WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ameriquest Mortgage Company v. Phayze Inc.

Case No: D2002-0861

 

1. The Parties

The Complainant in this proceeding is Ameriquest Mortgage Company, ("Complainant") a Delaware Corporation, Orange, CA, United States of America.

Complainantís authorized representative in this proceeding is Ms. Karin E. Peterka, Esq., of Buchalter, Nemer, Fields & Younger, Los Angeles, CA, United States of America.

According to the registrarís whois data base, the Respondent is Phayze Inc. ("Respondent"). The address of the Respondent as contained in the domain name registration is 11, 13, Rue de líEscaut, Paris, France.

 

2. The Domain Name and Registrar

The Domain Name at issue is <ameriquestmortage.com> ("Domain Name")

The Domain Name is registered with I.D.R. Internet Domain Registry Limited (ĄRegistrar"), located in Israel.

 

3. Procedural History

A Complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("the Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on September 13, 2002, by e-mail and was received on Setember 16, 2002, in hardcopy.

The Acknowledgement of Receipt of Complaint was submitted to the Complainant and Respondent by the Center on September 13, 2002.

On September 13, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed with its Verification Response of September 14, 2002, that the disputed Domain Name was registered with I.D.R. Register, and that the Respondent, Phayze Inc., was the current registrant of the Domain Name. In his response the Registrar had not indicated, whether the Respondent had submitted in its registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Name. Therefore, the case manager asked the Registrar to confirm by e-mail on September 17, 2002. However, the Registrar did not confirm this point. Therefore, by e-mail of September 27, 2002, the Center asked the Complainantís representative to amend point "VIII Mutual Jurisdiction" of the Complaint and submit with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer the Domain Name that is subject to this Complaint, to the Jurisdiction at the location of the Domain Name whois holderís address. In accordance with that, the Complainant sent, by e-mail of September 27, 2002, an amendment to the Complaint stating that, under "VIII Mutual Jurisdiction" of the Complaint, the Complainant would submit, with respect to any challenges that may be made by the Respondent to the Jurisdiction of the Court in Paris, France, the location of the Respondent as Domain Name whois holderís address.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, a Notification of Complaint and Commencement of Administrative Proceeding including a copy of the Complaint was transmitted by the Center to the Respondent by means of e-mail on September 30, 2002. A hardcopy of the same with attachments was also forwarded by courier (DHL) on the same day. The courier was returned to the Center undelivered. The address the Respondent stated in the whois data base was incorrect and there were no other means to find out the actual postal address of the Respondent. The telephone number given in the whois database is incorrect; the Panelist tried the number for verification but a connection failed several times. Therefore, the Panelist finds that the Center has discharged its responsibility under Paragraph 2 (a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

Having received no Response from the Respondent within the time specified in the Notification of Complaint, the Center issued to the Respondent a Notification of Respondent Default on October 21, 2002.

Since Complainant requested a single-member panel and Respondent failed to submit a Response, the Center invited Dr. Andrea Jaeger-Lenz to serve on the Administrative Panel in this case on October 23, 2002. Having received a Statement of Acceptance and Declaration of Impartiality and Independence to serve as sole panelist on the same day, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date and set a decision date for November 7, 2002.

 

4. Factual Background

The following facts and statements appear from the Complaint and its annexed documents which have not been contested by Respondent:

Complainant is a sub prime lender of mortgage loans in the United States and claims to be known for its mortgage banking, lending and brokerage services in the United States. It is undisputed that, since January 1995, the Complainant has continuously and substantially used his "Ameriquest Mortgage" mark in connection with its services.

Copies of the following trademark registrations have been submitted with the Complaint, all in Annex 3:

- U.S. trademark registration No. 2,224,856 "Ameriquest Mortgage Corporation" (word);

- U.S. trademark registration No. 2,551,713 "Ameriquest" (word);

- U.S. trademark registration No. 2,551,714 "Ameriquest Mortgage Company" (word);

- U.S. trademark application No. 76/312,371 "Ameriquest Mortgage" (word);

- U.S. trademark application No. 75/909,44 "Ameriquest Mortgage Company" (device).

