Countrywide Financial Corporation v. Forum LLC
Claim Number: FA0605000714957
Complainant is Countrywide Financial Corporation (“Complainant”), represented by Lance G. Johnson, of Roylance, Abrams, Berdo & Goodman, L.L.P., 1300 19th St., NW, Suite 600, Washington, DC 20036-1649. Respondent is Forum LLC (“Respondent”), P.O. Box 2331, Roseau, Roseau 00152, DM.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <countrywidehomemortgages.com>, <countrywidemortgagerates.com>, <countrywidemortgagelender.com>, <countrywidemortgageco.com>, <countrywidehomelones.com>, <countrywidemorgages.com>, <countrywidecreditcard.com>, <countrywideplatinum.com>, <countrywidevisa.com>, <countrywideinsurancecompany.com>, <countrywidehomeinsurance.com>, <countrywidemortgagelenders.com>, <countrywides.com>, <countrywidemotgage.com>, <countrywidemortgae.com>, <countrywidemortages.com>, <countrywideinsurrance.com>, <countrywidelaons.com> and <countrywideinsuranceservices.com>, registered with Moniker Online Services, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2006.
On May 26, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <countrywidehomemortgages.com>, <countrywidemortgagerates.com>, <countrywidemortgagelender.com>, <countrywidemortgageco.com>, <countrywidehomelones.com>, <countrywidemorgages.com>, <countrywidecreditcard.com>, <countrywideplatinum.com>, <countrywidevisa.com>, <countrywideinsurancecompany.com>, <countrywidehomeinsurance.com>, <countrywidemortgagelenders.com>, <countrywides.com>, <countrywidemotgage.com>, <countrywidemortgae.com>, <countrywidemortages.com>, <countrywideinsurrance.com>, <countrywidelaons.com> and <countrywideinsuranceservices.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 June 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 27, 2006 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@countrywidehomemortgages.com, postmaster@countrywidemortgagerates.com, postmaster@countrywidemortgagelender.com, postmaster@countrywidemortgageco.com, postmaster@countrywidehomelones.com, postmaster@countrywidemorgages.com, postmaster@countrywidecreditcard.com, postmaster@countrywideplatinum.com, postmaster@countrywidevisa.com, postmaster@countrywideinsurancecompany.com, postmaster@countrywidehomeinsurance.com, postmaster@countrywidemortgagelenders.com, postmaster@countrywides.com, postmaster@countrywidemotgage.com, postmaster@countrywidemortgae.com, postmaster@countrywidemortages.compostmaster@countrywideinsurrance.com, postmaster@countrywidelaons.com and postmaster@countrywideinsuranceservices.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <countrywidehomemortgages.com>, <countrywidemortgagerates.com>, <countrywidemortgagelender.com>, <countrywidemortgageco.com>, <countrywidehomelones.com>, <countrywidemorgages.com>, <countrywidecreditcard.com>, <countrywideplatinum.com>, <countrywidevisa.com>, <countrywideinsurancecompany.com>, <countrywidehomeinsurance.com>, <countrywidemortgagelenders.com>, <countrywides.com>, <countrywidemotgage.com>, <countrywidemortgae.com>, <countrywidemortages.com>, <countrywideinsurrance.com>, <countrywidelaons.com> and <countrywideinsuranceservices.com> domain names are confusingly similar to Complainant’s COUNTRYWIDE mark.
2. Respondent does not have any rights or legitimate interests in the <countrywidehomemortgages.com>, <countrywidemortgagerates.com>, <countrywidemortgagelender.com>, <countrywidemortgageco.com>, <countrywidehomelones.com>, <countrywidemorgages.com>, <countrywidecreditcard.com>, <countrywideplatinum.com>, <countrywidevisa.com>, <countrywideinsurancecompany.com>, <countrywidehomeinsurance.com>, <countrywidemortgagelenders.com>, <countrywides.com>, <countrywidemotgage.com>, <countrywidemortgae.com>, <countrywidemortages.com>, <countrywideinsurrance.com>, <countrywidelaons.com> and <countrywideinsuranceservices.com> domain names.
