WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hope Loanport, Inc. v. Private Registration/ Igor Roitburg
Case No. D2012-1932
1. The Parties
The Complainant is Hope Loanport, Inc. of Washington, District of Columbia, United States of America, represented by Venable, LLP, United States.
The Respondent is Private Registration of Scottsdale, Arizona, United States; Igor Roitburg of Belle Mead, New Jersey, United States, represented by Glance Law Group PC, United States.
2. The Domain Names and Registrar
The disputed domain names <hopeloanport.com>, <hopeloanport.org> and <hopeloanport.net> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2012. On October 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names <hopeloanport.com> and <hopeloanport.org>. On October 3, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 5, 2012. On October 15, 2012 the Complainant filed a second amended Complaint wherein it requested to add the domain name <hopeloanport.net> to the Complaint. On October 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <hopeloanport.net>. On October 18, 2012, the Registrar transmitted by email to the Center its verification response confirming the same registrant and contact information for the disputed domain names named in the second amended Complaint.
The Center verified that the Complaint together with the amended Complaints 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 the Respondent of the Complaint, and the proceedings commenced on October 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2012. The Response was filed with the Center on November 6, 2012.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 16, 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
The Complainant is a nonprofit corporation established under the laws of the District of Columbia, United States. According to the Complaint, the corporation was formed in late 2009, although the online database operated by the District of Columbia Secretary of State indicates that the corporation was not registered until January 6, 2010.
The Complainant was formed by members of HOPE NOW, an “alliance” of mortgage companies, investors, and housing counselors that came together in 2008 in response to the collapse of residential property values and escalating unemployment in the United States, resulting in unprecedented numbers of foreclosures on home mortgages. With encouragement from the United States Department of the Treasury and the United States Department of Housing and Urban Development (HUD), HOPE NOW sought to develop an online “web portal” to facilitate communications among distressed homeowners, housing counselors, and mortgage servicing companies. Specifically, HOPE NOW worked to develop a secure, online mechanism for handling home loan modification applications under the federal “HOPE for Homeowners Act”, which was later supplanted by the “Home Affordable Modification Program” (HAMP). It does not appear from the record in this proceeding or from the alliance’s website at “www.hopenow.com” that HOPE NOW was incorporated as a legal entity. The group’s pilot “Hope LoanPort” web portal was launched in November 2009 for nine housing markets.
On December 10, 2009, HOPE NOW issued a national press release announcing the portal and the participation of major mortgage servicing companies, as well as of numerous housing counseling agencies. The press release referred to the “HOPE LoanPort” portal, displaying after the quoted words the “TM” symbol used in the United States to indicate claims to an unregistered mark. The Complainant’s web portal at “www.homeloanportal.org” now includes more than 900 HUD-approved nonprofit housing counseling agencies around the United States and twelve mortgage servicers, representing (according to the Complaint) roughly 80% of the United States mortgage loan servicing firms.
The Financial Services Roundtable, an industry association that is a member of the HOPE NOW alliance, applied on November 12, 2009 for registration of the standard character mark HOPE LOANPORT. In August 2010, the mark was assigned to the Complainant, as shown in the trademark database operated by the United States Patent and Trademark Office (USPTO). The trademark HOPE LOANPORT was registered by the USPTO on February 8, 2011 (US Trademark No. 3917935).
The Domain Names <hopeloanport.com> and <hopeloanport.org> were registered through the Registrar’s domain privacy service on December 10, 2009, on the same day that HOPE NOW published its press release about the new HOPE LOANPORT web portal. The Domain Name <hopeloanport.net> was registered the next day, on December 11, 2012. The registrations were made by the Respondent Mr. Roitburg, an officer of Default Mitigation Management LLC (“DMM”). DMM operates its own loan modification portal, with facilities to upload loan modification applications and contact loan counselors, including a counseling service related to DMM. Thus, the DMM web portal competes in several areas with the services offered through the Complainant’s web portal.
