First American Real Estate Solutions L.P. v.
Manila Industries, Inc.
Claim Number: FA0607000758614
PARTIES
Complainant is First American Real Estate Solutions L.P. (“Complainant”), represented by Jeff Pham, of First American Real Estate Solutions L.P., 4 First American Way, Santa Ana, CA 92707. Respondent is Manila Industries, Inc. (“Respondent”), represented by Murray W. Camp, of The Camp Firm PLLC 5331 E. Mockingbird Ln. Ste. 211, Dallas, TX 75206.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leadstolaons.com>,
registered with Compana, LLC.
PANEL
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.
Paul M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 25, 2006; the National Arbitration Forum received a hard
copy of the Complaint on August 2, 2006.
On August 2, 2006, Compana, LLC confirmed by e-mail to the National
Arbitration Forum that the <leadstolaons.com>
domain name is registered with Compana, LLC and that the Respondent is the
current registrant of the name. Compana,
LLC has verified that Respondent is bound by the Compana, LLC 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 August 7, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 28, 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@leadstolaons.com by e-mail.
A timely Response was received and determined to be complete on August 28,
2006.
On September 5, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
The trademark on which this Complaint is based is
Leads to Loans®, Reg. No. 2,404,929. The mark was federally registered on
November 14, 2000 for providing an online interactive electronic database
containing demographic data that allows mortgage lenders to create refined
prospective customer lists to match defined customer profiles.
The domain name <leadstolaons.com>,
is confusingly similar to Complainant’s trademark and the website for
Complainant’s trademark, <leadstoloans.com>. Due to the striking similarity between the two domain names, any
of Complainant’s current and potential customers who have never visited
<leadstoloans.com> could mistype the domain name and arrive at <leadstolaons.com>
and may reasonably but erroneously believe that they have reached Complainant’s
true website. Additionally, the <leadstolaons.com>
homepage offers numerous sponsored listings relating to the mortgage industry.
The Respondent lacks any legitimate interest or
right with respect to the domain name in dispute because the Respondent is
directly benefiting from First American’s reputation in connection with the
“Leads to Loans” trademark, and is being unjustly enriched through its use of
the domain name.
There are only two possible motivations for
Respondent’s registration of the <leadstolaons.com> website: (1)
to reap undeserved traffic from the <leadstoloans.com> website, which
comes from those who are looking for the Leads to Loans product but
accidentally mistype the <leadstoloans.com> domain name, or (2) to
“squat” on the domain name and force Complainant to purchase such domain name
from Respondent.
There are several indications that Respondent
registered the disputed domain name in bad faith. First, by registering the <leadstolaons.com> domain
name, Respondent intended to divert, for pecuniary gain, Internet users to its
website “by creating a likelihood of confusion with the Complainant’s mark as to
the source, sponsorship, affiliation, or endorsement of Respondent’s website.”
Complainant has contacted Respondent to inform it
of Complainant’s trademark rights, but has received no response. In light of Respondent’s refusal to answer
Complainant’s letter, it is evident that Respondent’s continued disregard for
Complainant’s trademark rights are properly regarded as willful.
B. Respondent
Respondent contends as follows:
The at-issue mark was registered on the
Supplemental Register, not the Principal Register. Registration on the
Supplemental Register creates no substantive rights in Complainant’s mark. The
purpose of the Supplemental Register is to enable the registrant to satisfy the
home registration requirement of some foreign countries, provide the registrant
with a federal forum, and “provides useful business information on a readily
accessible, central register.” Thus a mark that is ineligible for registration
on the Principal Register because it is “merely descriptive” of the goods or
services it may be registered on the Supplemental Register.
Federal trademark law provides that a mark
registered on the Supplemental Register is an admission by the owner that the
mark is not inherently distinctive. When one seeks and obtains registration on
the Supplemental Register the registrant impliedly admits that the term is
descriptive. Accordingly, the subject mark is not a protectable trademark by
virtue of its registration. Complainant’s mark does not, prima facie,
receive protection as a valid trademark, for its very presence on the
Supplemental Register indicates a preliminary determination that the mark is
not distinctive of the applicant’s goods or services.
