WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ameriquest Mortgage Co. v. Jason Banks

Case No. D2003-0293

 

1. The Parties

Complainant is Ameriquest Mortgage Company, Orange, California ("Ameriquest" or "Complainant").

Respondent is Jason Banks, Florida ("Banks" or "Respondent").

 

2. Domain Name and Registrar

The domain name at issue is: <wwwameriquestmortgage.com> (the "domain name").

The registrar is Go Daddy Software, Inc., (the "Registrar").

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint by e-mail on April 15, 2003, and in hard copy on April 17, 2003. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Complainant made the required payment to the Center.

On April 16, 2003, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On April 16, 2003, the Registrar transmitted via e-mail to the Center its response, confirming (inter alia) that (1) a copy of the Complaint was sent to it by Complainant as required by Supplemental Rule 4(b); (2) the domain name was registered through it; (3) Respondent is the current registrant of the domain name; (4) the Administrative, Technical and Billing Contacts for the domain name are Respondent; (5) the Policy applies to the domain name; and (6) the domain name will remain locked during this administrative proceeding.

On April 24, 2003, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via e-mail with copy by courier (FedEx) to Respondent and to the Registrar. The Center advised that Respondentís Response was due by May 14, 2003, pointed out that the Response should be in accordance with the Rules and the Supplemental Rules, and described the consequences of a default if the Response was not sent by the due date. The Center also noted that Complainant had elected for a single Panelist to decide this matter.

The requirements of Rule 2(a) having been satisfied, the formal date of the commencement of this administrative proceeding, pursuant to Rule 4(c), is April 24, 2003. [1]

No Response was received from Respondent by the May 14, 2003 deadline. On May 16, 2003, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default. The Center advised Respondent that (a) Respondent had failed to comply with the deadline for submission of its Response and (b) the consequences of default, including (1) that a single Panelist would be appointed (per the Complainantís request); (2) that the Panel would be informed of Respondentís default and would decide, in its sole discretion, whether to consider a Response if submitted later; and (3) notwithstanding the default, the Center would continue to send all case-related materials to Respondent.

No Response conforming to the Rules was received from Respondent, either by the May 14, 2003 deadline or at any other time.

On May 23, 2003, the Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case. Pursuant to Rule 15(b), the Center further informed the parties that, absent exceptional circumstances, the Panel would forward a decision to the Center by June 6, 2003.

On May 23, 2003, the Center transmitted the case file to the Panel.

 

4. Factual Background; Partiesí Contentions

a. The Trademark

The Complaint is based on Complainantís alleged ownership of rights in marks either identical or confusingly similar to the domain name, including the marks AMERIQUEST and AMERIQUEST MORTGAGE, which Complainant claims to have used for mortgage banking, lending, and brokerage services since at least January 1995.

Complainant owns several United States federal registrations for such marks. Complainant provided the Panel with registration certificates for several of these marks, including U.S. Trademark Registration No. 2,620,964.

U.S. Reg. No. 2,620,964 is for the word mark AMERIQUEST MORTGAGE in block letters. A block-letter registration is the broadest claim to a word mark, in that it is "not Ö restricted to any particular form or type." Exxon Corp. v. National Foodline Corp., 579 F.2d 1244, 1247 (C.C.P.A. 1978). This registration issued in 2002 for a list of services including mortgage banking services, and claims a date of first use in 1995.

b. Jurisdictional Basis

The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. The Registrarís registration agreement incorporates the Policy by reference.

On Page 6 of its Complaint, Complainant avers that each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.

c. The Complaint

Complainant asserts as follows:

- That Complainant owns the marks AMERIQUEST and AMERIQUEST MORTGAGE, as well as other related marks, and possesses numerous federal trademark registrations for these marks.

- That Complainant owns the registrations for numerous websites incorporating the mark AMERIQUEST, including <ameriquestmortgage.com>.

- That Complainant has invested heavily in advertising and promotion of its marks, and that the marks have become famous.

- That Respondent registered the domain name on February 8, 2003, and caused it to resolve to a page on Complainantís own website which includes a request for a loan online.

- That Complainantís counsel twice mailed cease-and-desist letters to Respondent, but received no response.

- That the domain name is identical or confusingly similar to Complainantís trademark(s).

- That Respondent has no rights or legitimate interest in respect of the domain name because (1) Respondent is not affiliated with Complainant; and (2) Respondent has never been commonly known by the domain name.

- That Respondent registered and is using the domain name in bad faith.

d. The Response

As noted above, Respondent is in default pursuant to Rule 5(e), Rule 14 and Supplemental Rule 7(c) because no Response was received from Respondent by the applicable deadline.

Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for the Complainant. Rather, under Paragraph 4(a) of the Policy, it remains the Complainantís burden to establish that all three of the required criteria for a transfer of the domain name or other remedy have been met.

Under Rule 5(e) and Rule 14(a), the effect of a default by Respondent is that the Panel shall proceed to a decision on the Complaint. Under Rule 14(b), the Panel is empowered to draw such inferences from Respondentís default as it considers appropriate.

 

5. Discussion and Findings

a. Regulations Applicable to Consideration of the Merits

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response (or lack thereof), the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a). In the Panelís view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the domain name, each of the following:

(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondentís rights or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii).

b. Effect of the Default

In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the domain name, such as use or preparation to use the domain name prior to notice of the dispute, being commonly known by the domain name, or making legitimate noncommercial or fair use of the domain name.

c. Complainantís Proof

(i) Domain Name Identical or Confusingly Similar to Trademark

Complainant has proven that it is the owner of trademark rights in the marks AMERIQUEST and AMERIQUEST MORTGAGE. Complainantís registrations of its marks on the Principal Register of the USPTO establish a presumption of validity of the marks under United States law. See 15 U.S.C. ß 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations constitute constructive notice to all other parties of Complainantís ownership of the marks. See 15 U.S.C. ß 1072.

In comparing Complainantís marks to the domain name, it is well established that the generic top-level domain, in this case ".com," must be excluded from consideration as being a generic or functional component of the domain name. See Sportyís Farm v. Sportsmanís Market, 202 F.3d 489, 498, (2d Cir. 2000). The same is true of the prefix "www." See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 13, 2000), (<wwwreuters.com> held confusingly similar to mark REUTERS).

The remaining term, ameriquestmortgage, is identical to Complainantís registered trademark AMERIQUEST MORTGAGE.

(ii) Whether Respondent Has Rights or Legitimate Interest in the domain name

There is no evidence in the record that Respondent has any legitimate interest in the domain name. Complainant states in the Complaint that Respondent has no rights or legitimate interest in the domain name. This contention is unrebutted, and the Panel finds it credible. The federal registration of Complainantís AMERIQUEST MORTGAGE mark, coupled with the fact that the domain name is identical (excluding the prefix and suffix) to this mark, and Respondentís failure to advance any of the defenses provided in Paragraph 4(c) of the Policy, lead this Panel to conclude that Respondent has no rights or legitimate interest in the domain name.

(iii) Registration and Use in Bad Faith

Complainantís third hurdle is to establish that Respondent has registered and used the domain name in bad faith.

Numerous UDRP cases have held that "typosquatting," or registering a domain name that differs only by a common or likely typographical error from a Complainantís trademark, for Respondentís business advantage (or to Complainantís disadvantage), can constitute "bad faith" under paragraph 4(b) of the Policy. A common such typographical variation is the addition of "www" to the beginning of the mark, so that Internet users who type the initials "www" followed by the mark, but who fail to type a dot in between, will access the Respondentís domain name. Numerous panels have found bad faith in such cases. See, e.g., Reuters, supra; Microsoft v. Stoneybrook, WIPO Case No. D2000-1274 (November 28, 2000), (finding bad faith in registration of <wwwmicrosoft.com>); Royal Bank of Canada v. Personal, WIPO Case No. D2001-0761 (July 24, 2001), (<wwwroyalbank.com>); Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205 (April 6, 2001) (<wwwbayer.com>).

In this case as well, the domain name differs from Complainantís domain name only by the common typographical error whereby the user fails to include a dot after the "www" designator and before the remaining portion of the name. Unlike the above-cited cases, however, it is somewhat more difficult to see wherein lies the commercial benefit to Respondent (or harm to Complainant), since the domain name directs users to a portion of Complainantís own website.

Although this is therefore a closer case than those cited above, the Panel nonetheless finds bad faith registration and use of the domain name here as well. According to Complainantís unrebutted assertion, supported by evidence at Annex 6 to the Complaint, Respondent caused the domain name to resolve to a selected portion of Complainantís website pertaining to online loans. This prevented Complainant from choosing whether to have the domain name resolve to that particular portion of the site, or indeed to that particular site at all. While Respondent may not have obtained any commercial advantage or inflicted any readily measurable harm, it has nonetheless interfered with Complainantís use of its own federally registered trademark in its own advertising strategy, and deprived the Complainant of the ability to control how its trademark (or confusingly similar variants) are being used.

