Diversified Mortgage, Inc. v. World Financial Partners a/k/a Bill Trudelle
Claim Number: FA0208000118308
Complainant is Diversified Mortgage, Inc., Clearwater, FL (“Complainant”) represented by Anthony G. Woodward. Respondent is World Financial Partners a/k/a Bill Trudelle, Tampa, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <diversifiedmortgage.com>, registered with Register.com.
The undersigned certifies that he and the other panelists have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Louis E. Condon as Panel Chair.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 16, 2002; the Forum received a hard copy of the Complaint on August 19, 2002.
On August 16, 2002, Register.com confirmed by e-mail to the Forum that the domain name <diversifiedmortgage.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2002 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 24, 2002.
Neither party filed any supplemental pleadings.
On October 14, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Judge Louis E. Condon, Panel Chair, and Judge John J. Upchurch and G. Gervaise Davis III, Esq. as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a business entity organized under Florida law as a corporation licensed to do business under the names Diversified Mortgage, Inc. and Diversified Mortgage. Accordingly, Complainant has been and is doing business within Florida since May 25, 1990. In 1996, Complainant registered the fictitious name “Diversified Mortgage” with the State of Florida. Complainant claims it has common law rights in the “Diversified Mortgage” mark contained within the domain name registered by Respondent. Complainant registered the domain name <diversifiedmortgage.com> on November 17, 1996 and had been using that domain name until the occasion of the facts giving rise to this dispute. Complainant asserts it is axiomatic that a reasonable Internet user would assume that the domain name <diversifiedmortgage.com> is associated with Complainant.
Respondent, Bill A Trudelle, was employed by Complainant as a mortgage loan officer. As such, Complainant alleges that Respondent was familiar with Complainant’s claimed trademark and the use of its domain name. On or about August 27, 1999, Respondent was terminated from his employment with Complainant.
On or about December 30, 2001, Complainant received a “Deactivation Notice” of its <diversifiedmortgage.com> domain name from VeriSign on behalf of the Registrar. Complainant says it intended to send in payment extending its registration as it had done in the past. However, Complainant alleges, due to a clerical error the payment was not sent and the registration was terminated on March 26, 2002. Complainant states it did not notice this “technicality” until June, 2002, when it discovered that the domain name no longer worked and that the domain name had been purchased by Respondent on June 5, 2002.
Meanwhile, in May 2001 Complainant’s principal instigated divorce proceedings against his wife who he says was a friend of Respondent and familiar with Complainant’s business operations and the use of the domain name. Complainant alleges that Respondent’s acquisition of the domain name was part of a scheme between his wife and Respondent to harm Complainant’s business. As proof, Complainant alleges it received a phone call from a warehouse lender about a client who in fact was not a client of Complainant. Allegedly, the warehouse lender explained that it assumed the “client” was dealing with Complainant because the warehouse lender was given the site name “diversefiedmortgage.com”; and, further, that the client mentioned the principal’s wife as the point of contact. Additionally, Complainant offered a copy of what was purported to be his estranged wife’s business card using the disputed domain name.
Complainant acknowledges that Respondent has not contacted him in reference to sale of its rights in the domain name. Nor does Complainant know of Respondent attempting to sell the domain name registration to anyone else.
Respondent claims the domain name <diversifiedmortgage.com> is a generic descriptive term, not registered or protected by a federal or state trademark. Further, “the term ‘diversified mortgage’ is self-laudatory and that the trademark board has ruled that such terms are mere ‘trade puffery’ and “should be freely available to all competitors in any given field to refer to their products or services”.
On the issue of a common law trademark, Respondent asserts there are several unrelated mortgage companies operating in the state of Florida and/or nationwide using the generic term “diversified mortgage”. Further, Respondent notes that Complainant’s license to do business as “Diversified Mortgage” is only for Pinellas County. Respondent says Complainant has promoted the company in Pinellas county and online for several years as “DMmortgage.com”.
Respondent states that an Internet search for the term “diversified mortgage” shows that there are thousands of mortgage companies either operating under and/or using this generic term or a close variation thereof.
Complainant addressed correspondence to Respondent at Respondent’s mortgage company, USHomeLoan.com, which is a licensed correspondent lender in the state of Florida. USHomeLoan.com offers diversified mortgage selections of various mortgage products. Respondent has provided theses services to the general public since December of 1989. All of the public information provided regarding <diversifiedmortgage.com> or World Financial Partners Inc. used Respondent’s home address rather than Respondent’s mortgage company address where the correspondence was sent.
Respondent alleges he has been originating various residential mortgage product lines to the general public as a professional mortgage originator since December 1989. Over the years Respondent says it was it was common practice for him to collect generic, un-trademark-able Internet domain names. Respondent’s first domain name acquisition was <financialrealestate.com> in August of 1996. Respondent states that World Financial Partners is a marketing company for the real estate and finance industries that has been operating in excess of two years. At present, Respondent says he has 36 domain names that are used in compliance with UDRP Policy to generate search engine revenue as an online marketing company. Respondent acquired the disputed domain name <diversifiedmortgage.com> for $2,688.00 plus transfer and registration fees of approximately $200.00. It, along with Respondent’s subsequently acquired domain name, <maxfinance.net> was added to his World Financial Partners portfolio. Respondent denies any claim by Complainant that he has engaged in cyber-squatting.