As applied to UDRP proceedings, a complainant’s
registration of a mark on the Supplemental Register does not confer any rights
under the UDRP because the Supplemental Register provides a complainant no
protectable rights. Consequently, the Complainant’s reliance on its
registration establishes that it is not entitled to transfer of the subject
domain, or any other relief under the ICANN UDRP.
Complainant does not have enforceable rights in
its mark under the ICANN Policy because its mark was registered on the
Supplemental Register due to it being merely descriptive. Complainant has not
submitted any evidence whatsoever that its mark acquired distinctiveness
independent of its registration, through acquisition of secondary meaning or
otherwise. Where a complainant fails to introduce evidence of secondary meaning
or acquired distinctiveness, relief under the UDRP must be denied. Stated
differently, Complainant has failed to meet its initial burden to show
confusing similarity with a protected mark under UDRP ¶ 4(a)(i). Consequently,
Complainant’s requested transfer must be denied.
Complainant’s mark is generic, or at most merely
descriptive, and not entitled to trademark protection. The alleged mark
“leadstoloans” is clearly a generic term that cannot give rise to protectable
trademark rights. At most, it is merely descriptive and, as noted above, there
is no evidence whatsoever of secondary meaning. “Leadstoloans,” and its
allegedly protected corollary domain name <leadstoloans.com>, describe
exactly what the alleged service provides: leads to loans.
Descriptive and generic terms provide no rights
under the Policy under any circumstances even if they are registered.
Therefore, because Complainant’s alleged trademark is descriptive or generic,
Complainant has no enforceable trademark rights under the Policy, and the
Complaint must, therefore, be dismissed.
Respondent has rights and a legitimate interest
in the domain name. There is no evidence to support Complainant’s assertions in
this regard. Similarly, Complainant asserts that Respondent’s domain has no
value in itself and is wholly derivative of Complainant’s mark. Notwithstanding
the fact that there is no evidence to support this naked assertion, there can
be no derivative use of a generic name. Where the domain name and trademark in
question are generic, the rights/interests inquiry favors the Respondent. The
ICANN Policy is very narrow in scope; it covers only clear cases of
“cybersquatting” and “cyberpiracy,” not every dispute that might arise over a
domain name.
Respondent did not register, and is not using, the disputed domain name
in bad faith. There is no evidence that Respondent is attempting to sell leads
to mortgage lenders. Rather, Respondent has created a good faith business that
is valuable to Internet users seeking to locate providers of goods and
services, through reference to common, well-known, generic, and descriptive
terms. It is Complainant’s burden to offer evidence that demonstrates that
respondent has specifically intended to confuse consumers seeking out
complainant. Accordingly, bad faith is not established under ¶ 4(b)(iv).
Finally, Respondent did not register the domain
name to sell to Complainant and there is no evidence whatsoever of this intent,
or actual action in this regard.
FINDINGS
Complainant is the owner of USPTO trademark
registration 2,404,929 for LEADS TO LOANS.
The mark is registered as a service mark on the Supplemental Registry.
Respondent registered a
domain name that is a misspelling of the mark LEADS TO LOANS and that is
confusingly similar to such mark.
Complainant has not
offered any compelling evidence showing that it has trademark rights in the
mark LEADS TO LOANS.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Respondent’s <leadstolaons.com>
domain name is confusingly similar to Complainant’s LEADS TO LOANS mark pursuant
to Policy ¶ 4(a)(i). The disputed domain name consists of a misspelling of
Complainant’s mark, with the omission of spaces between the words of the mark,
and the addition of the generic top-level domain (“gTLD”) “.com.” These alterations to a complainant’s mark do
not sufficiently distinguish the resulting domain name from the mark under
Policy ¶ 4(a)(i). Neuberger Berman
Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000). Furthermore, it is well
established that the top level domain name does not affect the domain name for
the purpose of determining whether or not the mark is confusingly similar. The
top-level domain name is ignored in the comparison. Therefore, the Panel finds
that the <leadstolaons.com> domain name is confusingly similar to
Complainant’s LEADS TO LOANS mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
Notwithstanding the forgoing, to be granted relief in a UDRP proceeding the complainant must also demonstrate that it first has rights in the at-issue mark. Policy ¶ 4(a)(i). Ostensibly to that end Complainant evidences that it has registered LEADS TO LOANS with the USPTO. A review of USPTO registration number 2,404,929 for the mark LEADS TO LOANS discloses that the registration is for a service mark on the Supplemental Register. As pointed out by Respondent and widely though not exclusively held by UDRP panels, registration on the Supplemental Register is not prima facie evidence of rights in a mark under the UDRP. Under United States trademark law, “[r]egistration of a mark on the Supplemental Register does nothing to enlarge the substantive rights of the registrant.” Clairol, Inc. v. Gillette Co., 389 F.2d 264 (2d Cir. 1968). To the contrary, registration on the Supplemental register shows that at the time of registration the mark was descriptive and had not acquired secondary meaning. CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Oct. 30, 2001).
