DECISION

1-800-East West Mortgage Company, Inc. v. Ling Shun Shing

Claim Number:  FA0307000175288

PARTIES

Complainant is 1-800-East West Mortgage Company, Inc., Peabody, MA (“Complainant”) represented by Seán F. Heneghan.  Respondent is Ling Shun Shing, Shanghai, China (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <isolmyhouse.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com (hereinafter, “Dotregistrar.Com”).

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 29, 2003; the Forum received a hard copy of the Complaint on August 1, 2003.

On July 30, 2003, Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <isolmyhouse.com> is registered with Dotregistrar.Com and that Respondent is the current registrant of the name. Dotregistrar.Com has verified that Respondent is bound by the Dotregistrar.Com 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 August 11, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 2, 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@isolmyhouse.com 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 September 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <isolmyhouse.com> domain name is confusingly similar to Complainant’s ISOLDMYHOUSE.COM trademark.

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

3. Respondent registered and used the <isolmyhouse.com> domain name in bad faith.

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

FINDINGS

Complainant is New England’s leading mortgage lender, offering various types of mortgage products, and funding over $1 billion in mortgages per year.  Complainant offers “companion services,” such as online real estate listings, at the domain name <isoldmyhouse.com> and in a print publication under the mark ISOLDMYHOUSE.COM.  Complainant also produces and broadcasts a weekly television show on the Boston-area Warner Bros. affiliate station under the same mark.

Complainant has promoted its mark extensively, with full color ads appearing in 300 regional newspapers and radio spots on 297 New England area stations.  Complainant asserts that its advertising and promotions budget related to products and services marketed under the ISOLDMYHOUSE.COM mark reaches $1.7 million monthly.

Complainant has used the ISOLDMYHOUSE.COM mark and <isoldmyhouse.com> domain name continuously in commerce since 2000, and currently reports that the associated website receives fifty million hits per month.

Respondent registered the <isolmyhouse.com> domain name on October 15, 2002 and has used the name to redirect Internet users to a search engine that pays referrers (such as Respondent) per click.  The page also links users to “Popular Searches” that redirect them to websites offering services in competition with Complainant’s. 

Complainant also provided evidence that Respondent registered several other domain names that reflect typographical misspellings of famous trademarks, including <sallliemae.com>, <bananarepulbic.com>, and <krispeykreme.com>, among others.  Respondent has been successfully challenged under the UDRP in at least six administrative hearings, several of which involved domain names of financial institutions and mortgage companies.  See Ameriquest Mortgage Co v. Shing, D2003-0294 (WIPO June 6, 2003); Citigroup Inc. v. Shing, D2003-0328 (WIPO June 2, 2003); ChevronTexaco Corp. v. Shing, FA 146570 (Nat. Arb Forum Apr. 14, 2003); LTD Commodities LLC v. Shing, FA 146938 (Nat. Arb Forum Apr. 1, 2003); Bank of Am. Corp. v. Shing, FA 132447 (Nat. Arb. Forum Dec. 30, 2002); ABC Distrib., Inc. v. Shing, FA 126640 (Nat Arb. Forum Dec. 11, 2002).

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 has provided substantial evidence of its continuous use of the ISOLDMYHOUSE.COM mark in commerce since 2000.  In addition to using the mark online as a domain name, Complainant has used the mark in print and on television and radio.  While all domain names are not necessarily protected as trademarks, Complainant’s extensive use of the mark and significant expenditures in promoting the mark have allowed ISOLDMYHOUSE.COM to achieve recognition at common law.

Complainant has not provided evidence that its mark has been registered; however, Paragraph 4(a)(i) of the Policy has been interpreted as not requiring registration of a mark for a Complainant to bring its claim.  Common law marks are also protected by the Policy.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also 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”).

Furthermore, it is not significant that Complainant operates and developed much of the goodwill of its mark in a country other than Respondent’s place of residence.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO April 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether Complainant’s mark is registered in a country other than that of Respondent’s place of business).

Having established Complainant’s rights in ISOLDMYHOUSE.COM, the <isolmyhouse.com> domain name is confusingly similar to Complainant’s mark as it reflects a variation that would be identical, but for the omission of one letter.  Given the insignificance of the change and the fact that the resultant domain name has no apparent meaning of its own, the Panel concludes that the domain name is confusingly similar to Complainant’s mark.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not provided this Panel with any evidence of current or planned future use of the disputed domain name.  In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the domain name, the Panel may presume that no such rights or interests exist.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent has apparently not used the domain name for any purpose other than to link Internet users to a search engine from which Respondent is probably earning referral fees.  By trading on the goodwill Complainant has built up in its mark and causing user confusion as to the source of the website connected to the domain name (and real estate-related links on the site), Respondent has not engaged in a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See WeddingChannel.com Inc. v. Vasiliev a/k/a NA & Free Domains Parking, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites where Respondent presumably received a referral fee for each misdirected Internet user was not a bona fide offering of goods or services as contemplated by the Policy); see also TM Acquisition Corp. v. Sign Guards a/k/a William Moore, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).

Furthermore, Respondent’s name, as this Panel knows it, is Ling Shun Shing.  There is no evidence to suggest that Respondent is commonly known by the disputed domain name 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).

Accordingly, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has demonstrated a pattern of registering and using domain names that trade on the fame and goodwill of well-known marks.  In this instance, Respondent has registered and used the <isolmyhouse.com> domain name to profit by referring users seeking Complainant’s site to a commercial search engine and other competing websites.  Respondent’s behavior typifies bad faith as defined in Policy ¶ 4(b)(iv).  See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the disputed domain name to a search engine at <iwin.com>, presumably receiving a portion of the advertising revenue from the site); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <isolmyhouse.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 17, 2003

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