MortgageIt, Inc. v. domains, ventures
Claim
Number: FA0507000520513
Complainant is MortgageIt, Inc. (“Complainant”), represented
by George M. Borababy of Patton Boggs LLP,
2550 M Street, N.W., Washington, DC 20037.
Respondent is domains, ventures (“Respondent”),
136 XIAOXUE ROAD, XIAMEN, Fujian, 361001, CN.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mortageit.com>, registered with Moniker
Online Services, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 25, 2005.
On
July 20, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the <mortageit.com> domain name is
registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. 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
August 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 22, 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@mortageit.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 30, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mortageit.com>
domain name is confusingly similar to Complainant’s MORTGAGEIT mark.
2. Respondent does not have any rights or
legitimate interests in the <mortageit.com> domain name.
3. Respondent registered and used the <mortageit.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, MortgageIt, Inc., provides mortgage and loan
services directly to consumers.
Complainant promotes its business throughout the United States and via
its website available at the <mortgageit.com> domain name, where
customers can access Complainant’s services.
Complainant is the holder of a registration with the United States Patent
and Trademark Office (“USPTO”) for the MORTGAGEIT mark (Reg. No. 2,349,957
issued May 16, 2000). Complainant has
used its MORTGAGEIT mark continuously in commerce since at least February 1999
in connection with its mortgage-related services. In 2004, Complainant reported loan originations of approximately
$13 billion and in 2003, the amount was approximately $12 billion.
Respondent registered the <mortageit.com> domain name on May 31, 2005. The disputed domain name resolves to a
website that displays links to a variety of third-party products and services,
including some of Complainant’s competitors in the mortgage and loan services
business. Respondent presumably
receives commissions for directing Internet users to third-party websites via
the disputed domain name.
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
provided evidence of its registration of the MORTGAGEIT mark with the
USPTO. Complainant’s registration of
its mark with a federal authority is sufficient to establish a prima facie
case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See 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.”); see also 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.”).
The <mortageit.com>
domain name registered by Respondent incorporates a misspelled version of
Complainant’s MORTGAGEIT mark that omits the letter “g.” This is evidence of “typosquatting,” a
practice that involves taking advantage of simple misspellings of a complainant’s
mark to divert Internet users searching for the complainant. The Panel concludes that Respondent’s use of
typosquatting to create a domain name renders the disputed domain name
confusingly similar to Complainant’s mark.
See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879
(Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com>
is confusingly similar to the complainant’s COMPAQ mark because the omission of
the letter “a” in the domain name does not significantly change the overall
impression of the mark); see also Neiman
Marcus Group, Inc. v. Party Night, Inc.,
FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN
MARCUS mark and was a classic example of
typosquatting, which was evidence that the domain name was confusingly
similar to the mark).
Therefore, the
Panel determines that Complainant has fulfilled Policy ¶ 4(a)(i).
Panels have
consistently held under the Policy that the complainant has the initial burden
of proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its
initial burden by establishing a prima facie case, the Panel will now
analyze whether Respondent has met its burden to establish rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c).
Complainant
contends that Respondent is not commonly known by the <mortageit.com>
domain name and that Complainant has never licensed Respondent or given
Respondent permission to register domain names similar to Complainant’s
MORTGAGEIT mark. The WHOIS information
for the disputed domain name lists Respondent as “domains, ventures” and
identifies no other connection between Respondent and the disputed domain
name. Because Respondent has failed to
respond to any of Complainant’s contentions, the Panel is left with no evidence
to rebut Complainant’s assertions that Respondent is not commonly known by the
disputed domain name. Thus, the Panel
finds that Respondent has not established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v.
Paik, FA 206396 (Nat. Arb. Forum Dec. 22,
2003) (“Respondent has registered the domain name under the name ‘Ilyoup
Paik a/k/a David Sanders.’ Given the
WHOIS domain name registration information, Respondent is not commonly known by
the [<awvacations.com>] domain name.”); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known by the domain name prior to registration of the domain
name to prevail"); see also Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”).
Respondent is
using the <mortageit.com> domain name, which is comprised of a
typosquatted version of Complainant’s MORTGAGEIT mark, to redirect Internet
users searching for Complainant via its mark to a website that displays
numerous links, including some that direct Internet users to Complainant’s
competitors. Such use of a typosquatted
version of Complainant’s mark to redirect Complainant’s potential customers to
Respondent’s website, where Respondent presumably receives referral fees for
directing users to third-party websites, 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 pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy); see also Seiko Kabushiki
Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”); see also IndyMac Bank
F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
disputed domain names because it “engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”).
Thus, the Panel
determines that Complainant has fulfilled Policy ¶ 4(a)(ii).
The <mortageit.com>
domain name resolves to a website that features numerous links to a variety of
products and services. The Panel
presumes that Respondent receives commissions for diverting Internet users to
third-party websites via Respondent’s website at the disputed domain name. Furthermore, by using a misspelled version
of Complainant’s MORTGAGEIT mark in the domain name, Respondent is creating a
likelihood of confusion and attempting to attract Internet users to
Respondent’s website for Respondent’s commercial gain. The Panel finds that these circumstances are
evidence that Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the 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 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 Am. Online,
Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where the respondent registered and used a domain name
confusingly similar to the complainant’s mark to attract users to a website
sponsored by the respondent).
The <mortageit.com> domain name registered by
Respondent consists of a misspelled version of Complainant’s well-known MORTGAGEIT
mark. Thus, Respondent is engaging in
the practice of “typosquatting” by taking advantage of a potential
typographical error made by Internauts intending to reach Complainant’s website
at the <mortgagit.com> domain name, who inadvertently omit the letter
“g.” Under the Policy, typosquatting is
sufficient evidence of bad faith registration and use of the disputed domain
names. The Panel, therefore, finds that
Respondent registered and used the disputed domain names in bad faith pursuant
to Policy ¶ 4(a)(iii). See Canadian
Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and
used the domain name in bad faith because the respondent “created ‘a likelihood
of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s web site or location’. . .
through Respondent’s persistent practice of ‘typosquatting’”); see also Nat’l
Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting … is the intentional misspelling of words with [the]
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of
bad faith.”).
The Panel
determines that Complainant has 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 <mortageit.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
September 6, 2005
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