WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Countrywide Financial Corporation, Inc. v. Aziz Popal
Case No. D2005-0295
1. The Parties
The Complainant is Countrywide Financial Corporation, Inc., Calabasas, California, United States of America, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America.
The Respondent is Aziz Popal, Irvine, California, United States of America, who is representing himself in this proceeding.
2. The Domain Name and Registrar
The disputed domain name <countrywidefinancial.com> (“the Domain Name”) is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2005. On March 23, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On March 23, 3005, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response April 21, 2005. The Response was filed with the Center on April 20, 2005.
The Center appointed W. Scott Blackmer, Kenneth A. Genoni and André R. Bertrand as panelists in this matter on June 1, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant transmitted a “Supplemental Submission” to the Center on May 11, 2005, addressing several factual points asserted in the Response. Respondent sent the Center an email the following day, May 12, 2005, making further arguments and factual statements and attaching copies of emails exchanged by the parties in 2002. Bearing in mind that the Respondent is an individual representing himself, the Panel admits both the Complainant’s and Respondent’s communications as Supplemental Submissions and has considered them in rendering a decision in this proceeding.
4. Factual Background
It is undisputed that the Complainant Countrywide Financial Corporation is a financial services company organized under the laws of the State of Delaware and headquartered in Calabasas, California. The Complainant operates nationally through several subsidiaries and is listed on the New York Stock Exchange.
The Complainant’s website at “www.mycountrywide.com” currently advertises “home loans”, “banking”, and “insurance”. The Complaint lists several other financial services offered by Complainant’s group of companies, including securities and commodities brokerage and underwriting services, mutual fund brokerage, financial portfolio asset management, investment advisory services, financial planning and research services, and loan financing.
Complainant Countrywide Financial Corporation is the successor to Countrywide Credit Industries, Inc., which was established in 1969. According to a corporate press release and Form 8-K filing with the United States Securities and Exchange Commission (both attached to the Response and not contested by the Complainant), the Complainant “changed its name” to Countrywide Financial Corporation in November 2002. The name change, according to the press release, reflected the company’s transformation from a leader in “mortgage banking” into a “diversified financial services” company.
On August 5, 2002, some three months before announcing the name change, the Complainant applied to the United States Patent and Trademark Office (“USPTO”) to register the word mark COUNTRYWIDE FINANCIAL for a list of financial services similar to those mentioned above. The mark was registered on November 16, 2004, showing November 13, 2002, as the date of first use in commerce.
The Complainant does not contend that it used the COUNTRYWIDE FINANCIAL mark before November 2002. However, it is undisputed that the Complainant also owns several COUNTRYWIDE marks used by its predecessor Countrywide Credit Industries, Inc. since “at least as early as October of 1983” (Complainant’s Supplemental Submission, at 3). USPTO records show that Countrywide Credit Industries, Inc. obtained registrations for COUNTRYWIDE marks in 1987, 1993, and 1995, associated with mortgage, securities, and insurance services. These registrations indicate, in the case of the COUNTRYWIDE marks registered in 1987 and 1993, a first use in commerce dating from October 1983. The Complainant also asserts “earlier common law rights” in COUNTRYWIDE as a service mark under state and federal law, although it does not provide further details concerning this claim.
The Panel has much less information about the Respondent Aziz Popal. The Respondent states in his Supplemental Submission that “under a different company name” he is currently involved in offering “equipment financing services to small and medium sizes [sic] business”. He mentions in his Response that in addition to registering the Domain Name, he has registered <click4loan.com>, <clickforloan.com>, and <citycapitalfinancial.com>. The Response says that the Respondent is not currently using the <citycapitalfinancial.com> domain name. As discussed further below, that name resolves to what is sometimes termed a “parking” site operated by the same Registrar that registered the Domain Name. The Domain Name resolves to the same site, displaying the address “www.citycapitalfinancial.com”.