In spite of widespread agreement with this proposition, at least one panel
has held that registration on the Supplemental Register establishes the
complainant’s rights in the mark under Policy ¶ 4(a)(i). In Action Sports Videos v.
Reynolds, D2001-1239 (WIPO Dec. 13, 2001), the panel allowed for
Supplemental Registration to evidence rights in a mark because “the Policy at
paragraph [4(a)(i)] requires only that the complainant have ‘rights’ in the
disputed domain name, strong or weak though they be.” The Supplemental Register, which is reserved for non-distinctive
marks, entitles the mark’s owner to institute actions based upon the mark in
federal courts, and to obtain remedies provided in the Lanham Act. But
registration cannot give validity to a mark, the use of which would be invalid
at common law. Feathercombs, Inc. v Solo Products Corp. (1962, CA2 NY)
306 F2d 251, 134 USPQ 209, cert den (1962) 371 US 910, 9 L Ed 2d 170, 83
S Ct 253, 135 USPQ 503. Thus, certain
rights are granted by registration on the Supplemental Registry that are
necessary, but not sufficient, to allow the registrant to access federal
courts.
If, for argument, we take the position that any
right whatsoever will suffice with regard to Policy ¶ 4(a)(i), including but
not limited to trademark rights, then besides the procedural rights discussed
above the Complainant also has “rights”
in the domain mark LEADS TO LOANS by virtue of its registration agreement with
registrar Compana, LLC. Indeed, the Complainant has the exclusive right
to use and control the use of the domain name <leadstoloans.com> to
reference a website or for any other legitimate use consistent with its domain
name registration agreement.
As the Action Sports Videos panel noted,
the UDRP does not qualify the type or extent of “rights” needed to maintain an
action under Policy ¶ 4(a)(i). However,
to hold that the mere registration of a domain name imparts sufficient rights
to maintain an action under the UDRP would imply that a party by simply
registering a domain name and without more, has enough rights in the name to
proceed under the UDRP against all confusingly similar names. Under such a
scenario registrants of second level domain names comprised of generic terms or
descriptive terms such as “photography” or “jazz” would be permitted to
complain against registrants of any identical or confusingly similar second
level expression. Likewise and for similar rational, other rights in a name or
mark such as those gained by registering a corporate name or a business name
are not the type of rights with which Policy ¶ 4(a)(i) contemplates as requisite
for sustaining an action under the UDRP.
It is clear to this panel that the authors of the UDRP did not intend to
protect marks simply because they have been incorporated into a domain name or
because the complainant might have some other tenuous rights in the mark apart
from trademark rights. The complainant must have some trademark rights in the
domain name to proceed in a UDRP action.
While the fact that Complainant’s mark is
registered on the Supplementary Register does not advance a finding of
trademark rights in such mark, it also does not per se preclude such a
finding. Federal (or State) registration is not the only evidence that may be
used to prove a complainant has trademark rights in an at-issue mark. Common
law rights may exist absent registration. In the case of an otherwise
descriptive or generic mark, a complainant may demonstrate that an at-issue
mark has acquired distinctiveness or secondary meaning notwithstanding its
registration status and notwithstanding that the mark appears to be
descriptive. But here, Complainant has proffered no evidence that might lead to
such a finding.
Since the Complainant has not shown that it has
rights in the at-issue mark, there is no need to consider whether or not the
Respondent has rights or interests in the mark nor whether or not the domain
name was registered and used in bad-faith.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Paul M. DeCicco, Panelist
Dated: September 18, 2006
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