WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ocwen Financial Corporation v. David Goad / S Zoeller / Domain Administrator, See PrivacyGuardian.org
Case No. D2018-2578
1. The Parties
Complainant is Ocwen Financial Corporation of West Palm Beach, Florida, United States of America (“United States”), represented by Locke Lord LLP, United States.
Respondent is David Goad of New Braunfels, Texas, United States / S Zoeller of Boulder, Colorado, United States / Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name <ocwenracketeering.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2018. On November 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2018, the Registrar 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 November 13, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 13, 2018.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2018. The Center received email communications from Respondent on November 16, 2018. The Response was filed with the Center on December 6, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 14, 2018. 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 financial services company and the owner of the following United States trademarks (referred to in this Decision as the OCWEN mark or marks):
(a) OCWEN, registration no. 2330061, registered on March 14, 2000, with a date of first use in commerce of December 12, 1986;
(b) OCWEN FINANCIAL CORPORATION, registration no. 2330062, registered on March 14, 2000, with a date of first use in commerce of December 12, 1986; and
(c) OCWEN LOAN SERVICING, registration no. 3670997, registered on August 18, 2009, with a date of first use in commerce of January 1, 2009.
Complainant’s OCWEN marks are used to identify the following goods/services: (i) banking services; (ii) mortgage banking services; (iii) automated teller machine services; (iv) providing bank account information by telephone; (v) cash management; (vi) check cashing; (vii) issuance of traveler’s checks; (viii) check processing; (ix) financial analysis and consultation; (x) credit card services; (xi) debit card services; (xii) financial investment in the fields of real estate and securities; (xiii) lease-purchase financing; (xiv) loan financing; (xv) financing services; (xvi) home equity loans; (xvii) installment loans; (xviii) investment of funds for others; (xix) mortgage lending; (xx) safety deposit box services; (xxi) loan collection services; (xxii) real estate foreclosure trustee services; (xxiii) financial evaluation of real estate; (xxiv) loan servicing; (xxv) real estate investment in low income housing tax credit partnerships; (xxvi) loan management; (xxvii) loan origination services; (xxviii) mortgage processing services; (xxix) loan securitization; and (xxx) unsecured debt collection services.
The Domain Name was registered with the Registrar on October 26, 2018.
Complainant submitted a screen shot of the webpage to which the Domain Name resolved at the time the Complaint was filed. The webpage stated that “ocwenracketeering.com may be for sale!” and “Please use the form below to submit an offer to purchase ocwenracketerring.com. The website owner will reply to the email address you provide below”. Respondent has noted and the Panel has confirmed that the Domain Name currently resolves to a webpage that states in relevant part:
“Welcome to ocwenracketeering.com
This domain is parked free of charge with NameSilo.com. NameSilo offers the cheapest domains on the Internet….”
5. Parties’ Contentions
(i) Identical or Confusingly Similar
Complainant states that it is the owner of the OCWEN mark and that Respondent registered the Domain Name, which is confusingly similar to Complainant’s famous OCWEN mark, because it uses Complainant’s famous mark with a negative term.
(ii) Rights or Legitimate Interests
Complainant states that Respondent is not known by any name or trade name that incorporates Complainant’s OCWEN marks. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or other legitimate, noncommercial, or fair use of the Domain Name. Respondent uses the Domain Name to host a web form for the purpose of selling the Domain Name for commercial gain.
(iii) Registered and Used in Bad Faith
Complainant contends that Respondent’s use and registration of the Domain Name was done in bad faith. Respondent had constructive knowledge of Complainant’s rights in the OCWEN mark. Respondent intentionally registered the Domain Name to (a) dilute and/or tarnish Complainant’s famous OCWEN mark, and/or (b) to commercially benefit from the sale of the Domain Name to a third party.
Respondent contends that any organization, individual, or other entity who attempts to control or otherwise restrict Respondent’s use of the Domain Name will be violating Respondent rights protected under the United States Constitution and federal statutes. Respondent in his Response relies heavily on references to United States laws and court decisions. Respondent further claims that he is a stockholder of Complainant and that Complainant and its lawyers over the last several years have made deceptive and misleading allegations about Respondent, including in an attempt to harass or otherwise disrupt Respondent’s lawful and protected use of the Domain Name.
Respondent claims that Complainant, without raising concern or comment, first became aware that Respondent was openly and notoriously using the Domain Name nearly three years ago in February 2016. According to Respondent, this fact in itself provides him with protection. Respondent states that on October 29, 2018, he sent correspondence to Complainant to indicate the intended use of the Domain Name, stating “The website will be a tool for those who have been harmed by each of you while enlightening stockholders,” and “It will be a repository of information that lawyers, legislators, and law enforcement can use to end your practices and deter similar ones in the future. We are considering placing it under our 501(c)(3) foundations umbrella”. In response, on November 1, 2018, Complainant through its lawyer sent Respondent a cease and desist letter. On November 7, 2018, Respondent responded, stating “You and I both know that I cannot end Ocwen’s existence. However, I do, as you, have the right to inform the public as to Ocwen and its board/executive staff’s business practices.”