The Respondent registered the Domain Name on March 28, 2001. The date is significant in that it precedes the Complainant’s name change and the first use of the COUNTRYWIDE FINANCIAL mark in November 2002. It is undisputed, however, that the COUNTRYWIDE mark was registered and well-established by that time.
The Respondent states in his Response that “I did not register this domain name to sell it to anyone or to profit from the domain name itself”. He asserts that other companies have offered to purchase the Domain Name “for traffic or generate leads but I refused to sell”. The Respondent denies being a “domain broker” and points out that he did not solicit an offer for the Domain Name from the Complainant or its predecessor. (As discussed below, the Complainant acknowledges having made the first contact with the Respondent.)
In his Supplemental Submission, the Respondent repeats that he “was not interested in selling the domain” and was not using the Domain Name “for origination of mortgages or real estate transaction”. Instead, he asserts that his intention in registering the Domain Name was “to use the name in nationwide lending services, which include business equipment financing, receivable financing, inventory financing and factoring”. The Supplemental Submission says that the Respondent’s current business entails equipment financing for small businesses and goes on to indicate that “we will be offering receivable financing and auto loans in the near future”. The Respondent’s Supplemental Submission asserts that these services “are not offered by Countrywide”, a contention that the Complainant has not disputed (although it currently advertises “personal loans” online through its subsidiary Countrywide Bank).
It appears from the statements of the parties that the Domain Name has not been used for a website operated by the Respondent. Instead, it resolves to a page headed “Coming Soon!” that is hosted by the Registrar, Register.com, at the Respondent’s other “parked” address, “www.citycapitalfinancial.com”. The parking site includes links to a variety of commercial websites concerning travel, credit cards, student loans, and other services offered by third parties. It does not appear that the parking site at “www.citycapitalfinancial.com” links to the Respondent’s active websites. The Response denies that the Respondent has “benefited financially” by using the Domain Name to attract traffic to the “www.citycapitalfinancial.com” website and states categorically that he has received “zero compensation” from its host, Register.com.
A review of the other websites registered by the Respondent is helpful in understanding the Respondent’s business interests, although it does not appear that these sites are linked from the “www.citycapitalfinaical.com” website to which the Domain Name resolves. The domain name <click4loan.com> resolves to a multi-page website headed “City Capital Financial, Inc.”, showing a business address on Main Street in Irvine, California (not the same address in Irvine given for the Respondent as registrant of the Domain Name). The site advertises loan services (mortgages and cash loans) and provides online loan calculators and information, including links to other commercial websites offering various “home services” (such as construction and landscaping) and “personal finance resources” (such as insurance quotes and credit reports). The domain name <clickforloan.com> resolves to a website also labeled “City Capital Financial, Inc.”, at the same Main Street address in Irvine, California, advertising the same lending services and offering essentially the same related information, but entirely in the Spanish language. A link on the home page labeled “In English” takes site visitors to “www.click4loan.com”; a reciprocal link on the “www.click4loan.com” website brings Spanish-speakers to “www.clickforloan.com”.
It is undisputed that the Complainant contacted the Respondent in the summer of 2002 (before the Complainant’s name change and its application to register the COUNTRYWIDE FINANCIAL mark), seeking the transfer of the Domain Name. According to the Complainant’s Supplemental Submission, it first sought to have the Respondent transfer the Domain Name “because it did not properly belong to him”, offering to pay the Respondent’s registration costs “plus a nominal amount”.
Neither party has furnished the Center a complete chronology and description of the various telephone and email communications that followed. However, a series of emails attached to Respondent’s Supplemental Submission and dated in July 2002 (shortly before the Complainant applied for the registration of the COUNTRYWIDE FINANCIAL mark) indicate that at some point the Complainant offered money for the Domain Name and the Respondent replied (on July 18, 2005) that he was “not interested in selling” the Domain Name, adding, “as you know I am not advertising under countrywide financial, and I do not claim to be, countrywide”. The Complainant responded in a July 29, 2002 email, saying that “our initial offer was too low” and offering $10,000 for the Domain Name. The Respondent replied by email that he would consider leasing the Domain Name to the Complainant. The Complainant’s representative responded that this was a “good suggestion” but would not make sense for the Complainant “since we are not planning on using it immediately”. The Complainant’s representative asked the Respondent in an email dated July 30, 2005, what amount would “persuade” him to sell the Domain Name, since “you may have a chance of getting your required amount if it is reasonable”.