3. Respondent registered and used the <countrywidehomemortgages.com>, <countrywidemortgagerates.com>, <countrywidemortgagelender.com>, <countrywidemortgageco.com>, <countrywidehomelones.com>, <countrywidemorgages.com>, <countrywidecreditcard.com>, <countrywideplatinum.com>, <countrywidevisa.com>, <countrywideinsurancecompany.com>, <countrywidehomeinsurance.com>, <countrywidemortgagelenders.com>, <countrywides.com>, <countrywidemotgage.com>, <countrywidemortgae.com>, <countrywidemortages.com>, <countrywideinsurrance.com>, <countrywidelaons.com> and <countrywideinsuranceservices.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Countrywide Financial Corporation, holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the COUNTRYWIDE mark (Reg. No. 1,744,794 issued January 5, 1993). Complainant has been using the COUNTRYWIDE mark since 1969 in connection with the financing of mortgages.
Respondent registered the <countrywidehomemortgages.com>, <countrywidemortgagerates.com>, <countrywidemortgagelender.com>, <countrywidemortgageco.com>, <countrywidehomelones.com>, <countrywidemorgages.com>, <countrywidecreditcard.com>, <countrywideplatinum.com>, <countrywidevisa.com>, <countrywideinsurancecompany.com>, <countrywidehomeinsurance.com>, <countrywidemortgagelenders.com>, <countrywides.com>, <countrywidemotgage.com>, <countrywidemortgae.com>, <countrywidemortages.com>, <countrywideinsurrance.com>, <countrywidelaons.com> and <countrywideinsuranceservices.com> domain names between March 11, 2004 and January 4, 2005. Respondent is using the disputed domain names to redirect Internet users to its commercial website that features links to third-party competing websites.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 rights in the COUNTRYWIDE mark
through registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”).
The disputed domain names that Respondent registered are
confusingly similar to Complainant’s COUNTRYWIDE mark. The disputed domain names incorporate
Complainant’s mark in its entirety and deviate with the addition of generic
top-level domains, numerous common terms, misspelled common terms and
letters. These alterations to
Complainant’s registered mark do not distinguish the domain names pursuant to
Policy ¶ 4(a)(i). See Nev. State
Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6,
2003) (“It has been established that the addition of a generic top-level domain
is irrelevant when considering whether a domain name is identical or
confusingly similar under the Policy.”); see also Oki Data Ams., Inc. v.
ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name
wholly incorporates a Complainant’s registered mark is sufficient to establish
identity or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see also Space
Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a Respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to Complainant’s
marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant establishes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the disputed domain names to redirect Internet users to
Respondent’s commercial website that features links to competing third-party websites. Respondent’s use of domain names that are
confusingly similar to Complainant’s COUNTRYWIDE mark to redirect Internet
users interested in Complainant’s goods and services to a website that offers
links to similar goods and services in competition with Complainant is not a
use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks); see
also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003)
(finding that the respondent was not using the domain name within the parameters
of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to
take advantage of the complainant's mark by diverting Internet users to a
competing commercial site).
Moreover, Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the disputed domain names nor authorized to use domain names featuring Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that features links to competing third-party websites. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Moreover, the Panel infers that Respondent receives click-through fees for diverting Internet users to competing websites. Internet users accessing Respondent’s domain names may become confused as to Complainant’s affiliation with the disputed domain names. Therefore, Respondent’s use of the disputed domain names amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <countrywidehomemortgages.com>, <countrywidemortgagerates.com>, <countrywidemortgagelender.com>, <countrywidemortgageco.com>, <countrywidehomelones.com>, <countrywidemorgages.com>, <countrywidecreditcard.com>, <countrywideplatinum.com>, <countrywidevisa.com>, <countrywideinsurancecompany.com>, <countrywidehomeinsurance.com>, <countrywidemortgagelenders.com>, <countrywides.com>, <countrywidemotgage.com>, <countrywidemortgae.com>, <countrywidemortages.com>, <countrywideinsurrance.com>, <countrywidelaons.com> and <countrywideinsuranceservices.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 10, 2006
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