The above mentioned registrations and applications have priority dates ranging from 1995 to 2000.

The Complainant claims undisputedly that it owns more than 185 retail stores in the United States and currently sales and offers its services in the United States at its stores, via mail order, via telephone order, via the Internet, via a telephone number listed on its Internet website, via radio and television, and also sells its loans through third party brokers.

Since December 10, 1998, the Complainant maintains an active internet website under the registered domain name <ameriquestmortgage.com> and in addition uses the domain names <ameriquest.net>, <ameriquestmortagehomeequityloan.com> and <ameriquestloans.com>. The Complainant uses its website to publicize and provide information about its services to consumers and to provide a means for customers to order and purchase its services listed on the website.

Furthermore, the Complainant claims undisputedly, that from January 1995, to the present, the Complainantís total revenues generated from the sales of its services used in connection with the "Ameriquest" marks in the United States was in excess of 1 billion US-Dollars.

The disputed Domain Name <ameriquestmortage.com> was registered on April 22, 2002. When typing the Domain Name into the address field of an internet browser, the user is redirected automatically to an adult entertainment website under the Domain Name "www.hanky-panky-college.com". A copy of the homepage of this website is annexed to the Complaint as Annex 6. The homepage specifically states "warning: adults only Ö. this website contains sexually oriented adult content which may include visual images and verbal descriptions of nude adults, adults engaging in sexual acts, and other audio and visual material of sexually explicit nature." This was, according to the Panelistís verification of these effects, still the case at the time this decision was drafted.

On June 7, 2002, the Complainant sent, by his authorized representative in this proceeding, a cease and desist letter to the Respondent by e-mail and by international mail at the e-mail address and address listed in the Whois data base for the Respondent. As Complainant did not receive any response to this letter by June 25, 2002, Complainant sent a follow-up e-mail and letter to the Respondent on June 26, 2002. All correspondence demanded that Respondent cease and desist from using the disputed Domain Name and transfer it to the Complainant. Copies of this correspondence are attached to the Complaint as Annexes 7 and 8. The Complainant states uncontestedly, that it did not receive any response from Respondent to these communications.

 

5. Partiesí Contentions

A. Complainant

In accordance with Paragraph 4 (b)(i) of the Policy, Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to Complainant.

Complainant contends that:

(i) The domain name is similar to Complainantís trade name and trademarks containing "Ameriquest Mortgage".

Complainant points out that the trade name and trademarks "Ameriquest Mortgage" are well known in the United States and are distinctive and widely recognized by consumers as being associated with the Complainant quality mortgage banking, lending and brokerage services. Complainant further points out that the contested domain name is substantially identical in appearance, sound, and commercial impression to the trade name and trademarks of the Complainant and is confusingly similar to them. The Complainantís cited registered trademarks and common law trademarks all contain the term "Ameriquest" and/or "Mortgage". The Complainant further points out that the element ".com" should be ignored for the purpose of assessing similarity. Finally, the Complainant contends that the Respondent has intentionally misspelled the term "Mortgage" as "Mortage" and is engaged in "typosquatting", the practice of intentionally registering a domain name that is identical to a trademark or service mark but for a simple typographical error, in this case the absence of the first "g" in "Mortgage".

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant asserts that the Respondent is neither an employee nor a subsidiary of the Complainant and is not affiliated with the Complainant in any way. The Complainant further asserts that the Respondent does not have a license or other authorization from the Complainant to use its marks and that, to the best of the Complainantís knowledge, there is no evidence that the Respondent or any business operated by the Respondent has ever commonly known by the disputed Domain Name.

(iii) The Domain Name was registered and is being used in bad faith

The Complainant asserts that the Respondent has registered the disputed Domain Name in bad faith because Respondent has misspelled the term "Mortgage" by deleting the first "g" so that it is misspelled as "Mortage". It contends that this is held to be bad faith typosquatting and held by various decisions of Panels of the Center as being a variation of a bad faith domain name registration as defined under Paragraph 4 (b)(i) to (iv) of the Policy. Additionally, the Complainant contends that the absence of information in the application for registration suggests a desire on the part of the Respondent to create a covert position and that the Respondent registered the disputed Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name. The Complainant asserts, that the Respondent has also used the disputed Domain Name in bad faith. It contends that registering a domain name with the intent of using it to divert legitimate users to an adult entertainment or pornographic website is evidence of bad faith registration and use under the Policy according to a number of decisions of the Center.