Respondent claims the domain name in dispute was abandoned by Complainant who had every opportunity to keep or reclaim the domain name in that “the Complainant opted to ignore at least eight (probably more) notifications both postal and electronic”.
Respondent says Complainant had from January 1, 2002 through February 19, 2002, to renew the domain name or could re-buy the domain name registration while it was defunct and available to the general public from February 19, 2002 through April 11, 2002. Respondent questions Complainant’s claim that <diversifiedmortgage.com> was the company’s primary source of business yet Complainant was unaware of the lack of ownership and functionality until June 5, 2002.
Respondent admits that he and his wife are friends of the Complainant’s principal’s wife but states that she has never been employed by Respondent, nor has she ever represented him, World Financial Partners Inc. or USHomeLoan.com, Inc. in any way. Further, Respondent says that the principal’s wife denies attending the mortgage function where she allegedly gave someone a business card with the disputed domain name showing that she was employed by Respondent. Further, Respondent says she denies attending any function presented by the mortgage industry after the filing of divorce by her husband. Respondent says his parting from Diversified Mortgage, Inc. in February. 1999, was on an amicable basis. After receipt of the termination letter, Respondent says he was an invited guest in Complainant’s (principal) home on many occasions and socialized with Complainant (principal) both with and without their wives. Respondent alleges that this dispute was filed solely for reasons relating to the divorce proceeding.
(1) The domain name is substantially identical and confusingly similar with the trade name of Complainant; however, Complainant has provided no evidence that his trade name is a registered or common law trademark, as required by the UDRP.
(2) Respondent has no legitimate interest in or right to use the trade name of Complainant and,
(3) Complainant has established that the domain name was registered and is being used in bad faith.
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.
Based upon the Complaint and the Response, it is clear that the domain name is essentially identical to the name of Complainant's business, however, Complainant does not allege, and has not proven, that this is a registered or common law trademark. In fact it is merely a trade name, and a very common one at that (there being some 97,700 references to this name on the Google.com <google.com> search engine, for example). The name essentially describes the nature of Complainant's business, a type of business shared by numerous other mortgage companies, apparently including that of Respondent.
With respect to Respondent’s legitimate interest or right to use the name, his explanation seems flimsy at best - which is to the effect that he collects useful names for possible use in this business. This certainly does not give him the right to use it, if it were a trademark of someone else, and he provides no other reason why he registered it or uses it.
Similarly, Respondent's good faith purpose for registering and using the name is also questionable, as are the circumstances under which business cards of Complainant's estranged wife were distributed, using this name, thereby creating confusion as to which business she was connected. It therefore cannot be said unequivocally that Respondent either registered or used it in good faith.
Ordinarily, the Panel would be
constrained to find for Complainant in a case like this, since Complainant
almost meets all the standards required; however there is one fatal flaw in his
case here, the fact that the domain name and the business name is not a
registered or even a common law trademark, and is in fact so descriptive that
it is unlikely anyone would be able to obtain a trademark registration on these
two words standing alone, other than perhaps as a logo. Complainant has
not met this key standard necessary to prevail.
The reports and descriptions of the purpose of the UDRP make clear that these rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks. See WIPO Final Report of April 30, 1999 on The Management of Internet Names and Addresses: Intellectual Property Issues, ¶ 167:
The Scope of the Administrative Procedure
¶ 167. The second limitation would define abusive registration by reference only to trademarks and service marks. Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. Those in favor of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names and geographical indications. See Rundstedt & Partner GmbH v. Koch, D2001-1138 (WIPO Nov. 7, 2001) (The Domain Name at issue is <rundstedt.com>. “Trade names and personal names are not protected under the Policy (it is under discussion, whether they may be submitted to the Policy at a later date, however, they are clearly not covered by the Policy at present”); see also Servs. ("ICSTIS") v. Devaney, of Int’l Commercial Software Training and The Indep. Comm. for the Supervision of Standards of Tel. Info. IT Support, D2001-0607 (WIPO Oct. 31, 2001) (The domain names at issue are <icstis.com> and <icstis.net>, <icstis.org>):
[M]ost cases of unregistered rights relate to rights of individuals in their personal name. One of the few exceptions is in the National Arbitration Forum case File No. [FA 93633], Cedar Trade Assocs. Inc. v. Ricks, relating to <buypc.com>. However, that decision does not give any basis for the conclusion that Complainant had rights to the name in question and refers to the use of the name as a trade name when trade names are not covered by the Policy.
Based on this intent, the UDRP panels and decisions have almost universally denied protection to a trade name used as a domain name, which this Panel concludes it is bound under existing precedent to do here. Accordingly, we decline to order the transfer of the domain to Complainant. This does not necessarily mean that Complainant is without a legal remedy, which he may have under existing state and federal unfair trade practices rules and laws, but this Panel has no authority to resort to such causes of action since it is a specialized arbitration tribunal that draws its authority from the UDRP and not general common law, unless it relates to trademark issues.
The Panel, therefore, DENIES the requested transfer and directs that the Registrar take no action in that regard
Hon. Louis E. Condon, Panel Chair
Hon. John J. Upchurch, Panelist
G. Gervaise Davis III, Esq., Panelist
Dated: October 30, 2002
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