WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lennar Mortgage, LLC, Lennar Pacific Properties Management, Inc. v. Registration Private, Domains By Proxy, LLC/ Carolina Rodrigues Fundacion Comercio Electronico
Case No. D2021-0165
1. The Parties
The Complainant is Lennar Mortgage, LLC., Lennar Pacific Properties Management, Inc., United States of America (“United States”), represented by Slates Harwell LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC., United States of America / Carolina Rodrigues Fundacion Comercio Electronico, United States.
2. The Domain Name and Registrar
The disputed domain name <eagleshm.com> is registered with GoDaddy.com, LLC., (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2021. On January 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 26, 2021 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 amendment to the Complaint on January 27, 2021.
The Center verified that the Complaint together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on March 17, 2021. 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 Complainants are part of a financial services group that has traded under the name “Eagle Home Mortgage” since around 1997. The Complainants are collectively referred to below as “the Complainant” unless it is necessary to refer to them separately.
The Complainant owns United States trade mark no. 4287562 for EAGLE HOME MORTGAGE, filed on June 24, 2011, registered on February 12, 2013, in international class 36.
Since at least 2012, the Complainant has operated a website at “www.eaglehm.com”.
The disputed domain name was registered on December 18, 2020.
The disputed domain name has been used for a website with a range of pay per click (“PPC”) links.
The Respondent did not respond to the Complainant’s cease and desist letter dated December 29, 2020.
The Respondent was found to have registered and used domain names in bad faith in at least 150 previous UDRP cases including one case involving two domain names reflecting the Complainant’s trade marks. See Lennar Pacific Properties Management, Inc., Lennar Corporation v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundación Comercio Electrónico, WIPO Case No. D2020-1416.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The disputed domain name is confusingly similar to the Complainant’s trade marks as it is a common, obvious or intentional misspelling thereof.
The disputed domain name is virtually identical to the Complainant’s own domain name, merely adding the letter “s” between “eagle” and “hm”, which is an abbreviation for home.
The Respondent lacks rights and legitimate interests in the disputed domain name.
The Complainant has been unable to locate any evidence that the Respondent has used the disputed domain name for a bona fide offering of goods or services. Nor is there any evidence that the Respondent has been commonly known by, or is making any legitimate noncommercial or fair use of, the disputed domain name.
The disputed domain name was registered and is being used in bad faith, including to disrupt the Complainant’s business and to intentionally create a likelihood of confusion with the Complainant’s marks.
The Respondent’s website is a parking page with PPC links designed to capitalise on the goodwill of the Complainant’s marks.
The Respondent registered the disputed domain name to redirect the Complainant’s customers to a fake site, so as to obtain sensitive information from them by use of malware or viruses or to send them spoof or spam emails. The Complainant’s customers regularly provide sensitive financial information via the Complainant’s own website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
The principles governing the question of whether a complaint may be brought by multiple complainants are set out in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel is satisfied that (a) the Complainants, which are part of a group of companies, have a specific common grievance against the Respondent and that the Respondent has engaged in common conduct that has affected the Complainants in similar fashion and (b) it would be equitable and procedurally efficient to permit the consolidation.
B. Identical or Confusingly Similar
The Complainant has established rights in the mark >EAGLE HOME MORTGAGE by virtue of its registered trade mark .
Section 1.7 of the WIPO Overview 3.0, makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing.
Section 1.9 of WIPO Overview 3.0 adds that a domain name which consists of an intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
Here, the disputed domain name consists of the word “eagle” – the dominant term in the Complainant’s trade mark – followed by “shm”, which comprises an abbreviation of “home mortgage”, the two complementary terms in the trade mark with the additional letter “s” interposed, doubtless for typo-squatting purposes.
For the reasons explained above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with PPC links relating to a range of goods and services without any obvious legitimate connection with the entirety of the disputed domain name (i.e., including “shm”). In the Panel’s view, such use of the disputed domain name is not of itself sufficient to confer rights or legitimate interests.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Panel notes the following:
1. The disputed domain name closely mirrors the distinctive version of its trade mark that the Complainant uses for its own website: ”www.eaglehm.com”, with an extra “s” added, no doubt as a deliberate misspelling of the Complainant’s name intended to trick Internet users.
2. It is therefore difficult to conceive of any legitimate purpose for the Respondent’s selection of the disputed domain name.
3. The Respondent has not responded to the Complainant’s pre-action communications, or to the Complaint, to explain why it selected the disputed domain name or to dispute the Complainant’s assertions of bad faith.
4. The Respondent has engaged in a substantial pattern of cybersquatting activity, having been found in previous UDRP cases to have registered and used many other domain names in bad faith, including two domain names reflecting other trade marks of the Complainant.
In these circumstances, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has therefore established the third element of paragraph 4(a) 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 disputed domain name, <eagleshm.com> be transferred to the Complainant.
Date: March 31, 2021