A: Respondent

The Respondent did not file a Response. Thus, Complainantís allegations are deemed to be uncontested.

 

6. Discussion and Findings

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."

Identical or Confusingly Similar Domain Name: Policy 4 (a)(i)

"Ameriquest Mortgage" is the distinctive part of the company name and common law trademark of the Complainant. Furthermore, the Complainant owns registered U.S.-trademarks and U.S.-trademark applications consisting of the words "Ameriquest" followed by "Mortgage". Additionally, the Complainant has been using the domain name <ameriquestmortgage.com> actively in commerce, which may be deemed to be a common law trademark acquired through use. All of the above constitute trademarks or service marks in which the Complainant has rights. The Domain Name registered by the Respondent is with the exception of one letter (one missing "g") identical in particular to the Complainantís U.S.-trademark application No. 76/312,371 "Ameriquest Mortgage" and the Complainantís used domain name <ameriquestmortgage.com>. Furthermore, the Domain Name is confusingly similar to the Complainantís company name and its registered trademark No. 2,224,856 "Ameriquest Mortgage Corporation", No. 2,551,713 "Ameriquest" and No. 2,551,714 "Ameriquest Mortgage Company". The missing "g" is a variation of the Complainantís trademarks that may not be noticed by members of the public upon first or even second glance and at the same time a possible typographical error that the Internet user who wishes to reach the Complainant through the Internet would make in typing the name of the Complainant "Ameriquest Mortgage" together with the common domain suffix ".com" into the address field of the internet browser. (See also Google, Inc. versus Namerental.com and Leonard Bensonoff, WIPO Case No. D2001-0060. Also in this case, in particular in view of the comparative length of the trademarks of the Complainant in relation to the disputed Domain Name, which in itself bears the risks of misspellings, confusion is inevitable.

Accordingly, the Panelist holds that the Complainant has established element (i) of the Policy, Paragraph 4 (a).

Respondentís rights or legitimate interests in the Domain Name: Policy 4 (a) (ii)

It should be recalled here that, according to Paragraph 4 (c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

"(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 non-commercial 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 this case, the application and use of the Complainantís trademarks and service marks as well as domain name as common law trademark, clearly predates the registration of the Domain Name by the Respondent. Besides that, the Complainant has asserted that the Respondent is neither an employee, or subsidiary or affiliated with the Complainant, nor has a license or other authorization from the Complainant. It is sufficient for the Complainant to establish prima facie evidence, that the Respondent lacks any legitimate interest (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, Paragraph 6.11; Lycos Europe N.V. v. RegionCo, WIPO Case No. D2000-1102, Paragraph 6b; Eckes-Granini GmbH & Co. KG v. Weidner A.G., WIPO Case No. D2000-1116, Paragraph 6). Therefore, it is the onus of the Respondent to prove that its registration of the Domain Name was legitimate. The Respondent has not provided any evidence of legitimate rights or interest in the above elements according to Paragraphs (i) to (iii) of the Policy, and there are no other circumstances apparent that would reflect any rights or legitimate interests of the Respondent in the disputed Domain Name.

In the absence of any indication or evidence as to a legitimate interest of the Respondent to use the Domain Name, the Panelist finds that the Complainant has established, that the Respondent has no rights or legitimate interests under Paragraph 4 (a) (ii) of the Policy.

Domain Name registered and used in bad faith: Policy 4 (a) (ii)

The third element to be established by Complainant is that the Domain Name has been registered and is being used in bad faith.

Paragraph 4 (b) states the following four circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:

"(i) Circumstances indicating that you [Respondent] have registered or you[Respondent] 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 the Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

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

(iii) You [Respondent] have registered the domain name primarily for the purpose of disrupting the business of competitor; or

(iv) by using the domain name you [Respondent] have intentionally attempted to attract, for commercial gain, internet users to your website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your web-site or your location."