The parties agree that at some point the Respondent asked for $250,000 to transfer the Domain Name (this is acknowledged in the Response) and engaged in at least one telephone conversation that involved legal counsel for the Complainant. The Complainant’s Supplemental Submission asserts (without contradiction from the Respondent) that the Respondent lowered his selling price to $60,000 and then to $10,000, which is the amount that the Complainant offered on July 29, 2002. However, no agreement was reached and there is no record of communications between the parties after September 2002, until the Complainant served notice of this proceeding some two and a half years later.
5. Parties’ Contentions
The Complainant points to its “longstanding and continuous usage” of the COUNTRYWIDE “family of service marks”, widely identified with the Complainant and its financial services. The Complainant acknowledges in its Supplemental Submission that the Respondent registered the Domain Name before the Complainant changed its name to Countrywide Financial, but the Complainant argues that this is irrelevant because the COUNTRYWIDE marks were already well established. The Complainant contends that the COUNTRYWIDE marks are arbitrary and distinctive rather than descriptive and asserts that the Complainant has expended hundreds of millions of dollars in advertising the COUNTRYWIDE marks since introducing them in 1983 “in association with its mortgage home loan services, mortgage lending and financing, and other real-estate related services”. Alternatively, the Complainant argues that even if the marks were viewed as descriptive, they have acquired “substantial secondary meaning” in the past two decades, making them “distinctive and subject to protection”.
The Complainant asserts that the Domain Name is identical to its COUNTRYWIDE FINANCIAL and COUNTRYWIDE marks and that “[a]t a minimum, there is confusing similarity”. In its Supplemental Submission, the Complainant argues that the addition of the descriptive word “financial” to the COUNTRYWIDE mark in the Domain Name does not avoid likely confusion with the COUNTRYWIDE marks, especially because it is descriptive of the very services that the Complainant offers in association with the COUNTRYWIDE marks.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name because the Complainant has not licensed the Respondent to use its COUNTRYWIDE or COUNTRYWIDE FINANCIAL marks. Further, the Complainant argues, the Respondent is using the Domain Name for an “illegitimate purpose” by diverting traffic from the Complainant’s website to the “www.citycapitalfinancial.com” website hosted by Register.com and from there to unrelated commercial websites (some of them competing with the Complainant). The Respondent, the Complaint continues, is not using a Domain Name by which the Respondent has been known in connection with a bona fide offering of goods or services. In its Supplemental Submission, the Complainant argues that “[e]ven in his Response, Respondent does not state a single legitimate reason for his registration of the domain name in the first place”.
The Complainant concludes that the Domain Name was registered and used in bad faith, on several grounds. The Complainant argues that using a Domain Name that is identical or confusingly similar to the Complainant’s marks to divert consumers to commercial websites operated by others falls within paragraph 4(b)(iv) of the Policy. The Complainant argues further that the Respondent’s demand for $250,000 to transfer the Domain Name is evidence of bad faith under paragraph 4(b)(i) of the Policy. Finally, the Complainant argues that the Respondent has disrupted the Complainant’s business by preventing it from reflecting its COUNTRYWIDE FINANCIAL and COUNTRYWIDE service marks in a corresponding domain name. (This last argument appears to be a conflation of paragraphs 4(b)(ii) and (iii) of the Policy.)
Accordingly, the Complainant seeks the transfer of the Domain Name.
The Respondent points out that the Complainant changed its name from Countrywide Credit Industries, Inc. to Countrywide Financial Corporation, Inc. twenty months after the Respondent registered the Domain Name, and did not previously do business under that name.
