Cendant Corporation v. Cendant-
Wholesale.com
Claim
Number: FA0501000411694
Complainant is Cendant Corporation (“Complainant”), represented
by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ, 07054. Respondent is Cendant- Wholesale.com (“Respondent”), 48554 Vista Del Logo, New York, NY, 11741.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cendant-wholesale.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that she acted independently and impartially and that to
the best of her knowledge she has no known conflict in serving as Panelist in
this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically January
28, 2005; the National Arbitration Forum received a hard copy of the Complaint January
31, 2005.
On
January 28, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <cendant-wholesale.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc.
registration agreement and thereby has agreed to resolve domain name disputes
brought by third parties in accordance with ICANN's Uniform Domain Name Dispute
Resolution Policy (the "Policy").
On
January 31, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 2005, 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@cendant-wholesale.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 National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
March 3, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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 National Arbitration 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. The domain name that Respondent
registered, <cendant-wholesale.com>, is confusingly similar to
Complainant’s CENDANT mark.
2. Respondent has no rights to or legitimate
interests in the <cendant-wholesale.com> domain name.
3. Respondent registered and used the <cendant-wholesale.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Cendant Corporation, is the parent company of some of the foremost providers of
real estate-related and travel services in the world. Cendant’s subsidiaries operate in five business segments,
including real estate services, financial services, hospitality services,
travel distribution services and vehicle services. Complainant and its subsidiaries have approximately 90,000
employees worldwide and provide services to businesses and consumers in over
one hundred countries.
In addition,
Complainant has an indirect, wholly-owned subsidiary, Cendant Mortgage
Corporation, that originates, sells and services residential mortgage loans in
the United States, which are marketed directly to consumers and through
relationships with corporations, affinity groups, financial institutions, real
estate brokerage firms and banks. In
2004, Complainant’s mortgage business was the sixth largest retail mortgage
originator in the United States, with mortgage financing in excess of $83
million.
Complainant
holds numerous trademark registrations for the CENDANT mark with the United
States Patent and Trademark Office (Reg. No. 2,390,176 issued September 26,
2000; Reg. No. 2,392,546 issued October 10, 2000; Reg. No. 2,455,652 issued May
29, 2001; Reg. No. 2,702,610 issued April 1, 2003; and Reg. No. 2,736,922
issued July 15, 2003) and has made continuous use of the mark in commerce since
December 1997.
Complainant’s
websites are located at <cendant.com> and <netmovein.com>.
Respondent
registered the <cendant-wholesale.com> domain name May 27,
2004. Respondent is using the domain
name to redirect Internet users to a website that offers mortgage services
under what is purported to be Complainant’s “wholesale division.” Complainant avers that Respondent has no
rights or licenses to act under Complainant’s name and no other authority to
act as a representative of Complainant in this manner or any other.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established by extrinsic proof in this proceeding that it has rights in the
CENDANT mark through numerous trademark registrations with the United States
Patent and Trademark Office and by continued use of the mark in commerce for at
least the last seven years. 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.); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require complainant to demonstrate ‘exclusive rights,’ but only that
complainant has a bona fide basis for making the Complaint in the first place);
see also Wal-Mart Stores, Inc. v.
MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of
complainant to register all possible domain names that surround its substantive
mark does not hinder complainant’s rights in the mark. “Trademark owners are
not required to create ‘libraries’ of domain names in order to protect
themselves”).
Respondent’s <cendant-wholesale.com>
domain name is confusingly similar to Complainant’s CENDANT mark because the
domain name incorporates Complainant’s mark in its entirety and simply adds the
generic or descriptive term “wholesale.”
The mere addition of a generic or descriptive word to a registered mark
does not negate the confusing similarity of Respondent’s domain name pursuant
to Policy ¶ 4(a)(i). See Vivid
Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding
that any distinctiveness resulting from respondent’s addition of a generic word
to complainant’s mark in a domain name is less significant because respondent
and complainant operate in the same industry); see also Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of
complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
has alleged that Respondent has no rights or legitimate interests in the domain
name that contains in its entirety Complainant’s mark. The burden shifts to Respondent to show that
it does have rights or legitimate interests once Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii).
