DECISION

IndyMac Bank F.S.B. v. Domain Owner a/k/a Lee Wigod

Claim Number:  FA0303000150814

PARTIES

Complainant is IndyMac Bank F.S.B., Pasadena, CA (“Complainant”), represented by B. Brett Heavner, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.. Respondent is Domain Owner a/k/a Lee Wigod, Arlington Heights, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <312loanworks.com >, <chicagoloanworks.com>, <loanworkschicago.com>, registered with Enom.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 20, 2003; the Forum received a hard copy of the Complaint on March 21, 2003.

On March 24, 2003, Enom confirmed by e-mail to the Forum that the domain names <312loanworks.com >, <chicagoloanworks.com>, and <loanworkschicago.com> are registered with Enom and that Respondent is the current registrant of the names.  Enom has verified that Respondent is bound by the Enom 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 March 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 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@312loanworks.com, postmaster@ chicagoloanworks.com, and postmaster@loanworkschicago.com, by e-mail.

Respondent submitted an untimely Response on April 22, 2003.  Complainant submitted an untimely Reply on April 24, 2003.  The Panel, in its discretion, has considered these submissions.

On April 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant

Respondent’s <312loanworks.com >, <chicagoloanworks.com>, and <loanworkschicago.com> domain names are confusingly similar to Complainant’s LOANWORKS mark.  Respondent does not have any rights or legitimate interests in these domain names.  Respondent registered and used the domain names in bad faith.

B.  Respondent

When the word "loanworks" is combined with other words, the domain names produced are not identical or confusingly similar or deceptive to the LOANWORKS mark.  Many other domain names containing the word "loanworks" are registered and are owned and operated by parties other than the claimant.

The domain name <312loanworks.com > was registered as an adjunct to the phone number 312-562-6967 (or 312 Loanworks ) that Respondent, Lee Wigod, has owned and used in his business for many years.  This domain address is inoperative and intended for future usage.

The domain names <chicagoloanworks.com>and <loanworkschicago.com> were not registered in order to compete with or to interfere with the business operations of Complainant, IndyMac Bank, but were intended to aid in taking advantage of the affiliate program that Indy Mac offers to real estate and mortgage professionals to direct origination business to IndyMac Bank and to receive a fee from IndyMac Bank for doing so.  All actions by Respondent under these domain names sought to direct additional business to the affiliate programs of IndyMac Bank and not to divert any business as alleged.

Respondent claims no intent to sell domain names to IndyMac Bank at a profit. 

Prior to notice of this dispute, Respondent advertised under and used both <chicagoloanworks.com> and <loanworkschicago.com> as tradenames and was commonly known by the general public under these tradenames.

C. Additional Submission

Complainant contends that the domain names are confusingly similar to the LOANWORKS mark.  IndyMac Bank has not authorized Respondent to register and/or use the domain names.  Moreover, IndyMac Bank’s authorized Broker Associates are prohibited from using the LOANWORK marks in any advertising, including domain names.

FINDINGS

Complainant is one of the leading mortgage lenders in the U.S. and earned $143 million in 2002.  Complainant has used the LOANWORKS mark in relation to its mortgage origination services since 1997.  Complainant holds numerous trademark registrations for the LOANWORKS mark with the U.S. Patent and Trademark Office including Registration Number 2,238,058 registered on February 19, 1997 and Registration Number 2,238,162 registered on April 13, 1999.

Complainant uses the mark specifically to identify its online mortgage application services, such as formal loan approval in three minutes, mortgage loan advance approval letters, and customized loan rates, fees and cost estimates.  The total loans funded through Complainant’s LOANWORKS program in 2002 was $537 million.  Complainant administers its LOANWORKS services from <loanworks.com>.

Respondent registered <312loanworks.com > on July 28, 2002 and both <chicagoloanworks.com> and <loanworkschicago.com> on October 10, 2001.  Respondent is employed by one of Complainant’s broker associates, Citywide Mortgage Pros.  A broker associate is someone who is licensed to use Complainant’s electronic mortgage information transaction system to facilitate the processing of mortgage applications.  The application to be a broker associate specifically prohibits the use of the LOANWORKS marks to advertise without prior written consent by Complainant.  Complainant has never authorized Respondent, or its employer, to use the LOANWORKS mark.

