.). In the present case, Respondent was given the opportunity to respond to the allegations made against it in the cease and desist letter, but did not do so, and that is a matter to which the Panel may have regard. It is true, however, that Respondent has filed a Response and a supplemental submission. The Panel’s view is that the refusal to reply adds to the suggestion that Respondent’s conduct has been inappropriate, contributing to a finding of bad faith, which the Panel makes.
Fourthly, Complainant argues that after it contacted Respondent regarding the infringing use of the domain name, Respondent attempted to conceal its identity by using a privacy service. A respondent’s attempt to hide its identity on a domain name’s registration information can support a finding of bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding that the respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar was an example of bad faith conduct). While the privacy shield was lifted as a result of this proceeding, the Panel notes that the previous WHOIS information listed the Respondent as “Registration Private / Domains By Proxy, LLC.” As such, the Panel finds that by attempting to shield its identity, together with other matters, suggests that Respondent registered the domain name in bad faith.
Bad faith may be found outside the specific criteria mentioned in Policy ¶ 4(b) and that is of particular importance in the present case. In addition to those specific criteria and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the WATERSTONE MORTGAGE mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
The Panel has also considered the issue of Reverse Domain Name Hijacking as Respondent may have been requesting such a finding and Complainant has opposed such a finding being made. It is clear that Complainant, in filing the Complaint, was taking responsible and necessary action to defend its trademark. A finding of Reverse Domain Name Hijacking would therefore be entirely inappropriate.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <waterstonealabama.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 9, 2018
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