WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aames Capital Corporation v. Wavzbak
Case No. D2001-0699
1. The Parties
The Complainant is Aames Capital Corporation, a California corporation whose address is 350 South Grand Avenue, 40th Floor, Los Angeles, California 90071, U.S.A.
The Respondent is Wavzbak, an entity whose address is 1257 Broadway, El Cajon, California 92021, U.S.A.
2. The Domain Name and Registrar
The disputed domain name is <aameshomeloans.com>.
The registrar for the disputed domain name currently is Tucows.com.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on May 25, 2001. On May 28, 2001, the Center asked NSI to check on the registrant for the domain name <aameshomeloans.com> because the Complaint first named NSI as the registrar. On May 29, 2001, NSI reported to the Center that the registrar for the domain name was no longer NSI, but instead was the registrar Tucows.com.
On May 31, 2001, the Center received the Complainant's amended Complaint naming Tucows.com as the registrar for the disputed domain name. On May 30, 2001 (i.e., following up on the registrar NSI's response), the Center requested that Tucows.com ascertain the registrant for the disputed domain name. On June 1, 2001, Tucows.com responded that the registrant was the Respondent Wavzbak with Alan Crochetiere as administrative contact.
On June 7, 2001, the Complainant further amended the Complaint to take account of the fact the Respondent had changed the registrant name for the disputed domain name to Wavzbak.
On June 8, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and e-mail and this proceeding officially began. The Response was received by the Center in hardcopy on June 26, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence by July 16, 2001, and the Center proceeded to appoint the Panel on July 17, 2001.
After examining the parties' Complaint and Response, the Panel found it advisable to seek further information from the parties. Therefore, on July 30, 2001, the Panel issued Procedural Order No. 1 directing the parties to furnish the Panel with certain additional information by August 14, 2001. The parties have complied with this Procedural Order.
The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.
This Decision was due by July 31, 2001, but in order to give the parties time to respond to Procedural Order No. 1, the Panel extended the due date for the Decision to August 21, 2001.
4. Factual Background
Complainant is a company engaged in banking and financing, including the financing of home sales. The Respondent is a client of the Complainant and has had a home mortgage with the Complainant since 1994.
The Respondent registered the disputed domain name <aameshomeloans.com> on April 11, 2000, and began using the domain name website to criticize and satirize the Complainant and its services.
In early 2001, the Complainant contacted the Respondent and attempted to purchase the disputed domain name, but the parties did not reach an agreement.
The Complainant is now seeking transfer of the disputed domain name through this proceeding.
5. The Parties' Contentions
Complainant's Contentions (summarized):
- Complainant is the owner of the U.S. service mark "Aames Home Loan".
- Complainant or its predecessor organizations have engaged in the home financing business since 1954 and have utilized the Aames mark for more than 25 years. Complainant is a wholly owned subsidiary of Aames Financial Corporation, the registered owner of the domain name <aameshomeloan.com>, and operates a website at that address.
- Respondent Mindy Crochetiere, by and through her husband, Respondent Wilfred A. Crochetiere (aka Alan Crochetiere), operates a website at the domain name <aameshomeloans.com>. During its first year of operation, the website consisted of Alan Crochetiere's personal gripes and frustrations arising out of the servicing of his loan.
- Respondent's domain name consists of Complainant's mark in the plural and without spaces between the words. As such, it is identical, or at least confusingly similar, to Complainant's mark.
- Respondent is neither affiliated with, nor has he been licensed or permitted to use, the Aames Home Loan mark or any domain names incorporating that mark. Accordingly, Respondent has no rights to, or legitimate interests in, the domain name.
- The Respondent's course of conduct leads to the conclusion that Respondent registered the domain name primarily for the purpose of selling it to Complainant for an amount far in excess of out-of-pocket costs and/or to improperly tarnish Complainant's mark.
- On May 10 or May 11, 2001, the Respondent had added to the website the names, logos and links to sites of Complainant's competitors and others under "Alternative Lenders," a button that had not previously existed on the site. Also, on May 15, 2001, the Respondent listed the disputed domain name for sale with an online auction for a minimum bid of $1,800,000.
- On May 10, 2001, Complainant offered Respondent the sum of $2,500 for the domain name. Respondent rejected the offer and immediately demanded $3,000,000 to be agreed upon by 5:00 pm on May 15, 2001. Respondent further threatened that if Complainant had not agreed to pay $3,000,000 by the prescribed time, he would immediately list the website on hundreds of search engines and would put the domain name up for sale on online auctions.
- After expiration of their offer, the Respondent attempted to use mass mailings to tarnish the Complainant's mark.
