DECISION

First American Financial Corporation v. Marc Stengel

Claim Number: FA0311000211937

PARTIES

Complainant is First American Financial Corporation, 5601 East La Palma Avenue, Anaheim, CA 92807 (“Complainant”) represented by Christopher Jafari. Respondent is Marc Stengel, 110 Painters Mill Road, Suite 21, Owings Mills, MD 21117 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <leadtoloan.com>, <leadstoloan.com> and <leadtoloans.com> registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Edmund P. Karem as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 13, 2003; the Forum received a hard copy of the Complaint on November 19, 2003.

On November 14, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <leadtoloan.com>, <leadstoloan.com> and <leadtoloans.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 9, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@leadtoloan.com, postmaster@leadstoloan.com and postmaster@leadtoloans.com by e-mail.

A timely Response was received and determined to be complete on November 21, 2003.

On December 1, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edmund P. Karem as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it bases its Complaint on federal trademark of “Leads to Loans, Reg. No. 2,404,929”.   It contends this mark was federally registered on November 14, 2000 and was obtained for the purpose of providing an online interactive electronic database containing demographic data allowing mortgage lenders to create refined prospective customer lists to match defined customer profiles.    

Complainant contends the three domain names in question are confusingly similar to the trademark and would confuse Complainant’s clients. 

Complainant further contends Respondent has no legitimate interests or rights with respect to the domain names and is benefiting from Complainant’s reputation in connection with the name “Leads to Loans” and is therefore being unjustly enriched in the usage of the domain names, which actually promote a product of the Complainant.  Complainant also contends Respondent is a customer of Leads to Loans and is therefore benefiting from Complainant’s product. 

It is finally alleged that Respondent’s willful intent to interfere with Complainant’s business is for Respondent’s own commercial gain after being put on notice of Complainant’s trademark rights.             

 

B. Respondent

Respondent’s contention is that the domain names in dispute are generic and Complainant cannot monopolize words that are generic and relate to everyday transactions.  Respondent contends that the federal trademark department knows nothing about the mortgage industry and, if they were familiar with it, would not have granted a mark for generic terms.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Despite Respondent’s contention that the trademark would not have been granted if the federal trademark department knew the mortgage industry.  The fact is the certificate of registration was granted and contains a statement that “…this certificate was filed in the office; that the application was examined and determined to be in compliance with the requirements of the law and with the regulations prescribed by the Director of the United States Patent and Trademark Office; and that the Applicant is entitled to registration of the Mark under the Trademark Act of 1946, as Amended.”  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The service mark “Leads to Loans” is confusingly similar to the domain names in dispute.  It is only the plural of both Leads and Loans in the service mark that distinguishes the service mark from the domain names two of which have a plural on one of the words but not the other.  The similarity between the disputed domain names and the trademark name is likely to confuse Complainant’s clients who, in seeking Complainant’s website would inadvertently wind up at the Respondent’s website simply because of the failure to type an s.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark).

           Rights or Legitimate Interests

Respondent does not dispute that the product he is promoting from the websites in question is known to be a product of First American Financial Corporation and not of the Respondent.  Nor is there a dispute to the contention of the Complainant that Respondent is a customer of Leads to Loans and therefore is benefiting from Complainant’s product.  See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).        

Registration and Use in Bad Faith

On September 8, 2003, Complainant, through its corporate counsel, wrote to Respondent’s business address to advise that First American Financial Corporation owned the federally registered trademark Leads to Loans and thus had the exclusive right to control the use of the trademark in commerce.  The letter advised that Respondent’s use of <leadstoloan.com> was likely to cause confusion as to the origin of the services or products Respondent provides and the letter then demanded that Respondent cease the use of the web address. 

On October 10, 2003, Complainant’s corporate counsel again wrote to Mr. Stengel advising that the certified letter dated September 8^th had been received at Respondent’s address on September 15, 2003 and requesting that Respondent either contact Complainant’s corporate counsel or provide a written response. 

The fact that the names of the service mark and the domain names are confusingly similar and that Respondent is a customer of Complainant’s product “Leads to Loans” is evidence that Respondent is using the domain name to create a likelihood of confusion with Complainant’s mark and attempting to interfere with Complainant’s business for Respondent’s commercial gain.  The failure of Respondent to answer Complainant’s letters is further evidence for that conclusion.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

DECISION

Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <leadtoloan.com>, <leadstoloan.com> and <leadtoloans.com> domain name be TRANSFERRED from Respondent to Complainant.

Edmund P. Karem, Panelist
Dated: December 16, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1116.html