loanDepot.com, LLC v. sm goo
Claim Number: FA1805001786848
Complainant is loanDepot.com, LLC (“Complainant”), represented by Hani Sayed of Rutan & Tucker LLP, California, USA. Respondent is sm goo (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mellosolar.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2018; the Forum received payment on May 15, 2018.
On May 16, 2018, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <mellosolar.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 May 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@mellosolar.com. Also on May 17, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leader in the world of non-bank consumer lending for home mortgages, refinancing, equity and person loans.
Complainant uses the MELLO SOLAR and MELLO marks (“MELLO marks”) in connection with its digital mortgage platform, which serves borrowers, sellers, operations persons, realtors and title industry professionals.
Complainant relies on common law rights in the marks, dating from its first announcement of its platform services on the March 6, 2017.
Complainant has established secondary meaning in the MELLO and MELLO SOLAR marks, as a consequence of extensive advertising, media recognition, promotion and consumer association.
Complainant is one of the top five largest vendors of home mortgages, refinancing, equity and person loans by volume, and it acquires more than 500,000 potential borrowers every month, with 1,700 licensed loan officers holding more than 10,000 licenses to service borrowers in each state of the United States, as a result of which Complainant has, since its inception, funded over $100 billion in home, personal and home equity loans.
Respondent registered the domain name <mellosolar.com> on April 19, 2018.
The domain name is substantively identical to Complainant’s MELLO SOLAR mark and confusingly similar to Complainant’s MELLO mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the MELLO or MELLO SOLAR marks in any manner.
Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to solicit offers to purchase it.
Respondent registered the disputed domain name solely for the purpose of transferring it for a profit, and Respondent has a history of doing so with other domain names.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the MELLO and MELLO SOLAR marks at the time it registered and subsequently used the domain name.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Although both are the subject of current applications for mark registration with the USPTO, Complainant does not yet possess an effective registration for either its MELLO or its MELLO SOLAR marks. Therefore, for purposes of Policy ¶ 4(a)(i), Complainant relies upon the creation of rights in these marks under the common law dating from its first public announcement of its business services on March 6, 2017, which predates Respondent’s registration of the <mellosolar.com> domain name on April 19, 2018. The Policy does not require that a mark be registered with a national trademark authority in order to give standing to Complainant to bring a complaint against Respondent. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006) (finding that a UDRP complainant need not own a trademark registration for its mark in order to demonstrate its rights in that mark under Policy ¶ 4(a)(i)). See also Tuxedos By Rose v. Nunez, FA 95248 (Forum Aug. 17, 2000) (finding common law rights in a mark, and therefore standing to bring a complaint under Policy ¶ 4(a)(i), where the mark’s use was continuous and ongoing, and secondary meaning was established). Further see Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Forum May 9, 2000) (finding that, while a UDRP complainant had registered its mark, thus satisfying the showing of rights requirement of Policy ¶ 4(a)(i), it also had common law rights in the mark which were independently adequate for purposes of the Policy, because that complainant had developed brand name recognition for it).
Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks. For this reason, and because Respondent does not contest Complainant’s assertions on the point, we conclude that Complainant has rights in both of the marks sufficient for purposes of Policy ¶ 4(a)(i).
[T]he fact that secondary meaning may exist only in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <mellosolar.com> domain name is substantively identical and confusingly similar to Complainant’s MELLO SOLAR mark. The domain name incorporates the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com”. This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017):
When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <mellosolar.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <mellosolar.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the MELLO SOLAR mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “sm goo,” which does not resemble the domain name. On this record, we must conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has failed to make any active use of the <mellosolar.com> domain name since it was registered, with the exception that the domain name is employed by Respondent to solicit offers to purchase it. Such substantively inactive use is, in the circumstances described in the Complainant, neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015):
Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It appears from the uncontested record that Respondent’s only employment of the <mellosolar.com> domain name, which we have found to be substantially identical to Complainant’s MELLO SOLAR mark, is to attempt to profit by selling it. While the buying and selling of domain names is not, standing alone, inherently suspect under the Policy, in the circumstances described in the Complaint, Respondent’s efforts to sell the domain name count as evidence of Respondent’s bad faith in registering and using it. See, for example, Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (finding that a respondent registered a disputed domain name primarily for the purpose of transferring it for a profit, which demonstrated that respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(i)).
We are also persuaded by the evidence that Respondent knew of Complainant and its rights in the MELLO SOLAR mark when Respondent registered the <mellosolar.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Immigration Equality v. Brent, FA 1103571 (Forum January 11, 2008):
That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <mellosolar.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 12, 2018
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