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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

New Century Mortgage Corporation v. M. H. Lum

Case No. D2006-0933

 

1. The Parties

Complainant New Century Mortgage Corporation (“Complainant”) is a corporation incorporated under the laws of the State of California, with a principal place of business located in Irvine, California, United States of America.

Respondent M. H. Lum (“Respondent”) is an individual residing in Sacramento, California, United States of America.

 

2. The Domain Name) and Registrar

The domain names at issue are <home123.info> and <home123.biz> (the “Domain Names”). The registrar is Intercosmos Media Group, Inc. d/b/a DirectNIC (the “Registrar”).

 

3. Procedural History

On August 1, 2006, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On August 4, 2006, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On August 7, 2006, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On August 7, 2006, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent’s name.

The Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On August 9, 2006, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On August 31, 2006, the Center advised Respondent that it was in default for failing to file its Response.

On September 13, 2006, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.

The Panel accepted the late-filed Response of Respondent and a supplemental Reply by Complainant. Respondent was given the opportunity to file a Sur-Reply by September 22, 2006, but none has been received by the Panel.

 

4. Factual Background

Complainant has been in the business of offering mortgage loans since 1995. It is one of the largest providers of home mortgages in the United States. Since 1995, it has originated over $150 billion in mortgage loans. Through it predecessor in interest, Complainant has offered mortgages under the HOME 123 mark (the “Mark”) in the retail market since at least as early as 1998. In 2004, Complainant purchased the HOME 123 Mark and the registrations therefore, and other assets including the domain name <home123.com> and the good will associated with the HOME 123 Mark. Today all of Complainants retail mortgage services are offered and sold under the HOME 123 Mark.

Complainant has hundreds of offices throughout the United States where consumers can apply for and obtain mortgage loans. These offices operate under the name HOME 123. In addition to these numerous offices, Complainant operates its main website at “www.home123.com”. The website may also be accessed through “www.home123.net”. Complainant’s website provides a variety of mortgage information. At Complainant’s website, a consumer can research mortgage costs and mortgage types, read about how to obtain a mortgage loan and learn about refinancing.

Respondent registered the Domain Name <home123.info> on October 6, 2001, and the Domain Name <home123.biz> on November 17, 2001.

 

5. Parties’ Contentions

A. Complainant

i. Complainant contends that it has registrations of the HOME 123 Mark.

ii. Complainant argues that the Domain Names are confusingly similar to the HOME 123 Mark, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the HOME 123 Mark with the addition of .info and .biz which are required terms for the registration of domain names.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Complainant alleges that Respondent is in the real estate business and should be determined to have actual and constructive knowledge of Complainant and its activities.

Respondent cannot demonstrate rights or legitimate interest in the Domain Names under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(ii) because it is not commonly known under either of the Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the HOME 123 Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii). Complainant alleges that Respondent has intentionally registered numerous domain names and has never connected the two Domain Names at issue to any active website. In addition, Respondent had at least constructive notice of Complainant’s rights in the HOME 123 Mark and, under the circumstances, the Panel should conclude that the Respondent had actual knowledge.

B. Respondent

i. Respondent does not dispute that the Complainant has registrations of the HOME 123 Mark.

ii. Respondent does not dispute that the Domain Names are confusingly similar to the HOME 123 Mark.

iii. Respondent asserts that he has rights to or legitimate interests in the Doman Names because he is conducting a legitimate real estate business in which he uses an array of domain names, many of them incorporating the 123 or 411 designations. Respondent further asserts that he has been using such domain names continuously since 1998 or 1999.

iv. Respondent denies that he registered or used the Domain Names in bad faith. Respondent asserts the same factual basis as set forth above in Paragraph B (iii) of this decision and further asserts that he had no actual intent to injure Complainant.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (WIPO April 10, 2001).

Paragraph 4(a) of the Policy directs that the Complainant must 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 interests in respect of the domain name; and

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

A. Enforceable Trademark Rights

Complainant contends that it has registrations of the HOME 123 Mark. Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested the assertions by Complainant that it has valid registrations of the HOME 123 Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.

B. Identity or Confusing Similarity

Complainant further contends that the Domain Names are identical with and confusingly similar to the HOME 123 Mark pursuant to the Policy paragraph 4(a)(i), because they wholly incorporate the HOME 123 Mark with the addition of .info and .biz which are required terms for the registration of domain names.

Respondent has not contested the assertions by Complaint that the Domain Names are confusingly similar to the HOME 123 Mark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel notes that the entirety of the HOME 123 Mark is included in the Domain Names with the addition of .info or .biz.

Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998).

The addition of the phrases “.info” or “.biz” is non-distinctive because they are gTLD required for registration of a domain name.

Therefore, the Panel finds that the Domain Names are confusingly similar to the HOME 123 Mark pursuant to the Policy paragraph 4(a)(i).

C. Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interests in the Domain Names pursuant to the Policy paragraph 4(a)(ii) and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names. Complainant alleges that Respondent has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services. Complainant further alleges that Respondent is not commonly known under either of the Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the HOME 123 Mark in a domain name or in any other manner. Complainant further alleges that Respondent is not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (WIPO June 6, 2000).

The Policy paragraph 4(c) allows three nonexclusive methods for the Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent alleges that he has rights to or legitimate interests in the Doman Names because he is conducting a legitimate real estate business in which he uses an array of domain names, many of them incorporating the 123 or 411 designations. Respondent further asserts that he has been using such domain names continuously since 1998 or 1999.

The Panel finds that Respondent has given insufficient evidence that he has rights to or legitimate interests in the Domain Names. Therefore, paragraph 4(a)(ii) of the Policy is met.

D. Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product.

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii). Complainant alleges that Respondent has intentionally registered numerous domain names and has never connected the two Domain Names at issue to any active website. In addition, Respondent had at least constructive notice of Complainant’s rights in the HOME 123 Mark and, under the circumstances, the Panel should conclude that the Respondent had actual knowledge.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One such factor is that Respondent has made no use of the Domain Names. Complainant alleges that Respondent has not developed any active website connected to either of the Domain Names. Respondent has not contested this allegation, nor presented any proof to the contrary.

A second factor found to support a finding of bad faith is Respondent’s knowledge of the Complainant’s HOME 123 Mark when Respondent registered the Domain Names. Complainant has alleged that Respondent had actual knowledge of the HOME 123 Marks given the earlier registrations. The Panel finds that a trademark search on the date of the registration of the Domain Names would have revealed Complainant’s registrations the United States. Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000) (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith).

A third factor is Respondent’s refusal to voluntarily transfer the contested Domain Names or to respond to Complainant’s cease and desist letters. Failure to respond to a complainant’s efforts to make contact provides “strong support for a determination of ‘bad faith’ registration and use.” Encyclopaedia Britannica v. Zucarini, WIPO Case No. D2000-0330 (WIPO June 7, 2000).

The evidence establishes: (i) inaction by Respondent in the use the Domain Names to post any content on the Internet or for any other legitimate purpose; (ii) actual or constructive knowledge by Respondent of Complainant’s rights in the HOME 123 Mark upon the registration of the Domain Names; and (iii) Respondent’s failure to positively respond to Complainant’s cease and desist letters.

Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Panel concludes (a) that the Domain Names <home123.info> and <home123.biz> are confusingly similar to Complainant’s registered HOME 123 Mark, (b) that Respondent has no rights or legitimate interests in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to Complainant.

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Richard W. Page
Sole Panelist

Dated: September 29, 2006