Countrywide Home Loans, Inc. v. Steve Kerry d/b/a North West Enterprise Inc.
Claim Number: FA0603000669549
Complainant is Countrywide Home Loans, Inc. (“Complainant”), represented by Lance G. Johnson, of Roylance, Abrams, Berdo & Goodman, LLP, 1300 19th Street, NW Suite 600, Washington, DC 20036. Respondent is Steve Kerry d/b/a North West Enterprise, Inc. (“Respondent”), 22915 Telegraph Road, Santa Fe Springs, CA 90670.
The domain names at issue are <fullspectrumlending.net >, <fulspectrumlending.net>, <fullspectrumlending.org> and <fulspectrumlending.org>, registered with Onlinenic, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2006.
On March 31, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <fullspectrumlending.net >, <fulspectrumlending.net>, <fullspectrumlending.org> and <fulspectrumlending.org> domain name are registered with Onlinenic, Inc. and that Respondent is the current registrant of the names. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 April 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 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@fullspectrumlending.net, postmaster@fulspectrumlending.net, postmaster@fullspectrumlending.org and postmaster@fulspectrumlending.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 <fullspectrumlending.net>, <fulspectrumlending.net>, <fullspectrumlending.org> and <fulspectrumlending.org> domain names are confusingly similar to Complainant’s FULL SPECTRUM mark.
2. Respondent does not have any rights or legitimate interests in the <fullspectrumlending.net>, <fulspectrumlending.net>, <fullspectrumlending.org> and <fulspectrumlending.org> domain names.
3. Respondent registered and used the <fullspectrumlending.net>, <fulspectrumlending.net>, <fullspectrumlending.org> and <fulspectrumlending.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Countrywide Home Loans, Inc. has used the FULL SPECTRUM mark in connection with financing home loans since 1995. Complainant has registered the FULL SPECTRUM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,004,450 issued October 1, 1996). Complainant financed more than $300 billion worth of home mortgages in 2004, and was ranked first in U.S. residential mortgage originations that same year. Complainant’s market presence, extended use of its mark in connection with its business and extensive advertising of the FULL SPECTRUM mark have rendered the mark famous.
Respondent registered the <fullspectrumlending.net> domain name on November 27, 2004, the <fulspectrumlending.net> domain name on August 31, 2005, the <fullspectrumlending.org> domain name on August 10, 2005 and the <fulspectrumlending.org> domain name on August 31, 2005. Internet users who access these domain names are directed to websites that feature links to various other competing and noncompeting commercial 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 FULL SPECTRUM mark
through its registration 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 <fullspectrumlending.net> and <fullspectrumlending.org> domain names incorporate Complainant’s FULL SPECTRUM mark in their entirety, and the <fulspectrumlending.net> and <fulspectrumlending.org> domain names incorporate a misspelled version of Complainant’s mark in that they omit a letter “l” from the term “full.” Omitting a single letter from Complainant’s mark does not negate the confusing similarity between Respondent’s domain name and 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). Moreover, each of Respondent’s domain names incorporates either Complainant’s mark, or a misspelled version of Complainant’s mark, accompanied by the generic term “lending,” which refers to the services offered by Complainant. Adding a generic term, especially one that is descriptive of Complainant’s business, to Complainant’s mark does not adequately distinguish the domain name from the mark. See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense). Therefore, Respondent’s domain names are confusingly similar to Complainant’s FULL SPECTRUM mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <fullspectrumlending.net>, <fulspectrumlending.net>, <fullspectrumlending.org> and <fulspectrumlending.org> domain names. Complainant has the initial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent uses the disputed domain names to present Internet users with links to websites that offer services in competition with Complainant. The Panel presumes that Respondent earns click-through fees in return for diverting Internet traffic to these websites. Such use of the disputed domain names for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 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).
Complainant asserts that Respondent is not a licensee of
Complainant, or associated in any other way with Complainant. Furthermore, Complainant asserts that
Respondent is not and has never been known by any variation of the FULL
SPECTRUM mark. Respondent has not come
forth with any evidence showing that it has rights or legitimate interests in
the disputed domain names, or that it has been commonly known by the disputed
domain names. There is no evidence on
record, including the WHOIS information for the disputed domain names, implying
that Respondent is commonly known by any of the disputed domain names. Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); 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").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <fullspectrumlending.net >, <fulspectrumlending.net>, <fullspectrumlending.org> and <fulspectrumlending.org> domain names, which are confusingly similar to Complainant’s FULL SPECTRUM mark, to present Internet users with links to other websites that offer services in competition with Complainant. The Panel infers that Respondent receives click-through fees for directing consumers to these websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain names and Complainant’s mark for its own commercial gain. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also 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).
Respondent’s domain names either incorporate Complainant’s mark in its entirety or misspelled versions of Complainant’s mark. In addition, Respondent’s domain names resolve to websites that contain links to various other websites offering services in competition with Complainant. Respondent’s use of Complainant’s mark to divert Internet users to Complainant’s competitors amounts to disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
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 <fullspectrumlending.net>, <fulspectrumlending.net>, <fullspectrumlending.org > and <fulspectrumlending.org> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 15, 2006
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