This list of factors constituting bad faith under the Policy is illustrative, not exhaustive. Other evidence bearing on bad faith is also to be considered (see Mary-Lynn Mondich and American Vintage Wine Biskuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques, WIPO Case No. D2000-0004, Dr. Inc. H.C.F. Porsche AG v. Gary Charles Brown, A K A Gary Brown, A K A Charlie Brown, A K A Gary Charlie Brown, WIPO Case No. D2001-0919, Paragraph 6).

In the present case, bad faith has been established. The particular circumstances of this case which lead to this conclusion are:

The Respondent has obviously actively provided, and failed to correct, false contact details, in breach of its registration agreement. If the Respondent really had an establishment or office under the address in France as indicated, the telephone number corresponding to this address would be starting with a "+33" and in particular "+33-1-" since +33 is the country code for France, and +33-1 is the country city code for Paris, France. However, the telephone number the Respondent stated in his contact details starts with a "+42", which in combination with a 0 or a 1 (i.e. as +42-0 or +42-1) would be a telephone connection in the Czech or Slovak Republic. However, the country code "+42" as such does not exist anymore to the knowledge of the panelist. Providing false contact details may be considered as an element of bad faith (see Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Paragraph 7.12; Bayrische Motorenwerke AG (BMW) v. MC Company, WIPO Case No. D2000-1694, Paragraph 6 c); Dr. Inc. H.C.F. Porsche AG v. Michel Galarneau, WIPO Case No. D2001-1448, Paragraph 6). In addition to the telephone number, also the postal address provided by the Respondent was obviously incorrect, since the Complaint could not be delivered in hardcopy to this address.

Besides that, even though the trademarks of the Complainant as well as the Domain Name in dispute includes a generic element (the word "mortgage") which is a description of a certain type of financial services, the other element of the trademarks of the Complainant and the Domain Name in dispute, "Ameriquest" is clearly a fantasy name. This, in connection with the fact that the Respondent does not even use the website reachable under the Domain Name for any type of mortgage services, makes it inconceivable that the Respondent has not known about the Complainantís name and trademark prior to its registration of the Domain Name. Therefore, common sense leads to the conclusion that the Respondent has, in knowledge of the Complainantís name and trademark, intentionally misspelled the term "mortgage" as "mortage" in registering the Domain Name. This is a typical case of "typosquatting". This panel agrees with the view expressed by numerous other panels in other WIPO decisions (e.g. Yahoo! Inc. and Geocities v. Data Art Corporation, Data Art Enterprises, Inc., Stony Broke Investments, Global Net 2000, Inc., Power Click, Inc. and Yahoo Search, Inc. Ė WIPO Case No. D2000-0587; Playboy Enterprises International Inc. v. SAND WebNames Ė For Sale Ė WIPO Case No. D2001-0094; Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl Ė WIPO Case No. D2001-0079). By the practice of typosquatting, the Respondent is trading on the value established by Complainant in its marks to attract users who misspell or mistype Complainantís mark when entering the URL, which includes the Complainantís trademarks. Clearly, the Respondent is deriving economic benefit from this practice, either by attracting users to the Respondentís website "hanky-panky-college.com" which they may for other reasons than misspelling never look for or enter. Thus, the Respondent is attracting traffic that he would otherwise not get for his website. This constitutes bad faith registration and use as defined in particular by Paragraph 4 (b) (iv) of the Policy. While users who arrive at the site may promptly conclude that it is not the site they were originally looking for, Respondent has already succeeded in its purpose of using the Complainantís mark to attract the user with a view to commercial gain (see National Football League Properties Inc. and Chargers Football Company versus One Sex Entertainment Company, A/K/A Charger Girls Net, WIPO Case No. D2000-0118).

Finally, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the Domain Name.

In an overall assessment of the contentions and of the facts mentioned above, the Panelist concludes that the requirements of Paragraph 4 (a) (iii) of the Policy have been established to the conviction of the Panelist.

 

7. Decision

In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is confusingly similar to the registered trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondentís Domain Name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panelist requires that the disputed Domain Name <ameriquestmortage.com> be transferred to the Complainant.

 


 

Dr. Andrea Jaeger-Lenz
Sole Panelist

Dated: November 7, 2002