In his Supplemental Submission, the Respondent suggests that “countrywide” is a descriptive term and characterizes the “nationwide” scope of the financial services business that the Respondent intended to offer using the Domain Name. He also indicates in the Supplemental Submission that he planned to use the Domain Name for financial services that are not offered by the Complainant.
Further, the Respondent denies registering the Domain Name with intent to sell it to the Complainant and claims he has turned away offers for the Domain Name from third parties. He also denies receiving any compensation from Register.com while parking the Domain Name with that company.
In short, the Respondent makes an argument against confusing similarity and claims a legitimate interest in the Domain Name and a good-faith reason for registering it.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:
(i) The Domain Name is 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 interests in the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Apart from the lack of a space between “countrywide” and “financial”, the Domain Name is identical to the Complainant’s registered mark COUNTRYWIDE FINANCIAL. The missing space does not lessen the likelihood of confusion. It is common to omit spaces in multi-word domain names, since the domain name service (DNS) technical protocols do not permit the use of spaces. See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 (September 23, 2001) <digitalvision.com>.
It is undisputed that the Complainant applied to the USPTO to register the COUNTRYWIDE FINANCIAL mark in August 2002, first used the mark in November 2002, and obtained registration of the mark in November 2004 – all after the Respondent registered the Domain Name. However, paragraph 4(a)(i) of the Policy does not refer in any way to the timing of the Complainant’s acquisition of rights in a trademark or service mark, except to require that the Complainant have such rights at the time of the proceeding. This Panel follows previous ones in holding that the Complainant’s acquisition of rights in a mark after the Respondent’s registration of the Domain Name does not prevent a finding of identity or confusing similarity under paragraph 4(a)(i) of the Policy. It is, rather, a fact that may be relevant to the issue of bad-faith registration under paragraph 4(a)(iii) of the Policy, as discussed below. See AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527 (October 2, 2003) <svenskaspel.com>; Iogen Corporation v. Iogen, WIPO Case No. D2003-0544 (September 7, 2003) <iogen.com>; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 (October 8, 2003) <madrid2012.com> (and other domain names); Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 (September 23, 2001) <digitalvision.com>.
The Panel concludes, therefore, that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i), because the Domain Name is identical or confusingly similar to the Complainant’s COUNTRYWIDE FINANCIAL mark. Confusing similarity is a more contentious question with respect to the COUNTRYWIDE marks, but it is unnecessary to address that question because of the Panel’s ruling based on the COUNTRYWIDE FINANCIAL mark.
B. Rights or Legitimate Interests
The Respondent’s Supplemental Submission indicates that “countrywidefinancial” describes what the Respondent plans to offer – “nationwide lending services”. The Respondent currently offers some lending services and asserts plans to offer more, although these are not provided under a name corresponding to the Domain Name.
There is no evidence in the record that the Respondent has ever been commonly known by the Domain Name or has acquired relevant trademarks or service marks, and it is undisputed that the Respondent has not been licensed by the Complainant. Thus, it appears that the Respondent is asserting a legitimate interest in the Domain Name on the ground described in paragraph 4(c)(i) of the Policy:
“(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 . . . .”
Whether the Panel should conclude that the Respondent made “demonstrable preparations” to use the Domain Name in connection with a bona fide offering of goods and services – rather than merely to divert Internet users to other commercial sites and demand exorbitant sums from the Complainant, as the Complainant contends – is a question that is intertwined with the issue of bad faith under the third element of the Policy. The Panel will address the Respondent’s claims of legitimate interests in the Domain Name in the discussion of bad faith below, since the aim of the Policy is to stop bad-faith registration of domain names and that is the heart of this proceeding and of most UDRP proceedings. Because the Panel concludes below that the Complainant has not met its burden of persuasion on the issue of bad faith, it is not necessary to draw a conclusion as to Respondent’s having legitimate interests in the Domain Name under the second element of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), places the burden of proof on the Complainant to establish both that the Domain Name “has been registered” in bad faith and “is being used” in bad faith. As discussed below, the fundamental difficulty for the Complainant in the current proceeding is to meet its burden of persuasion in discrediting the Respondent’s avowed good-faith reasons for registering the Domain Name.
