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Argent Mortgage Company, LLC v. Suzanne Perez [2004] GENDND 1204 (21 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Argent Mortgage Company, LLC v. Suzanne Perez

Case No. D2004-0569

1. The Parties

The Complainant is Argent Mortgage Company, LLC, a Delaware limited liability company with a place of business in Irvine, California, United States of America, and is represented by Buchalter Nemer Fields & Younger, United States of America.

The Respondent is Suzanne Perez, with an address in Villa Park, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <argentmtg.com>, is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 30, 2004. On July 30, 2004, the Center transmitted by e-mail to Register.com a request for registrar verification in connection with the domain name at issue. Register.com responded by e-mail on July 30, 2004, confirming that Respondent is listed as the registrant for the domain name, indicating that it had “locked” the domain name, confirming several details of its registration agreement, and providing the Center with contact information from its “whois” database.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”). In accordance with Rules 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 3, 2004. In accordance with Rule 5(a), the Response was due on August 23, 2004. The Response was filed with the Center on that date.

The Center appointed Debra J. Stanek as the Sole Panelist in this matter on September 8, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence to ensure compliance with Rule 7.

4. Factual Background

In September 2001, Complainant registered the <argentmortgage.com> domain name. Complainant owns United States federal trademark registrations for several “ARGENT MORTGAGE” service marks for mortgage banking, lending, and brokerage services, which it has used since May 2002.

According to the Complaint, Respondent registered the <argentmtg.com> domain name on September 17, 2003, at a time when she was an employee of Complainant. Complainant requested that Respondent sell the registration to it, however, Respondent declined to do so. Sometime thereafter, Respondent left Complainant’s employ and the visitors to the “www.argentmtg.com” website were advised: “Your Account Executive Suzanne Perez Has Moved to: ResMae, ‘Mortgage lending done right’.” The page also included telephone and telecopy numbers and a reference to a form that could be used to contact Respondent.

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions:

The disputed domain name is confusingly similar to Complainant’s ARGENT MORTGAGE marks. It simply substitutes the abbreviation “mtg” for the term “mortgage.”

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is no longer an employee of Complainant or in any way affiliated with Complainant. Respondent’s subsequent employer, ResMae, is a competitor of Complainant.

Complainant also asserts that Respondent is not making a legitimate non-commercial or fair use of the domain name. Complainant asserts that by virtue of its federal trademark registrations and use of the ARGENT MORTGAGE marks it is the “only party that has a legitimate right and interest to the disputed domain name.”

Respondent registered and is using the disputed domain name in bad faith because:

(1) Respondent is “typosquatting,” capitalizing on the fact that those seeking Complainant’s “www.argentmortgage.com” site may inadvertently use the abbreviation “mtg” instead of “mortgage.”

(2) Respondent “clandestinely” registered the domain name without the knowledge or consent of Complainant, which was then her employer.

(3) Respondent used the domain name to redirect visitors, presumably seeking Complainant’s “www.argentmortgage.com” site, to her at her new employer, a competitor of Complainant.

(4) There can be no legitimate reason for Respondent’s choice of the domain name in light of Complainant’s prior use and registration of ARGENT MORTGAGE marks.

B. Respondent

Respondent concedes that Complainant has rights in the ARGENT MORTGAGE COMPANY mark, but distinguishes that mark from the disputed domain name, which contains the abbreviation “mtg,” not “mortgage.” Further, Respondent disputes that Complainant may acquire trademark rights in the name of a color¹ that has been “in common parlance for hundreds of years.”

Complainant has acknowledged that Respondent has rights or legitimate interests in respect of the disputed domain name because Complainant expressed an interest in acquiring the disputed domain name from her and stated, in an e-mail message, that Respondent “owns” the disputed domain name. When Respondent indicated that she did not wish to sell the registration, Complainant did not contest her ownership until after she resigned from Complainant’s employ.

Respondent asserts that she has been or is commonly known by the domain name.

Respondent has not registered and is not using the domain name in bad faith because she purchased the name with her own funds, almost a year before any dispute arose, with Complainant’s knowledge and consent. Respondent also asserts that she used the domain name only “personally” and has not used the domain name in competition with Complainant, for commercial purposes, or to disrupt Complainant’s business. She further asserts that Complainant has provided no evidence that she has done so.