The president of DMM, Mr. Smith, was quoted in a housing industry publication in August 2010 as saying that the federal government had turned down his company’s offer to create a HAMP web portal in 2009. The record includes email correspondence between Mr. Smith and HOPE NOW in August 2009 concerning this proposal that DMM would host or develop the HOPE NOW portal.
After registering the Domain Names on the day of, or the day after, the Complainant’s press release in December 2009, it appears that DMM allowed the Domain Names simply to be parked until August 2012. On August 6, 2012, DMM contacted the Complainant about becoming an authorized user of the Complainant’s web portal. The Complainant informed DMM that this could only be done with authorization from Bank of America. Bank of America did not authorize DMM to use the Complainant’s portal. It is undisputed that at some time in August 2012 DMM caused the Domain Names to redirect Internet users to DMM’s own portal at “www.dclmwp.com”, as they do at the time of this Decision.
5. Parties’ Contentions
The Complainant argues that the Domain Names are identical or confusingly similar to the registered HOPE LOANPORT mark, and that the Respondent has no rights or legitimate interests in the Domain Names.
The Complainant asserts that the Respondent, a competitor, was aware of the mark and selected the Domain Names in bad faith, in an effort to mislead Internet users for commercial gain and to deny the Complainant the opportunity to use domain names corresponding to the mark.
The Respondent argues that the Complainant’s mark is merely descriptive, and DMM filed a petition to cancel the mark with the USPTO in November 2012. The Respondent contends that DMM legitimately chose the Domain Names because they are descriptive of DMM’s business of operating a home loan modification website portal based on the federal HOPE Act and similar state programs, some of which (in Indiana, New Jersey, and Maryland) also feature the name or acronym “hope” in the program title.
The Respondent denies selecting the Domain Names to create confusion with the Complainant. The Respondent observes that it chose the Domain Names before the Complainant was established as a legal entity and before it obtained a trademark registration.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a 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 respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant indisputably holds the registered HOPE LOANPORT trademark. The Respondent has now petitioned the USPTO to cancel that registration on the ground that the mark is merely descriptive, but the Panel will not prejudge the outcome of that proceeding. The three Domain Names, each with a different generic top-level domain name extension that is immaterial for Policy purposes, are identical to the mark except for the missing space between “hope” and “loanport”. This difference is not material. Spaces are not permitted in URL addresses in the DNS system, and the Panel finds the Domain Names are confusingly similar to the appearance, sound, and meaning of the Complainant’s mark.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s registered mark for purposes of the first element of the Complaint, which is essentially a “low-threshold” standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, and cases cited therein.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Names, once the Complainant has made a prima facie showing, as it has done in this proceeding. See WIPO Overview 2.0, paragraph 2.1 (and cases cited therein).
The Policy, paragraph 4(c), includes a non-exhaustive list of circumstances demonstrating rights or legitimate interests in a domain name, including the following:
“(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; or
(ii) you (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 are making a legitimate noncommercial 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.”
It is undisputed that the Complainant has not authorized the Respondent to use the HOPE LOANPORT mark in a domain name and that the Respondent’s company, DMM, does not use a corresponding name for its business or for its competing web portal. The Respondent argues that the Domain Names are legitimately descriptive of DMM’s business, referring to a portal dealing with federal and state “Hope” programs for home loan modification. As discussed further below, this explanation is strained, and the record suggests that the Domain Names more likely targeted the Complainant’s claimed mark.
The Panel concludes that the Respondent has not met its burden of rebutting the Complainant’s prima facie case and finds the Respondent has no rights or legitimate interests in the Domain Names for purposes of this element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), offers a non-exclusive list of circumstances that are considered evidence of bad faith in the registration and use of a domain name, including these cited by the Complainant:
“(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Policy, paragraph 4(b)(ii) is not apposite. It is aimed at cybersquatters who have “engaged in a pattern” of preventing trademark owners from registering corresponding domain names. The evidence is not convincing to the Panel that the Respondent or his company have done so, for purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.3 and cases cited therein.
