WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc.
Case No. D2004-0395
1. The Parties
The Complainant is Capstone Mortgage Co., of Lexington, Massachusetts, United States of America, represented by Foley Hoag LLP, United States of America.
The Respondent is Joshua Shook and/or J. Shook, Inc., of Tuscon, Arizona, United States of America.
2. The Domain Names and Registrars
The disputed domain names are <capstone-mortgage.net> and <capstonemortgage.info>, registered with Gestion et Attribution des Noms de Domaine sur Internet (Gandi SARL) and InterCosmos Media Group d/b/a DirectNic.com, respectively.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) in hard copy on May 28, 2004. The Center acknowledged receipt of the Complaint by email to Complainant on May 28, 2004, and reminded Complainant of its obligation under Paragraph 3(b) of the Rules to submit an electronic copy of the Complaint. An electronic copy of the Complaint was received by the Center on June 4, 2004.
Requests for Registrar Verification were sent by the Center to Gandi SARL and DirectNic.com on May 28, 2004. Responses were received back from both registrars that same day wherein each acknowledged being the registrar of one of the disputed domain names, confirmed that the Policy was in effect in respect to that domain name, and provided full contact details of the domain name registrant and of the administrative, billing and technical contacts.
The Center reviewed the Complaint to verify compliance with the ICANN Uniform Dispute Resolution Policy (“Policy”), the Rules for UDRP (the “Rules”) and the WIPO Supplemental Rules for UDRP (“Supplemental Rules”), and concluded, on June 7, 2004, that the Complaint was compliant and the applicable fee had been paid.
The Center notified the Respondent of the commencement of this proceeding pursuant the Policy, the Rules, and the Center’s Supplemental Rules, in accordance with Paragraph 2(a) of the Rules, by email on June 7, 2004, and by hardcopy sent June 7, 2004, and delivered June 9, 2004. The notification advised Respondent that the deadline for submission of a Response to the Complaint had been set as June 27, 2004. A copy of the Complaint accompanied the notification.
No response from Respondent was received by the Center. On June 28, 2004, the Center sent Respondent, by email, a Notification of Respondent Default notifying Respondent that he had failed to comply with the applicable deadline, that the Center would proceed to appoint an Administrative Panel to render a decision, and that the Administrative Panel would have the discretion to consider or not any untimely response Respondent might determine to submit.
On July 2, 2004, the Center notified the Parties that an Administrative Panel composed of a single member, Seth M. Reiss, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. The Panel is required to forward its decision to the Center, in accordance with Paragraph 15 of the Rules, by July 16, 2004.
The Panel has examined the communications of the Center and the Complainant, and the Complaint. The Panel confirms that each complies with the formal requirements of the Policy, the Rules and the Center’s Supplemental Rules.
The Panel notes that each communication sent to Respondent by email, whether by Complainant or the Center, was returned as undeliverable by the email hosting service together with the comment that no such email address exists. The email address used in each case was the email address listed for Respondent in the WHOIS database of each registrar as well as the address supplied by the registrars in response to the Center’s Request for Verification. Complainant reported that its attempt to deliver a hardcopy of the Complaint to Respondent at the postal-mail address listed for Respondent with the registrars was refused. There is no similar evidence that the Center’s attempt to deliver the Notification of Complaint and Commencement of Administrative Proceeding to the same postal-mail address was unsuccessful. The contact information for Respondent contained in the WHOIS databases of the two applicable registrars, including Respondent’s postal-mail and electronic mail addresses, is identical. No facsimile number for Respondent is listed in the WHOIS databases or was otherwise available from the registrars.
The Panel is satisfied that the Center fully complied with Paragraph 2(a) of the Rules in attempting to communicate the Complaint and applicable response deadline to Respondent, and with Paragraph 2(b) of the Rules in attempting to communicate the notification of default and appointment of the panel to Respondent.
The Panel further confirms that the Administrative Panel was properly constituted.
The language of the proceeding is English.
4. Factual Background
Complainant is a mortgage broker licensed to do business in the states of Massachusetts and New Hampshire providing customer-oriented mortgage services. Complainant was incorporated in 1996 and claims to have been doing business under the “Capstone Mortgage” name continually since then.
Complainant is the registered owner of the Internet domain “www.capstonemortgage.com”, registered in May 1997, and maintains a website at that address to promote its mortgage services. Complainant uses the Capstone Mortgage name, mark and related Internet domain name in connection with its business as a mortgage broker.