- The Policy prohibits a person from using another's mark to divert consumers, regardless of whether the intent is to inform or disparage. Since there is nothing to prevent Respondent from establishing a website to vent its views at another address, there is no legitimate basis for Respondent to claim any rights or interests in Complainant's trademark as a domain name.
- Bad faith has been found to exist where a person chooses to operate a consumer complaint site by using the Complainant's mark in the domain name in hopes of attracting internet users looking for the Complainant's site.
Respondent's Contentions (summarized):
- The Respondent is doing business under the San Diego County, California licensed business name of Aames Home Loans. The disputed domain name is identical to the Respondent's business name.
- The Respondent had no intention to sell the domain name before being contacted by the Complainant.
- The Respondent's domain name is not identical to any domain name the Complainant has used to date.
- The Respondent has owned and operated its licensed business in a store located on Broadway Street in El Cajon, California since 1981, serving the local communities. Being legally licensed in the United States, State of California, County of San Diego allows the Respondent to have a domain name in the same wording as its license.
- Because of the visitor traffic to the website, the construction and building of the site, and the numerous expenses in development and maintaining the website, the Respondent has a legitimate and vested interest in the disputed domain name. No one should have the right to take away what the Respondent has worked so hard for.
- In the beginning, the disputed domain name website was basically for personal opinion and some humor pages. The website then graduated into an informative area about home loans and financing services.
- There was nothing inherently wrongful in letting Aames Financial Corporation notify the Respondent that they wanted to purchase the Respondent's domain name. In fact, it is a common practice. The Respondent was not wrongful in stating the amount Respondent wanted after the Complainant made an offer to purchase the domain name.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has produced a printout from the database of the United States Patent and Trademark Office principal register showing the Complainant owns a valid service mark for "Aames Home Loan", no. 74646535 registered on September 24, 1996, for financial services, mortgage banking and brokerage services (Complaint Annex 3). The Complainant has also operated a website at <aameshomeloan.com> as of December 4, 1996.
The disputed domain name <aameshomeloans.com> differs from the Complainant's service mark only in that an "s" is added to the word loan. It is long decided at U.S. and prevailing international trademark law that making the singular plural rarely saves a trademark from being confusingly similar. The Panel finds this to be the case here, particularly since the distinctive part of the mark, aames, remains unchanged.
The Panel finds the Complainant has satisfied its burden of proof under this section.
Legitimate Rights or Interests
The Complainant has stated "the Respondent is neither affiliated with, nor has he been licensed or permitted to use, the Aames Home Loan mark or any domain names incorporating that mark. Accordingly, Respondent has no rights or legitimate interests in the domain name in question." (Complaint, p. 7)
The Respondent makes several arguments in its efforts to show it does have legitimate rights and interests in the disputed domain name under the Policy at 4c (i-iii). The Policy there requires that:
(i) before any notice to you 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 (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 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.
In its original Response the Respondent alluded to the fact that, in addition to having registered the disputed domain name to criticize the Complainant's business practices, the Respondent also registered the domain name to be used in conjunction with a business called Aames Home Loans (Response p. 4 ). But it was not clear to the Panel what the business was nor how long the Respondent had been pursuing it. However, based on the supplementary material the Respondent provided in response to Procedural Order No.1, it is clear to the Panel that: (a) After August 2, 1994 (according to the Respondent, but July 22, 1994, according to a notarized document furnished by the Complainant), the date when the Respondent mortgaged a house to the Complainant, the Respondent could not in good faith use the mark Aames Home Loans for home financing because Aames Home Loan was one of the business names of Respondent's own mortgagee; and (b) the Respondent, by its own admission, filed for the business name Aames Home Loans on May 19, 2001, i.e., over a year after registering the disputed domain name, and provided no evidence that it had commonly been known by the domain name. The Panel thus finds the Respondent has not satisfied the Policy at either 4c(i) or 4c(ii) for proving legitimate rights or interests in the disputed domain name.
The Respondent also makes a fair use argument under the Policy at 4c(iii), viz, that the Respondent is using the disputed domain name to criticize and give the public information about the Complainant and its home mortgage practices. The Complainant concedes the Respondent has used the domain name for this purpose. However, the Respondent admits that he has the intent to use the domain name for business purposes "to commence sometime during the latter part of this year." He has also, at least since May 11, 2001, diverted customers of the Complainant who could have been misled by the confusingly similar domain name to that of the registered mark of the Complainant. The Respondent has done so by including links on the website to competitors of the Complainant. While the Respondent may have initially only been using the domain name website for criticism and commentary about the Complainant, it is clear that at least after May 10, 2001, the Respondent was also using the website to divert customers and was doing so with the intention of commercial gain-in the Respondent's own admission, to begin a business. Hence the Respondent has not proven that it is "making a legitimate noncommercial fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue", within the terms of ICANN Policy 4c(ii).
