Wells Fargo Home Mortgage v. private private
Claim Number: FA0609000791958
Complainant is Wells Fargo Home Mortgage (“Complainant”), represented by Brian J. Laurenzo, of Dorsey & Whitney LLP, 801 Grand Avenue, Suite 3900, Des Moines, IA 50309, USA. Respondent is private private (“Respondent”), 1231 Alberts Street, New York, NY 10013, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <builderbest.com>, registered with Go Daddy Software, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 11, 2006.
On September 8, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <builderbest.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 September 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 3, 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@builderbest.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a leading home mortgage and banking institution.
Complainant holds a registration with the Untied States Patent and Trademark Office (“USPTO”) for the BUILDER BEST service mark (Reg. No. 2,775,980, filed December 8, 1999, issued October 21, 2003).
Complainant employs the BUILDER BEST mark in connection with its marketing of mortgage-related goods and services.
Respondent registered the <builderbest.com> domain name on February 18, 2003.
Respondent uses the disputed domain name to operate a website composed entirely of links to third party websites.
Many of these links are to websites offering goods and services in direct competition with those of Complainant, for example “financial planning,” “real estate” and “insurance.”
Other links are unrelated to Complainant’s business, for example “lifestyle” and “travel.”
Respondent’s <builderbest.com> domain name is identical to Complainant’s BUILDER BEST mark.
Respondent does not have any rights or legitimate interests in the <builderbest.com> domain name.
Respondent registered and uses the <builderbest.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a 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 same domain name was 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."
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 a 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:
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 or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant filed for registration of the BUILDER BEST mark with the USPTO in December 1999, well before Respondent’s February 2003 registration of the <builderbest.com> domain name. Panels in Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), and in Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003), held that registration of a mark with the pertinent government authority is sufficient to establish rights under the Policy. And, while Complainant’s BUILDER BEST mark was not registered with the USPTO until October 2003, the panel in Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003), held that, “as Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.” Similarly, the panel in Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002), found that the relevant date for establishing rights in a mark is the date a subsequently successful application was filed. Thus, Complainant has established rights in the BUILDER BEST mark pursuant to Policy ¶ 4(a)(i).
We next note that Respondent’s <builderbest.com> domain name is substantively identical to Complainant’s BUILDER BEST mark. The disputed domain name merely removes the space between the two terms of Complainant’s mark and adds the top-level domain “.com.” These alterations do not distinguish the disputed domain name from Complainant’s mark because spaces are not allowed in domain names and top-level domains are a requirement for all domain names. In Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000), the panel found that, "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ." Similarly, in Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found that the <hannoverre.com> domain name was identical to a complainant’s HANNOVER RE mark, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertion constitutes a prima facie case for purposes of the Policy, and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent had the opportunity to present evidence and arguments in support of its rights or legitimate interests in the domain name by submitting a Response. Its failure to do so suggests that Respondent lacks such rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only
results in its failure to meet its burden, but also will be viewed as evidence
itself that Respondent lacks rights and legitimate interests in the disputed
domain name.
Nonetheless, the Panel will evaluate the available evidence to determine if there is any basis for concluding that Respondent has rights or legitimate interests as outlined in Policy ¶ 4(c).
In this connection, it is pertinent that Complainant alleges, and Respondent does not deny, that Respondent uses the <builderbest.com> domain name to operate a website composed of links to third-party websites, some of which link to commercial sites in competition with Complainant’s business. The panel in Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000), found that a respondent’s website, which was blank but for links to other websites, was not a legitimate use of the disputed domain name. Likewise, the panel in TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), found that a respondent’s use of a disputed domain name to send Internet users to a website which displayed links, some of which were tied to a complainant’s competitors, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Similarly, in Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), the panel found that a respondent’s use of a domain name containing a complainant’s mark to redirect Internet users to that respondent’s website featuring a series of links to unrelated websites was neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use. Thus, Respondent’s use of the disputed domain name is not a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii).
We turn then to the fact that there is no evidence in the record of this proceeding to suggest that Respondent is commonly known by the <builderbest.com> domain name. The panel in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), examined a respondent’s WHOIS information for evidence that that respondent was not commonly known by the disputed domain name. In this case, Respondent’s WHOIS information identifies Respondent as “private, private,” which has no apparent relationship to the disputed domain name. Similarly, in Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), the panel stated that, “given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.” We concur with this analysis. Thus, we conclude that Respondent is not commonly known by the disputed domain name, and therefore lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges, without contravention from Respondent, that Respondent uses the disputed domain name to redirect Internet users to Respondent’s website, which features links to third-party websites offering goods and services in competition with the business of Complainant. Internet users seeking Complainant’s website may therefore find themselves redirected to Complainant’s competitors’ advertising. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel found that a respondent’s use of a confusingly similar domain name to redirect Internet users to the website of a complainant’s competitor was evidence of bad faith pursuant to Policy ¶ 4(b)(iii). Similarly, in Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), the panel found that a respondent had diverted business from a complainant to a competitor’s website within the contemplation of Policy ¶ 4(b)(iii). We agree with this assessment. Thus, Respondent’s use of the disputed domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Additionally, it is significant under this heading that Respondent’s <builderbest.com> domain name is substantively identical to Complainant’s BUILDER BEST mark because Respondent’s website includes links to goods and services similar to those offered by Complainant, so that Internet users may mistakenly believe that Respondent’s website is sponsored by or affiliated with Complainant. Respondent presumably profits from this confusion by collecting pay-per-click referral fees from the links posted at its website. Under similar circumstances, in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that a respondent’s use of a misleading domain name to redirect Internet users to that respondent’s website showed bad faith registration and use pursuant to Policy ¶ 4(b)(iv), in part because that respondent presumably received pay-per-click fees from links on the site. Similarly, in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a site offering links to third-party sites for services similar to a complainant’s. Again, we agree with these assessments. Respondent’s use of the disputed domain name as described is therefore further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <builderbest.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 23, 2006
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