Complainant claims to have invested significant time, money, and effort developing and promoting the CAPSTONE MORTGAGE mark and the mortgage brokerage business associated therewith through the mark’s continuous use in connection with services, as the company name, on the corporate letterhead and website at “www.capstonemortgage.com”, in promotional materials, quarterly newsletters, business cards, and on other documents that Complainant uses in the course of its mortgage brokerage business. Examples of Complainant’s letterhead, business cards, and quarterly newsletter are annexed to the Complaint.
As a result of its longstanding and continuous use of the CAPSTONE MORTGAGE name and mark, and Complainant’s investment of time, money and promotional effort, Complainant submits that the mark CAPSTONE MORTGAGE has become associated with Complainant and its services. Complainant describes its business as highly successful, doubling each year since its inception in 1996. In 2003, Complainant states it closed $450,000,000 in mortgages.
The only facts available concerning Respondent are those provided by Complainant in its Complaint and the Annexes thereto, and those made available by the two domain name registrars in response to the Center’s Requests for Registrar Verification.
Respondent appears to be an individual who sometimes does business as Joshua Shook and other times does business as J. Shook, Inc., and who maintains a postal-mail address in Tuscon, Arizona. Respondent is the current registrant for both disputed domain names, the one, <capstonemortgage.info>, currently administered by directNic.com showing a record creation date of April 12, 2004, and the other, <capstone-mortgage.net>, administered by Gandi SARL and showing a record creation date of April 27, 2004. Complainant alleges that it was Respondent that registered each and that each was first registered on the record creation dates shown in the registrars’ WHOIS databases.
Complainant further alleges that Respondent has used and continues to use the two disputed domain names to send potentially millions of spam email messages directing people to identical web pages maintained at each of the disputed domain names. Although variously phrased, each of the spam emails relates to a mortgage application that the recipient allegedly filed, or to other mortgage-related information. The web pages maintained at each of the disputed domain names invite the visitor to provide personal information that purportedly will be used to solicit mortgage quotes on the visitors’ behalf and that would permit the owner of the web page to act as a mortgage broker in a manner similar to Complainant. Annexed to the Complaint are printouts of examples of the deceptive spam email messages and the identical web pages associated with each disputed domain name.
As a direct result of Respondent’s activities, Complainant claims it has suffered immediate harm to its reputation and to the goodwill associated with its CAPSTONE MORTGAGE mark. This is evidenced, according to Complainant, by the numerous angry, threatening, profane, and abusive emails Complainant has received from the recipients of Respondent’s spam email messages, and by an invoice Complainant received from an Internet provider demanding payment for the removal of the spam messages. Annexed to the Complaint are representative samples of spam reports and email complaints received by the Complainant, as well as the ISP invoice for removal of spam messages. The nature and volume of email complaints received by Complainant caused Complainant to take down its own web page and replace it with a web page notifying visitors that Complainant has nothing to do with the spam emails and advising visitors to take action to protect their identities in the event they submitted information to Respondent’s websites. In addition to the harm to its reputation and goodwill as a result of spam the public believes Complainant is responsible for, Complainant also claims to have lost significant business as a result of having to take down its web page.
To bolster its argument that Respondent has acted in bad faith, Complainant provides evidence that, also in April 2004, Respondent appears to have registered the domain names <expeditemortgage.net> and <pinnaclemortgage.info>. These two domain names are substantially identical to the domain names <expeditemortgage.com> and <pinnaclemortgage.com> which, according to Complainant, are held by legitimate mortgage companies like Complainant. Annexed to the Complaint is evidence that the <expeditemortgage.net> and <pinnaclemortgage.info> domain names belonging to Respondent have been the subject of numerous spam messages in the same manner and to a similar extent as the disputed domain names have.
5. Parties’ Contentions
Complainant contends that it has developed common law rights in the mark CAPSTONE MORTGAGE through Complainant’s longstanding and continuous use of the mark in its name, its domain name and website, and through its investment of time, money and promotional efforts, that such rights are cognizable under the Policy, and that the disputed domain names <capstonemortgage.info> and <capstone-mortgage.net> are identical or confusingly similar to Complainant’s CAPSTONE MORTGAGE mark. Complainant next contends that Respondent lacks any right or legitimate interest in the disputed domain names by virtue of Complainant holding exclusive rights in the CAPSTONE MORTGAGE mark, because Respondent is neither Complainant’s agent nor licensee, and because the offer of services through the sending of unsolicited bulk email messages is not a bona fide offering under the Policy. Complainant further contends that Respondent registered and is using the domain names in bad faith as evidenced by the numerous spam messages referencing the disputed domain names, Respondent’s registration of other domain names referenced by spam messages which are substantially identical to the domain names of other legitimate mortgage brokers, and Respondent’s use of a non-existent email address on its domain name registration applications.