Due to Respondent’s failure to respond to the Complaint, the Panel
assumes that Respondent lacks rights and legitimate interests in the disputed
domain name. See 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”); see also 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 Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21,
2002) (finding that in accordance with Paragraph 14(b) of the Policy, the Panel
may draw such inferences as it considers appropriate, if respondent fails to
comply with the Panel's requests for information).
Respondent
is wholly appropriating Complainant’s mark in the disputed domain name to host
a website that offers mortgage services that purport to be from
Complainant. The Panel determines that
Respondent’s use of a domain name confusingly similar to Complainant’s CENDANT
mark to divert Internet users to a website that offers services under
Complainant’s mark without authorization is not in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that because
respondent's sole purpose in selecting the domain names was to cause confusion
with complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see
also MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate
interests in the famous MSNBC mark where respondent attempted to profit using
complainant’s mark by redirecting Internet traffic to its own website); see
also State Farm Mut. Auto. Ins. Co.
v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized
providing of information and services under a mark owned by a third party
cannot be said to be the bona fide offering of goods or services.”).
Complainant
avers that Respondent is not commonly known by the <cendant-wholesale.com>
domain name and therefore lacks rights and legitimate interests in the domain
name. In addition, Complainant argues
that since Respondent is not authorized or licensed to register or use
Complainant’s mark, Respondent lacks rights and legitimate interests in the
domain name. The Panel concludes that
since Respondent is not authorized or licensed to register or use Complainant’s
mark and is not commonly known by the domain name, Respondent lacks rights and
legitimate interests pursuant to 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); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where respondent was not commonly
known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) respondent is not a licensee of complainant; (2) complainant’s rights
in the mark precede respondent’s registration; (3) respondent is not commonly
known by the domain name in question).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
The
<cendant-wholesale.com> domain name is being used to
intentionally attempt to attract Internet users to a website that purports to
offer mortgages under Complainant’s name.
Furthermore, the operator of the website derives commercial benefit by
charging a fee for the loan services which the Internet users will never
receive. Thus, the Panel determines
that Respondent’s attempts to divert Internet users for commercial gain by
attracting them to its website through a likelihood of confusion with
Complainant’s mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if respondent profits from its diversionary use of complainant's
mark when the domain name resolves to commercial websites and respondent fails
to contest the Complaint, it may be concluded that respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore,
Respondent’s disputed domain name is being used to offer fraudulent mortgages
under Complainant’s name for the purpose of obtaining financial information
from Internet users for mortgage services the users will never receive. The Panel finds that this scheme, known as
“phishing,” is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Juno Online
Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding
bad faith where the website was being used for a “phishing” scheme although
respondent asserted “that an unknown
perpetrator stole his identity and registered the disputed domain name for
purposes of the fraudulent scheme alleged by Complainant”); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb.
Forum Dec. 18, 2001) (finding that respondent's use of <monsantos.com> to
misrepresent itself as complainant and to provide misleading information
to the public supported a finding of bad faith); see also Halifax plc v. Sunducl,
D2004-0237 (WIPO June 3, 2004) (“[T]he
apparent potential for “phishing” and obtaining information by deception, is
not just evidence of bad faith but possibly suggestive of criminal
activity. It is accepted that on this
basis there is no other possibility than the site being registered in bad
faith.”).
Additionally,
Respondent’s registration of the disputed domain name, a domain name that
wholly incorporates Complainant’s well-known mark and simply adds a generic
term, suggests that Respondent knew of Complainant’s rights in the CENDANT
mark. Thus, the Panel finds that
Respondent likely chose the <cendant-wholesale.com> domain name
based on the distinctive and well-known qualities of Complainant’s mark, which
evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000)
(finding that evidence of bad faith includes actual or constructive knowledge
of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that respondent had actual and constructive
knowledge of complainant’s EXXON mark given the worldwide prominence of the
mark and thus respondent registered the domain name in bad faith); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
The Panel finds
that Complainant fulfilled 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 <cendant-wholesale.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 17, 2005.
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