loanDepot.com, LLC v. David Robnett / Expert Lenders, Inc.
Claim Number: FA1808001800959
Complainant is loanDepot.com, LLC ("Complainant"), represented by Hani Sayed of Rutan & Tucker LLP, California, USA. Respondent is David Robnett / Expert Lenders, Inc. ("Respondent"), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mellomortgage.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2018; the Forum received payment on August 10, 2018.
On August 14, 2018, GoDaddy.com, LLC confirmed by email to the Forum that the <mellomortgage.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@mellomortgage.com. Also on August 21, 2018, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant describes itself as "a giant in the world of non-bank consumer lending for home mortgages, refinance, equity, and personal loan products," ranked among the five largest U.S. lenders by volume. In 2017 Complainant began using MELLO in connection with its digital mortgage platform. Complainant announced the platform at an industry conference in March 2017 and received substantial media coverage. The announcement has been viewed approximately 3,500 times on Facebook and nearly 14,000 times on YouTube. Complainant also provides numerous examples of media coverage of the announcement, along with documentation of Complainant's social media promotional activities. Complainant began training industry professionals in the use of the platform beginning in May 2017. The platform is currently being promoted to consumer borrowers and real estate agents and brokers; it also serves sellers and other industry professionals. Complainant asserts that the MELLO mark acquired secondary meaning almost immediately after the announcement, and that its common law rights in MELLO have been recognized by prior Panel decisions under the Policy.
Respondent registered the domain name <mellomortgage.com> in December 2017. Complainant states that Respondent is a direct competitor of Complainant, with what Complainant describes as "deep industry knowledge." The domain name is being used for a parked page containing an offer to sell the domain name for $25,000. Complainant asserts that Respondent is not commonly known by the domain name; is not an authorized provider of Complainant's services; and has never been licensed or otherwise permitted to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <mellomortgage.com> is confusingly similar to the MELLO mark in which Complainant claims rights; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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."
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.
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(f), 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 (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.").
Complainant asserts that it has common law trademark rights in MELLO, and alleges that the disputed domain name <mellomortgage.com> is confusingly similar to this mark, on the grounds that it combines the mark with "mortgage," a generic term for Complainant's services, and the ".com" top-level domain. The domain name obviously is confusingly similar to MELLO for purposes of the Policy. See, e.g., Lehman Brothers Inc. v. Scott Simon, FA 271212 (Forum June 30, 2004) (finding <lehmanmortgage.com> confusingly similar to LEHMAN BROTHERS); HSBC Holdings Plc v. domainchronicle, D2002-1173 (WIPO Oct. 3, 2003) (finding <hsbcmortgage.com> confusingly similar to HSBC). Whether Complainant has sufficient rights in MELLO to proceed under the Policy, however, is a more difficult question.
Complainant relies upon its claim of common law rights in MELLO, but also references four trademark applications currently pending before the U.S. Patent & Trademark Office, acknowledging that such applications do not confer the rights required under paragraph 4(a)(i) of the Policy. The Panel notes that most of these applications are based upon an intent to use the MELLO mark in the future (i.e., basis 1(b), 15 U.S.C. § 1051(b)); the only one based upon current use of the claimed mark in commerce (basis 1(a)) is serial number 87675665, which appears to be based upon the use of the putative mark within a page on Complainant's website. The Panel does not consider these applications to be probative of Complainant's rights for purposes of the Policy.
Complainant cites four previous Forum decisions which, it says, hold that Complainant has common law rights in the MELLO mark. In fact, two of the decisions do not say that at all, and the other two do but only in dictum. (In addition, all four were default proceedings, and none involved the present Respondent.) Thus, even disregarding the fact that previous decisions under the Policy do not carry precedential weight, the Panel does not consider these decisions to be persuasive here.
In loanDepot.com, LLC v. Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot, FA 1786283 (Forum June 10, 2018), Complainant asserted rights in MELLO and MELLO LENDING. The Panel elected not to decide whether Complainant had sufficient rights in MELLO LENDING, apparently being under the mistaken impression that a trademark registration had issued for MELLO. In loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786282 (Forum June 18, 2018), Complainant does not appear even to have asserted rights in MELLO; the Panel accepted and relied upon Complainant's claim of common law rights in MELLO SETTLEMENT SERVICES. Finally, while the other two cases do refer to common law rights in MELLO, both of them ultimately rely only upon rights in other common law marks that incorporate MELLO. See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (finding <mellotitle.com> identical to common law mark MELLO TITLE); loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding <mellosolar.com> identical to common law mark MELLO SOLAR).
The Panel therefore considers whether Complainant has sufficiently proved its claim of common law rights in MELLO without reference to the prior decisions cited by Complainant. Such rights need not have existed at the time the disputed domain name was registered (assuming Complainant can still prove that it was registered in bad faith, targeting Complainant or the mark in which it would later acquire rights), as long as Complainant presently has rights in the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.1 (3d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview3.0/#item11.
The standard for demonstrating common law rights has been described in the WIPO Overview as follows:
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Id. § 1.3. See also loanDepot.com, LLC v. sm goo, supra (citing WIPO Overview § 1.3).
Complainant has used MELLO for slightly more than a year, but apparently has succeeded in building widespread recognition over that time. The evidence provided by Complainant, at least in the absence of any challenge by Respondent, is sufficient in the view of this Panel to demonstrate common law rights in the mark for purposes of paragraph 4(a)(i) of the Policy.
As the Panel has already noted, it is clear that the disputed domain name <mellomortgage.com> is confusingly similar to MELLO. Accordingly, the Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name combines Complainant's common law mark with a generic term for Complainant's services, and its only apparent use has been for a parked web page containing an offer to sell the domain name. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and are being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii) bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that combines Complainant's recently adopted common law mark with a generic term for Complainant's services, and is using it for the sole purpose of promoting a possible sale of the domain name. Respondent is a competitor of Complainant and has substantial industry knowledge and experience. Respondent likely became aware of Complainant and its MELLO mark upon or soon after the announcement, and presumably registered the disputed domain name in order to create confusion with Complainant's mark and exploit a perceived connection between the domain name and Complainant's services. The Panel is persuaded based upon these facts and inferences that Respondent registered and is using the disputed domain name in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mellomortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 17, 2018
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