DECISION

Federal Home Loan Mortgage Corporation v. Willie Stroud

Claim Number:  FA0304000155173

PARTIES

Complainant is Federal Home Loan Mortgage Corporation, McLean, VA (“Complainant”) represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. Respondent is Willie Stroud, Moreno Valley, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homesteps.info>, registered with Go Daddy Software.

PANEL

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

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 17, 2003; the Forum received a hard copy of the Complaint on April 18, 2003.

On April 21, 2003, Go Daddy Software confirmed by e-mail to the Forum that the domain name <homesteps.info> is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 April 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 12, 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@homesteps.info by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 21, 2003 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <homesteps.info> domain name is identical to Complainant’s HOMESTEPS mark.

2. Respondent does not have any rights or legitimate interests in the <homesteps.info> domain name.

3. Respondent registered and used the <homesteps.info> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Congress chartered Complainant in 1970 to create a continuous flow of funds to mortgage lenders in support of homeownership and rental housing.  Complainant has indirectly financed one out of six homes in the U.S. and home ownership for more than 30 million families.  Complainant conducts business in the U.S. residential secondary mortgage market and the global securities market.  Specifically, Complainant purchases residential mortgages and issues mortgage-backed or mortgage-related securities in an effort to provide homeowners and renters with lower housing costs.

Complainant has a division called HomeSteps Assets (“HomeSteps”) that has been in business since 1997.  HomeSteps’ mission is to improve the quality of life of all Americans by making accessible housing a reality.  In an effort to accomplish this mission HomeSteps repairs and markets foreclosed homes throughout the United States.  Complainant provides information to the general public about HomeSteps’ services at the <freddiemac.com> and <homesteps.com> websites.  At the <homesteps.com> website, Complainant provides comprehensive, up-to-date information about affordable housing for both real estate brokers and prospective home purchasers, including financing options and listings of houses available for purchase.

Complainant owns three newly registered United States trademarks for the HOMESTEPS mark, including Reg. Nos. 2,565,489; 2,682,303; and 2,682,304.  The earliest registration date for the HOMESTEPS mark is April 30, 2002.  However, all of the trademark registrations with the United States Patent and Trademark Office indicate November 1997 as the first use in commerce.  The HOMESTEPS mark has garnered a substantial amount of goodwill for Complainant through extensive and exclusive use of the mark since 1997.  Furthermore, due to widespread and substantial national use, the HOMESTEPS mark has become well-known throughout the United States and famous in the real estate community. 

Respondent registered the domain name on October 7, 2001.  Complainant has discovered that Respondent is a real estate broker who maintains a website located at <4smarthomebuyers.com>.  Respondent’s website contains information about Complainant, a link to Complainant’s <freddiemac.com> website, a description of Complainant’s FREDDIE MAC services and an article quoting FREDDIE MAC’s market surveys and studies. 

Respondent does not actively use the domain name in connection with a content filled website.  The domain name currently links to a webpage that states “under construction” and “Coming Soon! www.homesteps.info.”  The resulting “under construction” webpage also advertises services of Go Daddy, the Registrar. 

Complainant sent a cease-and-desist letter to Respondent on February 21, 2002, and has not received a response. 

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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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’s interests in the HOMESTEPS mark have been protected through trademark registration with the U.S. Patent and Trademark Office.  The first date of use in commerce for the HOMESTEPS mark was November 1997.  While the HOMESTEPS mark did not receive trademark registration status until April 30, 2002, Complainant continually used the HOMESTEPS mark since 1997 and thus had common law interests in the mark prior to Respondent’s registration of the domain name on October 7, 2001.  Therefore, Complainant has demonstrated rights in the HOMESTEPS mark sufficient to bring a claim against Respondent for registering the domain name.  See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Respondent’s <homesteps.info> domain name incorporates Complainant’s entire HOMESTEPS mark.  The only difference between the <homesteps.info> domain name and the HOMESTEPS mark is the top level domain “.info.”  Since top-level domains are a required feature of every domain name, they are inconsequential when conducting a Policy ¶ 4(a)(i) “identical” analysis.  Therefore, since the second level domain is nothing more than a reflection of Complainant’s HOMESTEPS mark, Respondent’s <homesteps.info> domain name is identical to said mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

Complainant has submitted a prima facie Complaint, which contains allegations that Respondent lacks rights or legitimate interests in the <homesteps.info> domain name.  Respondent has allowed Complainant’s assertions to go uncontested.  As such, the Panel may presume that Complainant’s allegations are true, including Complainant’s reasoning for Respondent’s lack of rights or legitimate interests in the <homesteps.info> domain name.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”).

Furthermore, in the absence of a Response, the Panel will draw all reasonable inferences in Complainant’s favor.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent has held the <homesteps.info> domain name for approximately one and a half years without developing a use in association with an active website.  The <homesteps.info> domain name currently resolves to a website that claims that an active website is under development.  Complainant contends that Respondent was aware of Complainant’s interest in the HOMESTEPS mark because Respondent operates in the real estate industry.  Respondent has not contested this allegation and has not come forward to provide proof of a legitimate website development plan.  Therefore, Respondent’s passive holding of the <homesteps.info> domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).  See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Complainant claims that Respondent is a real estate broker who maintains a website at <4smarthomebuyers.com>.  Respondent does not come forward to deny this and the Panel presumes that the <4smarthomebuyers.com> web-address is Respondent’s business identity.  Moreover, the domain name registrant is Willie Stroud.  No evidence exists that would establish Respondent’s common identity as the <homesteps.info> domain name.  Therefore, Respondent has no rights or legitimate interests under 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <homesteps.info> domain name; thus, Policy ¶ 4(a)(ii) is satisfied. 

Registration and Use in Bad Faith

Policy paragraph 4(b) presents a non-exhaustive listing of bad faith criteria and the Policy expressly recognizes that other circumstances can evidence bad faith registration and use. When deciding whether Respondent registered or used the domain name in bad faith the Panel may consider the “totality of circumstances” surrounding the dispute. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

The fact that Respondent conducts business in the real estate market and Complainant has a large presence in the real estate industry suggests that Respondent was aware of Complainant’s interests in the HOMESTEPS mark, which Complainant extensively used for nearly five years prior to Respondent registering the identical domain name.  At Respondent’s <4smarthomebuyers.com> website, there are multiple references to Complainant and its FREDDIE MAC services.  Given that Respondent was knowledgeable about Complainant’s FREDDIE MAC services, since both parties are involved in the real estate industry, the Panel infers that Respondent was aware of Complainant’s interest in the HOMESTEPS mark at the time it registered the <homesteps.info> domain name.  Therefore, the Panel finds that Respondent registered the <homesteps.info> domain name in bad faith.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also 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").

Furthermore, the inactive use of the <homesteps.info> domain name to resolve to a website that merely claims a website is under development warrants a finding of bad faith use.  The Panel need not wait until there is an actual infringing use of the disputed domain name; it is enough that Respondent was aware of the HOMESTEPS mark and has not used the disputed domain name for any non-infringing legitimate purpose.  The Panel finds that Respondent’s inactive use of the <homesteps.info> domain name for approximately one and a half years constitutes bad faith use under Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) is 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 <homesteps.info> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  June 9, 2003