(i) Identical or confusingly similar
Respondent contends that there is no confusion between the OCWEN mark and the Domain Name. Respondents states that while Complainant is famous for its bad acts, the Domain Name is neither confusing nor negative; it is truthful based upon facts and the definition of “racketeering” as set forth by the United States Supreme Court. Respondent asserts that in 2013, the Consumer Financial Protection Bureau (the “CFPB”), a United States federal agency, imposed a very significant fine on Complainant. Despite the fine, Respondent states that Complainant continued its racketeering activities, causing the CFPB to file another lawsuit against Complainant in 2017.
Respondent further contends that the OCWEN mark and the Domain Name cannot be confused because Complainant does not market its products to consumers. Instead, Complainant markets its products (i.e., loan servicing) to real estate loan providers. These sophisticated loan providers would never confuse the two terms, nor would a layperson. Respondent states that the consumers who do search for Complainant online do so only after the fact. In other words, consumers have no reason to search for Complainant until after their home (or other real estate loan) has been placed with Complainant for servicing. Furthermore, Respondent has never used, nor does he intend to use, Complainant’s registered mark.
(ii) Rights or legitimate interests
Respondent argues that under United States law, Respondent’s use of the Domain Name is protected. The United States courts have intervened whenever a threat under trademark law becomes too robust, or when companies and other trademark holders use it to silence commentary, criticism, and unfavorable reporting. Such a right to control language offends the First Amendment of the United States Constitution.
Respondent claims that its use of the Domain Name is nominative fair use. The use of the Domain Name is protected by the fact that Respondent uses it for the sole purpose of reporting, commentary, criticism, and parody. The textual use of the OCWEN mark, and not the use of the associated registered logo, which always accompanies Complainant’s name online, is only as much as necessary to identify the trademark owner. Moreover, Respondent claims there is no likelihood of dilution. The licensed owner of a trademark has no right to shut down unflattering speech about that trademark. Again, the use of the OCWEN mark in the Domain Name is purely expressive, noncommercial, and has no association with the sale of goods or services.
Respondent claims that had the Registrar not blocked Respondent’s access to the Domain Name, he would have posted the website with a disclaimer that Complainant and the Domain Name are not affiliated; that the Domain Name is for expressive purposes only; and that the Domain Name is noncommercial and there are no goods or services offered or the endorsement thereof.
(iii) Registered and used in bad faith
Respondent claims there is no evidence or intent on Respondent’s part to divert consumers away or to provide goods or services. The word “racketeering” clearly would not be employed to gain any type of a consumer, but it would attract the attention of the news minded.
With regard to Complainant’s claim that Respondent uses the Domain Name to host a web form for the purpose of selling the Domain Name for commercial gain, Respondent states that he never posted a website nor gave permission to anyone to post a website using the Domain Name. Respondent claims that this reflects a conspiracy to commit fraud between Complainant, Complainant’s lawyers, and the Registrar.
Respondent states that Complainant’s screen shot of the webpage linked to the Domain Name (offering the Domain Name for sale and providing a form for that purpose) is the first and only time Respondent has been made aware that such an offering was made online. Respondent’s many attempts to locate or resurface that web page have proven unsuccessful. However, Respondent found another web page linked to the Domain Name, which states, in part, “parked free”. Respondent also provides a copy of a receipt showing that Respondent paid the Registrar a one-year registration fee for the Domain Name. Respondent believes that the Registrar, which has refused Respondent’s access to the Domain Name account, has conspired with Complainant and its lawyers to profit from selling the Domain Name or creating an image to benefit Complainant in this proceeding.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its OCWEN mark, based on ownership of the trademark’s registration in the United States and use of the mark in commerce. Further, the Panel determines that the Domain Name is identical or confusingly similar to the OCWEN marks. The Domain Name incorporates the OCWEN mark in its entirety, while adding the descriptive word “racketeering”. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here, the mark OCWEN is the dominant feature, which is recognizable in the Domain Name. Moreover, section 1.13 of WIPO Overview 3.0 provides:
“A domain name consisting of a trademark and a negative or pejorative term … is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element. The merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements.”
Accordingly, the Panel finds that that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
In this case Complainant made a brief submission concerning the second element of the Policy. Complainant asserted that Respondent is not known by any name or trade name that incorporates Complainant’s OCWEN trademark; that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or other legitimate, noncommercial, or fair use; and that Respondent used the Domain Name to host a web form for the purpose of selling the Domain Name for commercial gain.
The Panel finds that Complainant has satisfied the minimum of a prima facie showing. It is undisputed that Respondent has not been commonly known by the Domain Name or any name that incorporates the OCWEN mark. Respondent, without Complainant’s authorization or consent, has registered a Domain Name that, by Respondent’s own admission, intentionally incorporates Complainant’s OCWEN mark. At the time the Complaint was submitted, the Domain Name resolved to a web page that creates the impression that the Domain Name was for sale by its owner.