It is also noted that there is a common practice of making payments to a website domain hosting a link or advertisement of a business. The payment is often made on the basis of the number of "clicks" a viewer makes on the link or advertisement which then transfers the viewer to the advertiser's website. Given this common practice, it is likely the Respondent is receiving such payments for links to the websites of advertisers who are competitors of the Complainant. These links are hosted on the disputed domain name website, and the prominence given to the number of "hits" on the domain name website in the description of the domain name offered for sale by auction on May 15, 2001, reinforces the view that the Respondent is likely to already be making commercial gain from the disputed domain name. In any event, it is clear that the Respondent has an intention to make commercial gain from the domain name website and with that intention is using it to divert actual or potential customers of the Complainant to competitors of the Complainant.
The Respondent also contends that it has rights in respect of the domain name arising out of registration of a fictitious business name in the County of San Diego, California. It is noted that Respondent registered the business name on May 19, 2001, only four days after the disagreement with the Complainant over the purchase price of the domain name. The registration of a fictitious business name gives rise to a rebuttable presumption of exclusive right to use the name but the presumption only arises if the registrant actually uses the name to do business. Even after the Respondent was given a further opportunity to provide such evidence by Procedural Order No. 1, there was no evidence provided of use of the domain name to do business, unless it could be said that (a) the placing of the domain name for sale on an internet auction site on May 16, 2001, and/or (b) the placing on the domain name website of links to lenders on May 11, 2001, were uses of the business name to do business. In the Respondent's submissions there is no clear evidence of use of the business name in order to do business, only assertions of preparations to use the name to do business at some indeterminate time in the future. Even if it was assumed the registered business name had actually been used to do business, the registration of a fictitious business name "creates only a rebuttable presumption of an exclusive right to use by the registrant [See, for example, California Business and Professions Code Sec. 14411; Accuride Intern. Inc. v. Accuride Corp. (C.A. 9, 1989) 871 F.2d 1531, 10 U.S.P.Q. 2d 1589]--and see Hankison International vs. Hankisoninternational.com, ICANN/NAF Decision FA0004000094393. In this proceeding the Complainant's registered trademark, being registered and used in respect of the same channel of commerce, overcomes any such presumption of use by the Respondent.
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Respondent has been a client of the Complainant since 1994 but obviously is not at all happy with the arrangement. To vent its unfavorable opinions about the Complainant, the Respondent registered the confusingly similar domain name in dispute and began criticizing and satirizing the Complainant at the website.
At the same time, as the Respondent explicitly states, it wanted to begin a business and offer financing information at the website, which is one of the services the Complainant offers (Response pp. 4-5). ICANN Policy paragraph 4b(iv) provides that if the circumstances set out therein are found to be present then this "shall be evidence of the registration and use of a domain name in bad faith". The Respondent is using the domain name, and has intentionally attempted to attract internet users, as the Respondent admits, for commercial gain-to begin a business. Respondent has done so by creating a likelihood of confusion with the Complainant's mark "Aames Home Loan" as to source, sponsorship, affiliation or endorsement of the website. Even if it is clear once the internet user has reached the website, that the site is not associated in any way with the Complainant, the Respondent has nevertheless intentionally attempted to attract, for commercial gain, internet users to the website by creating the likelihood of such confusion. Further, although the Respondent may not yet have actually received any commercial gain, it has nevertheless intentionally attempted to attract, for commercial gain, internet users to the website by creating the likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. As these facts fall clearly within the terms of ICANN Policy para 4b(iv), the Panel concludes that the domain name has been registered and is being used in bad faith.
The Panel has found the Respondent registered a domain name, <aameshomeloans.com>, that is confusingly similar to the Complainant's service mark. The Panel has also found the Respondent has no fair use rights or any other legitimate rights or interests in the domain name. And finally, the Panel has found the Respondent registered and was using the domain name in bad faith.
Accordingly, per the Policy para. 4(i) and Rule 15, the Panel majority orders that the disputed domain name <aameshomeloans.com>, be transferred from the Respondent, Wavzbak, to the Complainant, Aames Capital Corporation.