When contacted by Complainant’s attorney to cease use of the disputed domain names, Respondent insisted that it had substantial sums of money invested in the development of the <312loanworks.com> domain name, and it “could not simply give it away by transferring it to your client.”

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has established that it has rights in the LOANWORKS mark through registration with the U.S. Patent and Trademark Office, as well as continuous use in relation to its online mortgage services.

Respondent’s <chicagoloanworks.com> and <loanworkschicago.com> domain names are confusingly similar to Complainant’s LOANWORKS mark because Respondent merely added the name “Chicago,” a geographic identifier at the beginning or end of Complainant’s LOANWORKS mark.  The addition of geographic terms to another’s mark does not add any distinct characteristics capable of overcoming a claim of confusing similarity.  See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark and that "the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).

Respondent’s <312loanworks.com> domain name is confusingly similar to Complainant’s LOANWORKS mark because it merely adds the numerical prefix “312.”  This addition of numbers does not hold any distinctive significance and thus does not create a domain name capable of overcoming a Policy ¶ 4(a)(i) analysis.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

 

Because Respondent registered and uses the domain names to infringe Complainant’s rights in its LOANWORKS mark and to trade off of Complainant’s goodwill, Respondent’s registration and use/intended use of the domain names does not and cannot constitute a bona fide offering of goods or services pursuant to Section 4(c)(i) of the UDRP.  See Yahoo! Inc. v. Microbiz, Inc., D2000-1050 (WIPO November 7, 2000) (“use that intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks). 

Respondent is not commonly known as CHICAGO LOANWORKS, LOANWORKS CHICAGO, 312 LOANWORKS, <chicagoloanworks.com>, <loanworkschicago.com> or <312loanworks.com>.  Based on the fact that the license agreement of Respondent’s employer specifically states that Respondent needs special permission to use Complainant’s trademark, and that Respondent does not have this permission, it is clear that Respondent cannot be commonly known by any variation of the LOANWORKS mark.  Respondent cannot justify his misappropriation of a trademark in a domain name merely through use of a trade name.  See Eurotech, Inc. Cosmos European Travels AG, 213 F. Supp.2d 612 (E.D. Va. 2002) (infringer's incorporation of the allegedly infringing domain name did not make it a legal name or commonly used name); see also Yahoo! Inc. v. Yahoo-Asian Company Limited, D2001-0051 (WIPO February 28, 2001) (finding that respondent’s business name failed to establish respondent’s legitimate interest in the disputed domain names); see also The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., D2000-0113 (WIPO April 13, 2000) (holding that "the collateral trademark use necessary to allow resale of [c]omplainant's products is not enough to give [r]espondent proprietary rights in [c]omplainant's trademarks, and certainly not enough to confer the right to use these trademarks as domain names" including <bostitchnails.com> and <bostitchtools.com>).   Thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is an employee of one of Complainant’s broker associates.  Broker associates are not licensed to use Complainant’s mark without special written permission.  Based on this information the Panel infers that Respondent has actual notice of Complainant’s rights in the LOANWORKS mark.  Respondent registered <chicagoloanworks.com>, <loanworkschicago.com> and <312loanworks.com> despite this actual notice.  Registration of an infringing domain name, despite actual notice of Complainant’s rights, is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  The Panel finds that Respondent registered <chicagoloanworks.com>, <loanworkschicago.com> and <312loanworks.com> in bad faith pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also 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).

Respondent is using the disputed domain names to attract Internet users interested in Complainant to Respondent’s own website.  Respondent, like Complainant, is a provider of mortgage services and is therefore profiting from the user confusion created by its use of <chicagoloanworks.com>, <loanworkschicago.com> and <312loanworks.com>.  The use of an infringing domain name to cause Internet user confusion for Respondent’s commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Respondent’s registration of the three LOANWORKS-formative domain names that are the subject of this Complaint constitutes a pattern of registering trademark-related domain names in bad faith pursuant to Section 4(b)(ii) of the UDRP.  See General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, D2000-0452 (WIPO July 10, 2000) (finding bad faith in the respondent’s registration of three trademark-related domain names).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <312loanworks.com >, <chicagoloanworks.com>, and <loanworkschicago.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 1, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/442.html