In response to this showing, Respondent has contended that its use of the Domain Name is protected under United States laws, claiming nominative fair use. Respondent claims that it uses the Domain Name for the sole purpose of reporting, commentary, criticism, and parody. The Panel observes, however, that although Respondent has stated that it has held the Domain Name since February 2016 (whereas the WhoIs record indicates that the current registration dates from October 2018), there has been no content associated with the Domain Name or the webpage to which it was linked to indicate that the Domain Name has been used for the purposes alleged by Respondent (e.g., commentary, criticism, or providing information about Complainant). Respondent has acknowledged that he never posted a website for the Domain Name. Nor has Respondent submitted any evidence of demonstrable preparations to use the Domain Name for noncommercial or fair use purposes.
WIPO Overview 3.0, section 2.11, indicates that “Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint”. In this case, the Panel observes that Respondent has provided no evidence, other than its arguments and contentions in this case and in response to Complainant’s cease and desist letter, to show that it had acquired any right or legitimate interest in the Domain Name. The Domain Name, which incorporates Complainant’s OCWEN mark along with the word “racketeering,” appears to have been linked to a webpage – possibly automatically generated by the Registrar – which showed that the Domain Name “may be for sale” or later indicated that the Domain Name “may be parked free of charge”. Especially in view of Respondent’s contention that it has owned the Domain Name for nearly three years since February 2016, Respondent has failed to show that he established any right or legitimate interest in the Domain Name.
Finally, to the extent that Respondent claims its registration of the Domain Name is protected by United States laws, the Panel refers to WIPO Overview 3.0, section 4.15, which states that “Panels have broadly noted that insofar as the UDRP system is designed to operate in a global context, while rooted in general trademark law principles, in its own terms UDRP jurisprudence generally would not require resort to particular national laws”. Indeed, as its name implies, the UDRP is intended to provide an international and uniform policy across top-level domains for resolving disputes between trademarks owners and domain name registrants. See Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455. As stated in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, an approach applying local rules “risks the UDRP fragmenting into a series of different systems, where the outcome to each case would depend upon where exactly the parties happened to reside”. Moreover, as a policy matter, “the act of bringing local law into the assessment of the Policy when taken to its logical conclusion as a matter of practice undermines the … goal of commercial certainty”. Id. This point is further supported because the Policy, on the one hand, and local laws (and related procedures) as to cybersquatting, trademark infringement and principles of fair use, on the other hand, are different in several important respects, such that a set of facts might conclusively establish trademark infringement under domestic law, yet not be considered bad faith registration and use under the Policy, or vice versa. Id.
Here, the Panel determines, on the balance of the probabilities, that Complainant has made out the minimum prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, while Respondent has failed to provide evidence or justification to demonstrate any established right or legitimate interest in the Domain Name. Accordingly, the Panel finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Moreover, section 3.1 also provides in relevant part that:
“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden (italics added).”
Here, although the decision is a close one, the Panel determines that Respondent is taking unfair advantage of, abusing, and otherwise engaging in behavior detrimental to Complainant’s OCWEN mark. For the reasons discussed under this and the preceding heading, the Panel considers that Respondent’s conduct in this case constitutes bad faith registration and use of the Domain Name within the meaning of paragraph 4(a)(iii) of the Policy. While the Panel makes no finding as to whether the OCWEN mark should be considered “famous” as claimed by Complainant (because Complainant provided no evidence to support this assertion), nonetheless, there is no dispute that Respondent, who claims to be a stockholder of Complainant, was aware of Complainant and its OCWEN mark when he registered the Domain Name. Respondent admits that he intentionally targeted the OCWEN mark when choosing the Domain Name, which incorporates the OCWEN mark in its entirety along with the word “racketeering”.
Respondent claims that he has owned the Doman Name for three years and uses it for the sole purpose of reporting, commentary, criticism, and parody. However, as noted above, the Domain Name has been linked to a website offering the Domain Name for sale, or alternatively, indicating that the Domain Name is parked for free. Even if this content was automatically generated by the Registrar, WIPO Overview 3.0, section 3.5, states that “a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).” In sum, the Panel considers that Respondent’s primary motive in relation to the registration and use of the Domain Name was to capitalize on, or otherwise take advantage of, Complainant’s trademark rights. There is nothing in the record indicating that Respondent has used or made demonstrable preparations to use the Domain Name for purposes of legitimate criticism.
The Panel makes no findings regarding Respondent’s allegations of illegal activity or fraud on the part of Complainant, nor does the Panel evaluate Respondent’s arguments regarding whether the Domain Name is protected under United States law. The Panel observes, however, that even in the United States cases cited by Respondent, the courts instruct that one should look not only to the allegedly infringing domain name, but also to the underlying content of the website. See also in this regard WIPO Overview 3.0, section 2.6.2. Here, the content on the website linked to the Domain Name does not assist Respondent as it fails to provide any evidence of fair use.
Accordingly, Complainant has satisfied the third element 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 Name <ocwenracketeering.com> be transferred to Complainant.
Christopher S. Gibson
Date: February 5, 2019