Complainant concludes by requesting, in accordance with Paragraph 4(i) of the Policy, that the Panel issue a decision that the domain names <capstonemortgage.info> and <capstone-mortgage.net> be transferred to Complainant.
As noted above, no response to Complainant’s allegations was received from Respondent in this proceeding.
6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain names; and
(iii) The disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar: Policy 4(a)(i)
Complainant has established that it holds rights in the mark CAPSTONE MORTGAGE for mortgage brokerage services, at least within the geographic areas of Massachusetts and New Hampshire. Under U.S. law, as under the laws of certain other countries, trademark and service mark rights can be established, without registration, by virtue of adoption and continuous and substantially exclusive use. 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, Chapter 16 (4th ed. 2004); Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133 (December 12, 2000). The Policy does not require a complainant to establish rights in a mark through registration. The Policy protects also against the bad faith registration and use of domain names that are identical or confusingly similar to marks acquired through use under common law. Adobe Systems Inc. v. Domain OZ, WIPO Case No. D2000-0057 (March 22, 2000). The evidence proffered by Complainant, of use of Capstone Mortgage in its company name, letterhead, business cards, “capstonemortgage.com” domain name, website, and other promotional material, continuously over a period of time, is sufficient to demonstrate that Complainant holds legally cognizable rights in the CAPSTONE MORTGAGE mark.
The disputed domain names, <capstonemortgage.info> and <capstone-mortgage.net>, are virtually identical to the mark in which Complainant holds rights. Incorporation of a trademark in its entirety is sufficient, in most cases, to establish that a domain name is identical or confusingly similar to a complainant’s mark. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case no. D2001-0505 (July 6, 2001). It is axiomatic that the addition of a top-level domain, such as “net” or “info”, to a trademark results in a domain name that is identical, for purposes of Paragraph 4(a)(i) of the Policy, to the trademark. Accor v. P.C. Communication Ltd., WIPO Case No. D2000-1580 (January 18, 2001). It is also well established among UDRP panels, as well as obvious, that the addition of a hyphen between two words that comprise a mark to form a domain name is insufficient to distinguish the domain name from the mark. Nintendo Of America Inc. v. This Domain Is For Sale, WIPO Case No. D2000-1197 (November 1, 2000).
While the term “mortgage” is generic for the services offered by both parties, the term “capstone” is substantially arbitrary as respects mortgage brokerage services. Considered in its entirety, CAPSTONE MORTGAGE is a relatively strong mark even when used in conjunction with mortgage services. Respondent purports to offer services in a geographic area that includes the geographic area in which Complainant does business under the CAPSTONE MORTGAGE mark. Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, WIPO Case No. D2000-1435 (December 11, 2000). That Complainant received hundreds of angry emails from the recipients of Respondent’s spam messages is compelling evidence of public confusion, if not deception. The Panel therefore finds that the domain names <capstonemortgage.info> and <capstone-mortgage.net> are identical or confusingly similar to the CAPSTONE MORTGAGE mark in which Complainant holds rights and that Complainant has established element (i) of the Policy’s Paragraph 4(a).
B. Rights or Legitimate Interests: Policy 4(a)(ii)
There is no evidence that Respondent is an authorized agent or licensee of the Complainant or of Complainant’s products or services, or that Respondent has other authority or permission to use Complainant’s CAPSTONE MORTGAGE mark in his domain names.
Complainant contends it has exclusive rights to use the phrase “Capstone Mortgage” in an Internet domain simply by virtue of the fact that Complainant has a trademark and domain name incorporating the CAPSTONE MORTGAGE mark. The Panel disagrees with this broad assertion.
Notwithstanding, once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that complainant has not authorized respondent to use the mark, the burden shifts to respondent to establish some right or legitimate interest in respect of the domain name. Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074 (November 28, 2000). By not submitting a response, Respondent has failed to invoke any circumstance that might demonstrate, pursuant to Paragraph 4(c) of the Policy, that he holds some right or legitimate interest in the disputed domain names. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323 (June 29, 2004).