If there were no possible legitimate, non-infringing uses of the Domain Name at the time it was registered by the Respondent, the Panel could more easily infer bad faith (as well as a lack of rights or legitimate interests in the Domain Name). But that does not appear to be the case here. The Complainant did not use the COUNTRYWIDE FINANCIAL mark until after the Domain Name was registered. The COUNTRYWIDE marks were long established, but by the Complainant’s own account they were originally associated with a more limited range of financial services. The Complainant does not provide evidence that these marks were associated, by the time the Domain Name was registered, with all of the financial services the Respondent mentions in his Supplemental Submission.
The Complainant claims that the COUNTRYWIDE mark is distinctive rather than descriptive and therefore should be protected against any use by the Respondent. It is, however, a common English word with relevant geographic significance, and the Complainant has not demonstrated that the mark has acquired a secondary meaning associated with all relevant financial services.
Thus, it has not been established that the Respondent simply could not have entertained any legitimate, non-infringing uses of the Domain Name in 2001, whatever the case may be today.
As the Complainant points out, the Response does not indicate why the Domain Name was chosen. However, the Respondent’s Supplemental Submission addresses the issue. There, the Respondent indicates that “countrywidefinancial” described what was intended to be a business offering “nationwide lending services”. “Statewide or Countrywide lending”, argues the Respondent, “is a general word used to describe our ability to provide financial services throughout the country”. The Supplemental Response also lists several financial services offered or contemplated by the Respondent, which allegedly “are not offered by Countrywide”.
It is a close question whether this explanation of the Respondent’s purpose in registering the Domain Name is persuasive. To date, it appears that Respondent has not achieved his alleged ambition of offering nationwide lending services, under the Domain Name or any other. The Domain Name has apparently never been used for a financial services website operated by the Respondent. The home mortgage and personal loan services offered by City Capital Financial, Inc. at the Respondent’s website “click4loan.com” do not quite match the description of his current financial offerings in the Supplemental Response and are certainly not national in scope: the home page includes the disclosure, “We lend in the following states: California”.
Moreover, the Respondent does not deny familiarity with the Complainant’s predecessor, Countrywide Credit Industries, Inc., which held, at the time of the Domain Name registration, several long-established marks using the word COUNTRYWIDE in association with certain financial services. Thus, it is entirely possible that the Respondent registered the Domain Name in the hope of somehow capitalizing on the fame of the COUNTRYWIDE mark, either by selling the Domain Name or by diverting traffic to a website operated by the Respondent or another party for commercial gain.
But it also appears, from his websites as well as his claims in this proceeding, that the Respondent does indeed operate a financial services business in California. It is not incredible that the Respondent would hope to expand this business nationally – or “countrywide”. It is undisputed that the Respondent did not approach the Complainant about selling the Domain Name, and the Respondent says he rejected offers from others. This is at least a plausible version of the events that suggests innocent motives in registering the Domain Name.
Each of the Respondent’s factual allegations could be tested in a judicial proceeding, of course. There, the advocates could pursue discovery from the parties and from other relevant persons. A judge or jury would have an opportunity to observe the witnesses in person and better assess their credibility.
By contrast, the Panel in a UDRP proceeding does not have the benefit of these mechanisms for divining the truth. Without them, a panel should not readily conclude that a respondent is lying about his reasons for registering a domain name, where the complainant has the burden of proving bad faith and the respondent has submitted a not unlikely explanation.
The Complainant argues that bad faith should be inferred from the Respondent’s use of the Domain Name, which is identical or confusingly similar to the Complainant’s marks, to divert consumers to commercial websites operated by others. The Complainant cites paragraph 4(b)(iv) of the Policy, which lists the following as one possible evidence of bad faith:
“(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 or service on your website or location.”