Dennis A. Foster
Frederick M. Abbott
Dated: August 22, 2001
DISSENTING OPINION ON REMEDY
The only remedies available under Policy para 4(i) are either cancellation of the Respondent's domain name or transfer of the domain name registration to the Complainant. Cancellation of the Respondent's domain name would result in the name again becoming available to any entity which may be interested in registering the name as a domain name. Transfer to the Complainant would result in the name being available exclusively to the Complainant as a "dot com" domain name. Where the Panel is aware that other entities are likely to have a legitimate interest in the domain name the likely legitimate interests of those other entities should also be taken into account when considering the remedy to be granted in an administrative proceeding such as this one. Following an internet search for details of the registered business name of the Respondent, the Panel became aware that:
(i) the word "Aames", the distinguishing part of the Complainant's registered USA mark, is registered in the USA as the mark of a different USA company apparently unrelated to the Complainant;
(ii) there are at least two professional and public interest associations in the USA with the acronym "Aames";
(iii) there is at least one other entity in California, apparently unrelated to the Complainant or Respondent, called "Aames Home Loans" listed in the internet business yellow pages of Lycos; and
(iv) there is a company in Finland names "Aames" which offers financial services.
In some countries it is not uncommon for companies or associations, by arrangement with financial institutions or by themselves, to provide home loans to their officers, employees and/or members, and they would be likely to do so using the company or association name followed by the words "home loans." Given the above, it can be seen then that there are a number of entities around the world which are likely to have a legitimate interest in the domain name, a legitimate interest at least as strong as that of the Complainant.
Remedies available to the Complainant under the ICANN Policy are not designed to compensate or reward the Complainant. In the Report of the WIPO Internet Domain Name Process (WIPO April 30, 1999), the basis upon which the ICANN Policy was finalized, and with regard to which the Report's recommendations concerning remedies were accepted, at p. 47 it is stated: "183. For these reasons, it seems appropriate that the remedies that could be awarded…be limited to the status of the domain name registration itself and actions in respect of that registration. In other words, monetary damages to compensate for any loss or injury incurred by the owner of an intellectual property as a result of a domain name registration should not be available under the procedure. Such a restrictive approach to remedies would underline the nature of the procedure as an administrative one, directed at the efficient administration of the DNS, which is intended to be complementary to other existing mechanisms whether arbitration or court procedures." The cancellation, rather than transfer, of the Respondent's registration of the domain name will put an end to the illegitimate use of the domain name and at the same time will allow all entities, including the Complainant, likely to have an interest in the domain name an equal opportunity to obtain registration of the domain name. Such a remedy in this proceeding would be directed at the most efficient administration of the Domain Name System and would be complementary to other existing mechanisms available to the Complainant such as arbitration or court procedures.
There must be some circumstances in which cancellation rather than transfer of the disputed domain name is envisaged by ICANN Policy. It will be remembered that successful complainants must necessarily (pursuant to Policy para 4a(i) have rights in a trademark or service mark the same as, or confusingly similar to, the disputed domain name. If it was envisaged that all successful complainants would always have the disputed domain name transferred to them because they had rights in a mark, there would be no need for the alternative remedy of cancellation of the domain name. Proceedings concerning marks that are famous and well known across a large part of the world, and marks where the Panel is unaware of other entities being likely to have legitimate interests in the domain name would be proceedings where transfer rather than cancellation would be an appropriate remedy. However, where the Panel is aware that entities other than the Complainant are likely to have an equally legitimate interest in the domain name, it is appropriate to place any such entity in the same position as the Complainant. In this way the domain name returns to its original status before registration by the Respondent. Since the ICANN Policy does not purport to compensate or reward a Complainant it should not become de facto, through a decision to transfer, a form of compensation for the past illicit use of the domain name by the Respondent.
It is recognized that there might be a "scramble" for the domain name once it is cancelled. This occurs (or occurred) when any attractive domain name becomes (or became) available because of, for example, some notorious event which makes the name famous or a lapse in registration. A Panel decision to cancel a domain name may, in the same way, lead to a similar "scramble" but this should not be considered as being any different to the examples given or to what may have occurred when the domain name was originally made available. Where it is clear entities other than the complainant are likely to have legitimate interests in the domain name, cancellation rather than transfer has the advantage of not affecting the rights of any such entity. It is also recognized that there is always the possibility that the Respondent will be able to register the disputed domain name again. ICANN Policy is directed at regulation of the use made of a domain name and not the power to register de novo a domain name. It is the illegitimate use of the domain name which is the primary concern of ICANN Policy and cancellation effectively prevents the illegitimate use. I note, however, that it is within the power of Registrars of domain names to prevent an unsuccessful Respondent from registering the same disputed domain name through contractual or other appropriate means.
For all the above reasons I would disagree only with the order made by my co-Panelists and in the circumstances of this proceeding, would order cancellation rather than transfer of the disputed domain name.
Frank R. Schoneveld