The record demonstrates that Respondent appears to have engaged in the practice of sending unsolicited bulk emails, or spam, to promote identical commercially oriented websites residing at the two disputed domain names. This Panel agrees with those UDRP panels that have concluded that conducting commerce through the practice of spamming does not constitute a bona fide offering of goods and services for purposes of Paragraph 4(c)(i) of the Policy. NetCreations, Inc. v. Rob Martinson, NAF Case No. FA0208000118398 (October 30, 2002) ; XO Communications, Inc. v. XO Network Operations Center, Inc., NAF Case No. FA0303000150786 (April 28, 2003). The practice of sending unsolicited bulk email advertisements with false header and contact information is now illegal under the laws of several countries, including the United States. Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003 (CAN-SPAM Act). Illegal commercial activities are, by definition, not bona fide. Verio Inc. v. Sushinehh, WIPO Case No. D2003-0255 (June 24, 2003).
As the record is devoid of plausible evidence demonstrating a right or legitimate interest of Respondent in respect of the disputed domain names, the Panel finds that element (ii) of the Policy’s Paragraph 4(a) has also been established.
C. Registered and Used in Bad Faith: Policy 4(a)(iii)
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that Respondent both registered and is using the disputed domain names in bad faith. Paragraph 4(b) of the Policy iterates a non-exclusive list of circumstances that constitute evidence of bad faith registration and use. A complainant need only demonstrate the existence of one of these circumstances in order to meet its burden under the third element of the Policy. Complainant here has demonstrated two.
Complainant has put forth no evidence that Respondent registered the disputed domain names to sell, rent or otherwise transfer them to Complainant, or to a competitor of Complainant, for profit. Paragraph 4(b)(i) of the Policy. Nor is there evidence that Respondent registered the domain names at issue in order to prevent Complainant from reflecting its mark in a corresponding domain name. Paragraph 4(b)(ii) of the Policy.
However, Complainant has put forth evidence tending to establish that Respondent likely registered the <capstone-mortgage.net> and <capstonemortgage.info> domain names for the purpose of disrupting the business of a competitor, namely Respondent (Paragraph 4(b)(iii) of the Policy), and in order to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark (Paragraph 4(b)(iv) of the Policy). That evidence consists of Respondent having registered four domain names that are virtually identical to the domain names and marks of three established mortgage companies, that Respondent maintains commercial websites at these four domain names which Respondent uses to solicit customers and customer information for Respondent’s mortgage brokerage services, and that Respondent, or someone related to Respondent, has been sending deceptive bulk emails advertising the commercial websites that reside at these domain names. Other panels, having considered the practice of a domain name registrant sending unsolicited bulk emails to promote a website residing at a domain having a name confusingly similar to a competitor’s trademark, have concluded both that the domain name had been registered and was being used primarily for the purpose of disrupting the competitor’s business, including through tarnishment of the competitor’s trademark and consequent goodwill, and that the domain name had been registered to confuse consumers as to source, sponsorship, affiliation or endorsement, for commercial gain. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323 (June 29, 2004); NetCreations, Inc. v. Rob Martinson, NAF Case No. FA0208000118398 (October 30, 2002); XO Communications, Inc. v. XO Network Operations Center, Inc., NAF Case No. FA0303000150786 (April 28, 2003).
Pursuant to Paragraph 14(b) of the Rules, the Panel has discretion to draw such inferences from Respondent’s default as the Panel considers appropriate. Considering the relatively distinctive character of Complainant’s CAPSTONE MORTGAGE mark, and that Respondent also registered domain names that correspond identically to two other established mortgage companies with similarly distinctive names, this Panel deems it highly unlikely that Respondent was unaware of Complainant and its CAPSTONE MORTGAGE mark at the time Respondent registered the disputed domain names. Given these circumstances, and Respondent’s practice of promoting its websites through deceptive spam, the Panel is satisfied that Respondent registered and is using the <capstone-mortgage.net> and <capstonemortgage.info> domain names in bad faith and that element (iii) of the Policy’s Paragraph 4(a) has also been established.
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that the relief requested in the Complaint should be granted and that the domain names <capstone-mortgage.net> and <capstonemortgage.info> should be transferred to Complainant Capstone Mortgage Co.
Seth M. Reiss
Dated: July 16, 2004