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WIPO Arbitration and Mediation Center

Complainant is Phoenix Mortgage Corporation, a California corporation located in Burlingame, California, USA.

Respondent is Tom Toggas, an individual located in York, Pennsylvania, USA.

The domain name at issue is <e-mortgage.com> (the "Domain Name").

The registrar is Network Solutions, Inc., in Herndon, Virginia, USA.

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules") and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution ("The Supplemental Rules").

Complainant submitted its complaint in this proceeding on January 18, 2001. Respondent submitted a Response on March 1, 2001.

WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge as panelist on March 20, 2001.

Complainant provides computerized online loan approval services. In 1995, Complainant adopted the mark E-MORTGAGE for use in connection with those services. Complainant filed an application for federal registration of its mark on December 5, 1995. The registration, issued on February 17, 1998, states the mark was first used on August 9, 1995. Complainant also owns a certificate of registration for that mark issued by the State of California on December 18, 1996. That certificate states that the mark was first used anywhere on January 30, 1996. Complainant's general manager, John Danpour, has submitted a Declaration stating that the correct date of first use is January 25, 1995. However, the nature of Complainant's first use is not explained or supported by additional evidence.

The Domain Name was registered on November 13, 1995. The Registrant is listed as E-Mortgage in York, Pennsylvania, USA. Mr. Tom Toggas is listed as the Administrative Contact. It appears that Respondent first made use of the mark E-MORTAGE in June 1995. Respondent claims that it has used the Domain Name for a web site providing mortgage databases for the eastern USA, but no evidence of that use has been submitted by either party. The parties acknowledge that Respondent's site has not been in service recently.

Respondent previously filed a Petition for Cancellation of Complainant's federal trademark registration. To avoid the legal expense, Respondent filed a motion for voluntary dismissal, and the Petition was dismissed, with prejudice, on August 20, 2000.

Complainant contends that it owns prior trademark rights in E-MORTGAGE, that the Domain Name is identical to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and has registered and used the Domain Name in bad faith. Complainant further claims that Respondent is guilty of cybersquatting because one of its employees refused a $25,000 offer to transfer the Domain Name to a third party, stating he hoped to receive an amount similar to the $1.2 million paid for transfer of <mortgage.com>.

Respondent denies Complainant's claim, contends that the parties provide legitimate services in separate geographic territories, and claims that it did not register or use the Domain Name in bad faith.

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interest in the domain name; and

(iii) that the domain name has been registered and used in bad faith.

The key issue here is whether Complainant can establish prior trademark rights in E-MORTGAGE. Respondent has not challenged the validity of Complainant's trademark rights in this case, and may be barred from doing so as a result of the dismissal with prejudice of its cancellation petition. Therefore, I will assume that Complainant's federal registration of E-MORTGAGE is valid.

The effective date of Complainant's federal rights is December 5, 1995, the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration. Even setting aside the contrary statements about the date of Complainant's first actual use, the mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness. See T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372 (Fed. Cir. 1996); Lucent Information Management, Inc. v. Lucent Technologies, Inc., 186 F.3d 311 (3^rd. Cir. 1999). Most significantly, there is no evidence to indicate any basis on which Respondent may have known about Complainant's mark prior to the filing date of Complainant's registration.

Complainant acknowledges that Respondent first used "E-Mortgage" in June, 1995, prior to Complainant's application for federal registration. The Domain Name itself was registered on November 13, 1995, again before the effective date of Complainant's federal trademark registration. In short, Complainant has failed to show that it had trademark rights in the mark E-MORTGAGE before Respondent registered the Domain Name.

Paragraph 4(a)(i) of the Policy requires a showing that the domain name is identical or confusingly similar to a mark in which the Complainant has rights. Although not specifically stated, this provision necessarily implies that the Complainant's rights predate the Respondent's registration and use of the Domain Name. Any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally.

Here, because Complainant has failed to prove prior rights, it has not satisfied its burden under Paragraph 4(a)(i) of the Policy. In addition, because it has not established that Respondent had any prior notice, actual or constructive, of Complainant's alleged use of E-MORTGAGE before registering the Domain Name, Complainant has failed to prove bad faith registration as required under Paragraph 4(a)(iii). Respondent's selection of the name does not itself suggest bad faith since the name obviously suggests electronic mortgage services of some type and is not a surprising choice for Respondent's business. Since these are necessary elements of the claim, it is not necessary to resolve the remaining factual disputes on the other elements before rendering a decision.

I conclude that Complainant has failed to prove that the Domain Name is identical or confusingly similar to a mark in which it has prior rights. I also find that Complainant has failed to prove bad faith registration. Therefore, its request for transfer of the <e-mortgage.com> Domain Name is denied.

Mark V B Partridge
Sole Panelist

Dated: March 30, 2001