Policy, paragraph 4(b)(iii) possibly applies, because the Respondent’s company, DMM, operates a competing loan modification portal. Disappointed at the rejection of its offer to establish a portal for Hope Now, it is conceivable that DMM directed the Respondent to register Domain Names identical to the announced portal name and then parked the Domain Names, and later redirected them, so that distressed homeowners would not find the loan modification website they were seeking. This theory is best considered as an adjunct to the Complainant’s inference that the Respondent intentionally sought to confuse Internet users as to source or affiliation, as described in the following paragraphs.
The most plausible explanation to the Panel for the Respondent’s action matches Policy, paragraph 4(b)(iv). The Respondent’s company, DMM, operates a competing loan modification portal and stood to gain from misdirecting Internet users seeking the portal announced by Hope Now and subsequently operated by the Complainant. The Respondent, in his Declaration attached to the Response, denies any intent to mislead Internet users for commercial gain. He denies knowing, when he registered the Domain Names, about the Complainant (a legal entity that had not yet been formed), the pending application to register the HOPE LOANPORT mark, or “the specific domain name” that would be used for the loan portal planned by Hope Now (Declaration of Igor Roitburg, paragraph 14). But the Respondent acknowledges that DMM was already aware that HOPE NOW planned to operate a loan modification portal and had rejected DMM’s offer to be involved in that portal, and it is telling that the Respondent does not deny that the Respondent was aware of the Hope Now press release on December 10, 2009. That press release prominently featured in its title the planned name for the web portal created by HOPE NOW, which was “HOPE LoanPort”, with a “TM” symbol indicating that the name was claimed as a mark either protected by common law or the subject of a pending application for trademark registration. The Respondent registered two of the Domain Names on the day the press release was issued, and the third a day later.
It is not likely that this was a coincidence, and the Respondent does not directly address the timing of the Domain Name registrations. Instead, he argues that there was no trademark value to the Domain Names because they are merely descriptive. “Loanport” is a coined term, however, not a dictionary word, and the Complainant’s predecessor in interest clearly signaled its trademark claim by displaying the “TM” symbol with the name of the announced web portal. The USPTO, in examining and registering the mark, plainly concluded that the mark was not merely descriptive.
The mark had been used in commerce for only about a month when the press release was issued, since the pilot program was launched in November 2009, and it may not have been protectable at common law at that point. The trademark registration application was pending, but the mark was not registered until 2011. Nevertheless, it is appropriate to find bad faith for purposes of the Policy, paragraph 4(b), where a respondent registers a domain name corresponding to a planned or announced mark of which the respondent has actual knowledge. See WIPO Overview 2.0, paragraph 3.1 and cases cited therein, including General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845. The Panel notes that the Registrar’s Domain Name Registration Agreement incorporates the UDRP, and that paragraph 2 of the UDRP details the registrant’s “representations,” including these:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party . . . It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
While UDRP panels have not inferred from this representation an obligation to conduct extensive “due diligence” research in connection with a planned domain name registration, there are circumstances that should give registrants pause as to whether the domain name will infringe the trademark rights of another. This is one of them.
The Respondent in this proceeding was admittedly aware of the Complainant’s predecessor and does not deny seeing the press release announcing the name of the planned HOPE NOW web portal, a name for which trademark rights were indicated with the “TM” symbol. The name is not a common phrase, and it includes a coined term. On the very same day, the Respondent registered Domain Names identical to that name, with apparent disregard for the trademark claim. The Panel finds that this was more likely than not an attempt to capitalize on the value of a name, claimed as a mark, which had value precisely because it was associated with a program offered by the financial services industry, approved by the federal government, and designed to attract large numbers of the American populace concerned about losing their homes. The subsequent use of the Domain Names to redirect to a competing web portal operated by the Respondent’s company further supports the conclusion that the example of bad faith given in the Policy, paragraph 4(b)(iv), fits the current circumstances.
The Panel concludes on the available record that the Complaint establishes bad faith in the registration and use of the Domain Names for purposes of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <hopeloanport.com>, <hopeloanport.org> and <hopeloanport.net>, be transferred to the Complainant.
W. Scott Blackmer
Date: December 6, 2012