WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Berkadia Commercial Mortgage, LLC v. Whois Privacy Protection Service, Inc. / Jaydee Miller, Berkadia Commercial Building LLC
Case No. D2012-0471
1. The Parties
The Complainant is Berkadia Commercial Mortgage, LLC of Horsham, Pennsylvania, United States of America, represented by Bryan Cave, LLP, United States.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America / Jaydee Miller, Berkadia Commercial Building LLC of Miami, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <berkadia.biz> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2012. On March 9, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On March 9, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 13, 2012 providing the registrant and contact information disclosed by eNom, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 16, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on March 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2012.
The Center appointed Andrew Mansfield as the sole panelist in this matter on April 19, 2012. The Panel finds that it was properly constituted. 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.
4. Factual Background
Complainant is a major and established financial services company that provides third-party mortgage servicing options in the United States (“U.S.”). It has operated its website “www.berkadia.com” for several years, and owns the U.S. registered trademarks BERKADIA and BERKADIA COMMERCIAL MORTGAGE. In connection with its business, Complainant has used the marks BERKADIA and BERKADIA COMMERCIAL MORTGAGE. It owns U.S. trademark registration numbers 3,917,901 and 3,917,902 for these marks (collectively, the “BERKADIA Marks”). Complainant was organized in 2009. It has maintained an active presence on the Internet through its website at “www.berkadia.com”, where it promotes its financial services with the BERKADIA Marks and other advertising.
5. Parties’ Contentions
Complainant asserts that in January 2012, Respondent registered <berkadia.biz> and then proceeded to use it to display and operate a nearly identical copy of Berkadia’s “www.berkadia.com” website. Complainant asserts that Respondent displayed Complainant’s registered trademarks and copied other of Complainant’s advertising, text and photographs displayed on “www.berkadia.com”. Further, Complainant asserts that all of this was done in furtherance of a phishing scheme to steal financial information from Complainant’s customers and lure confused consumers into a commercial transaction with Respondent by posing as Complainant. Complainant urges the Panel to see Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa, WIPO Case No. D2006-0614) (“Phishing” is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user IDs, passwords, etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company and this information is used for identity theft and other nefarious activities”). Complainant asserts that it contacted the host for the Domain Name, which took down the website because it was an obvious “clone” of Complainant’s website. Complainant asserts that Respondent then sought to sell the Domain Name to Complainant. Complainant asserts that the price to purchase back the Domain Name <berkadia.biz> was excessive and Respondent justified the price by further threatening Complainant with the websites further use for phishing.
Complainant asserts that Respondent’s conduct entitles Complainant to relief under the Policy. Complainant asserts that relief is appropriate even though the Domain Name <berkadia.biz> is not currently active or resolves on the Internet.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Complainant must prove each of the three elements set out in paragraph 4(a) of the Policy.
In this case, Respondent had the chance to respond to the allegations of Complainant and opted not to participate.
Paragraph 15(a) of the Rules requires the Panel to reach a decision about a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the Panel finds appropriate to the matter. Without a response from the Respondent, the burden of proof required by Complainant will be met if a conclusion that is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent; see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011 among numerous other UDRP decisions.
A. Identical or Confusingly Similar
As to element (i) of paragraph 4(a) of the Policy, the Panel acknowledges that the test concerning identity or confusing similarity is a factual one that should be satisfied by making a side-by-side comparison of Complainant’s trademark BERKADIA and the Domain Name, taking into account the degree of aural, visual, or conceptual similarity between the two, the similarity of the goods and services for which they are used and the inherent or acquired distinctiveness of the trademark.
Placed side-by-side, the similarity of the BERKADIA trademark and the Domain Name is self-evident to the Panel. The fact that the top level domain is “.biz” does nothing to distinguish the Domain Name.
The Panel therefore finds that Complainant has sufficient trademark rights and that the Domain Name is confusingly similar to Complainant’s BERKADIA trademark.
B. Rights or Legitimate Interests
To determine whether Respondent possesses rights or legitimate interests concerning the Domain Name, the Panel should, but without limitation, consider the following:
1. Whether there is any evidence of Respondent’s 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 before any notice to Respondent of the dispute;
2. Whether Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights;
3. Whether Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
The Panel agrees that Complainant has made a prima facie showing that Respondent has no legitimate rights or interest in <berkadia.biz> as Complainant (not Respondent) owns the BERKADIA Marks, these Marks were used before Respondent registered the Domain Name, Respondent is not affiliated with Berkadia, and Respondent is not authorized to use the BERKADIA Marks.
Because Respondent did not participate in these proceedings, the Panel finds no evidence that it has been commonly known as Berkadia or the Domain Name. Further, the evidence presented by Complainant demonstrates that Respondent has used the Domain Name for commercial gain (ill-gotten and fraudulent) by diverting consumers to the Domain Name.
The Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
In reviewing whether Respondent registered and uses the Domain Name in bad faith, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. This list is not meant to be exhaustive. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy relates directly to the facts demonstrated by Complainant in the present case and indicates to the Panel there is bad faith registration and use in this case:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [the respondent’s] web site or location or of a product or service on [its] web site or location.”
The Panel finds, based on the evidence submitted by Complainant, that Respondent not only attempted to attract customers for commercial gain but did so in a way that constitutes “phishing” for financial information.
The Panel finds that Respondent registered and uses the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <berkadia.biz> be transferred to Complainant.
Dated: May 9, 2012