There are two problems with the Complainant’s analysis.
First, paragraph 4(b)(iv) concerns diversion of Internet traffic “for commercial gain”. The Respondent here categorically denies receiving compensation for parking the Domain Name with Register.com, which displays what are apparently sponsored links to various commercial websites. Because none of the latter appear to be operated by the Respondent, and the Respondent claims to have received no compensation, the Panel cannot safely infer that the Respondent has used the Domain Name “for commercial gain” by creating a likelihood of confusion with the Complainant’s mark.
Second, where the Respondent has avowed a permissible purpose in registering the site, the Panel is reluctant to find bad-faith registration based on his subsequent parking of the Domain Name. As the Panel concluded in Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting, WIPO Case No. D2001-1391 (January 24, 2002) <sexplanets.com>, it is appropriate to infer bad-faith registration where bad-faith use as defined in paragraph 4(b)(iv) is the only evidence of the purpose for which the domain name was registered. By contrast, such an inference may not be appropriate where there is other evidence of the Respondent’s purpose in registering the Domain Name:
“Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith.”
(Quoting Passion Group Inc. v. Usearch, Inc. (eResolution case AF-0250).)
Thus, even if it could be established, contrary to his denials, that the Respondent obtained some form of compensation for parking the Domain Name with Register.com, it would not prove that this was his intention at the time of registration, where he has advanced plausible, good-faith reasons for registering the Domain Name.
The Complainant also argues that the Respondent’s demand for $250,000 to transfer the Domain Name is encompassed by paragraph 4(b)(i) of the Policy, which gives the following as an instance of bad faith:
“(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 . . . .”
The amount here is certainly much more than the Respondent’s likely out-of-pocket costs, but the difficulty is in establishing that the Respondent registered the Domain Name “primarily” for the purpose of selling it to the Complainant or a competitor. From the record, it appears that the Respondent was in fact involved in a financial services business, did not approach the Complainant soliciting its purchase of the Domain Name, and expressed a disinclination to sell when the Complainant contacted the Respondent more than a year after the Domain Name was registered. The Respondent gives other reasons for registering the Domain Name and denies being a “domain broker”. There is no conflicting evidence, such as multiple domain name registrations or a history of UDRP complaints against the Respondent. His conduct in 2002 appears opportunistic, but it does not establish that the sale of the Domain Name was his primary purpose for registration in 2001, in the face of his stated reasons for obtaining the Domain Name.
Finally, the Complainant argues that the Respondent has disrupted the Complainant’s business by preventing it from reflecting its COUNTRYWIDE FINANCIAL and COUNTRYWIDE service marks in a corresponding domain name. Paragraph 4(b)(ii) of the Policy requires proof, however, that the Respondent has engaged in “a pattern of such conduct”, which is lacking here. Paragraph 4(b)(iii) refers more generally to bad-faith registration “primarily for the purpose of disrupting a competitor”. In light of the Respondent’s plausible reasons for registering the Domain Name – including the offering of services that do not appear to compete with those offered by the Complainant – it is not established that the Respondent’s primary purpose in registering the Domain Name was to disrupt the Complainant.
In sum, it may well be that the Respondent hoped at the time of registration for some ultimate sale of the Domain Name or a “free rider” effect in using the Domain Name, incorporating as it did the Complainant’s well-known COUNTRYWIDE mark. There is little evidence to support that inference, however, and the Respondent has advanced plausible, good-faith reasons for registering the Domain Name. The Panel is not inclined, on the available record, to conclude that those statements are untruthful.
The Panel notes that the parties are located in the same state, and the Complainant may choose to test the Respondent’s factual allegations in litigation, where there are more facilities for discovery as well as more legal grounds and remedies available. But in the narrow confines of a UDRP proceeding, the Panel concludes that the Complainant has not established bad-faith registration and use and therefore is not entitled to a transfer of the Domain Name <countrywidefinancial.com>.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Kenneth A. Genoni
André R. Bertrand
Dated: June 15, 2005