Respondentís choice to cause the domain name to resolve to a portion of Complainantís own website is admittedly an unusual fact pattern. It is not without precedent, however, and at least one prior panel concluded that such conduct constitutes bad faith. That panel reasoned as follows:

In the absence of any denial, it is hard to find any legitimate basis for registering and using the domain name, as the Respondent has. The Complainant contends that redirection of visitors from <altavistasoftware.com> to the Complainantís website is deceptive and clearly intended to build a mistaken link in the mind of those who type "altavistasoftware" into their web browsers between the URL "www.altavistasoftware.com" and the Complainantís URL. This redirection seems to be a seamless one and it is hard to see how the Respondent presently benefits from the situation. It is contended by the Complainant that such redirection will allow the Respondent to divert future users to competing websites after having built up mistaken confidence in the source of the content at "www.altavistasoftware.com" on the part of consumers.

"There is some merit in this contention. In the absence of explanation in this case, it is found that an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark, name or indicia and provider of the services. Generally, such an owner of rights should be able to control how such trademarks, names and indicia are used in the course of trade and when so used to control who is directed to its website and by whom.

As noted above, the domain name is now being used to attract hits, even though rather unusually users are immediately redirected to the Complainantís own website. It is hard to see what purpose the registration and use of the domain name might have other than to function as an instrument of commerce. That is, to attract hits and presumably ultimately business, as a result. The suggestion that such redirection will allow the Respondent to divert future users to competing websites after having built up mistaken confidence in the source of the content is a reasonable one. Absent any other explanation, the Panel is prepared to infer it is a likely objective, even if not necessarily the only one.

The Respondent may have wished to argue that its registration and use was not in bad faith. However, having chosen not to avail itself of its right to do so, the Panel has to base its finding on the evidence and submissions as they stand..

Altavista Co. v. Brunosousa, WIPO Case No. D2002-0109 (April 3, 2002), (emphasis added).

Similarly, in this case, the Panel concludes that it is bad faith for Respondent to register and utilize a domain name that incorporates Complainantís trademarks to re-direct Internet traffic, even if to a portion of Complainantís own website. This registration and use interferes with Complainantís ability to control the use of its own trademarks on the Internet, including choosing whether and how domain names incorporating those trademarks resolve to particular web pages, and raises the specter that Respondent could at some future time cause the domain name to resolve to Respondentís own website or to a competing website. It also creates a risk that Respondent could collect and use data about Internet users intending to access Complainantís website.

The Panel also finds instructive prior panel decisions holding that registration of a domain name confusingly similar to a Complainantís trademark, followed by inaction (i.e., failure to make any use of the domain name) can constitute bad faith. E.g., Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), (registration together with "inaction" can constitute bad faith). There is a parallel between such "passive holding" cases and this case, in which Respondent is not using the domain name for any business or non-business use of its own (the sole "use" being one created by Complainant). Registrants who have no use of their own for a domain name stand in a position similar to other passive users of domain names containing famous or highly distinctive marks, as to which, in appropriate cases, bad faith may be found.

In sum, the Panel concludes that Respondent has registered and used the domain name in bad faith.

 

6. Decision

In light of the findings and analysis by the Panel, the Panel decides that Complainant has met its burden of proving: (1) the domain name is confusingly similar to Complainantís trademark(s) and/or service mark(s); (2) Respondent has no rights and no legitimate interest in respect of the domain name; and (3) the domain name has been registered and is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that the domain name be transferred to Complainant.

 


 

Michael A. Albert
Sole Panelist

Dated: June 6, 2003

 


Footnote

1. On April 29, 2003, Respondent sent an e-mail message to the Center contending that he had not yet received a copy of the "formal Complaint." Apparently, although Respondent received an electronic copy of the Complaint by e-mail, he did not receive the hard copy sent to him by courier because the address that he provided to the Registrar (see ∂ 1, supra), and upon which the Center relied, was incorrect. Domain name registrants are responsible for providing their correct contact information to the Registrar. The Panel finds that the Center fully complied with the requirements of Paragraph 2(a) of the Rules when it transmitted the Complaint to Respondent in electronic form by e-mail (which the Respondent received) and in hard copy by courier to the mailing address provided by Respondent to the Registrar. The Center informed Respondent of this by e-mail on May 1, 2003. Respondent did not respond, and declined to provide an accurate mailing address for himself. Although there is some indication that Respondent provided false contact information to the Registrar, the Panel need not and does not rely on an inference that this was done in bad faith. Cf. World Wrestling Federation Entertainment, Inc. v. Bessette, Case No. D2000-0256 (WIPO June 7, 2000), ("The Panel further finds that Respondent acted in bad faith by providing clearly fictitious address information to NSI.")