6. Discussion and Findings

In order to prevail, the Complainant must prove:

(i) The <argentmtg.com> domain name is identical or confusingly similar to Complainant’s ARGENT MORTGAGE marks.

(ii) Respondent has no rights or legitimate interests in the <argentmtg.com> domain name.

(iii) The domain name has been registered and is being used in bad faith.

See Policy, Paragraph 4(a). The Policy sets out four sets of circumstances that may evidence a Respondent’s bad faith registration and use under Paragraph 4a(iii), see Policy, Paragraph 4(b), as well as examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, Paragraph 4(c).

A. Identical or Confusingly Similar

Complainant has established its rights in the ARGENT MORTGAGE marks by providing proof of its federal trademark registrations and printouts of pages from its own website. Respondent’s argument that Complainant may not acquire trademark rights in the term “argent,” an ordinary word “in common parlance,” is not well taken. Under general principles of U.S. trademark law, an ordinary word may be used as a trademark. However, the fact that an ordinary word has trademark significance for certain goods and services does not mean that the trademark owner has a monopoly on the term -- others remain free to use it for its ordinary meaning. For example, the fact that APPLE is a well-known trademark for computers does not in any way preclude others from using the term “apple” for fruit. Here, Complainant has established rights in its ARGENT MORTGAGE marks for mortgage and related services.

The <argentmtg.com> domain name effectively incorporates the heart of Complainant’s ARGENT MORTGAGE marks. Use of the abbreviation “mtg” instead of “mortgage” is a minor alteration, which does not alter this conclusion. The dominant feature of the name is the term “argent.” As other panels have concluded, the substitution of a common abbreviation for a descriptive term, here “mtg” for “mortgage,” does not avoid confusing similarity.²

The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s trademark.

B. Respondent Has No Rights or Legitimate Interests in the Domain Name

Establishing that Respondent has no rights or legitimate interests in the domain name -- proving a negative -- can be difficult. Some panels have held that the burden of establishing this element is light, because the evidence lies within a respondent’s knowledge. Others have held that after a complainant makes a prima facie showing, the burden shifts to the respondent to rebut complainant’s evidence. These approaches are consistent with the general structure of the Rules. Rule 3(b)(ix)(2) requires a complainant to show why the respondent “should be considered” as having no rights or interests in the domain name (not why the respondent has no rights or interests in the name), while Rule 5(b) requires the respondent to “[r]espond specifically to the statements and allegations” of the complaint (emphasis added).

The Panel concludes that Complainant has adequately demonstrated that none of the three examples set forth in Paragraph 4(c) of the Policy are applicable here.

First, it does not appear that Respondent was making a bona fide use of the domain name before notice of the dispute. As noted above, the disputed domain name is confusingly similar to Complainant’s mark. Visitors to the <www.argentmtg.com> site were directed to contact Respondent, who worked for a competitor. Such use is not bona fide.

Second, it does not appear that the disputed domain is Respondent’s legal name or is used to identify Respondent. Apart from the “whois” printout, identifying Respondent as an individual named “Suzanne Perez,” Complainant has not provided any evidence of trademark searches or other investigations.³ However, Respondent’s name does not resemble the domain name or the ARGENT MORTGAGE marks⁴. Further, Complainant has established prior use of its mark, making it difficult to conceive of circumstances in which Respondent might have legitimately used or become known by the domain name.

Third, it does not appear that Respondent is making a legitimate non-commercial or fair use of the domain name. In this regard, it is important that Respondent’s site does not use the term “argent” in its primary sense, for its ordinary meaning. Instead, it appears that Respondent was using the domain name to refer to Complainant. This is borne out by the copy of Respondent’s web page, which strongly suggests that Respondent is using the domain name to reroute visitors who were seeking a representative of Complainant to Respondent at her new, competing employer.

Respondent argues that Complainant’s e-mail message stating that she “owned” the <argentmtg.com> domain name rebuts Complainant’s arguments. The Panel disagrees. A trademark owner’s acknowledgement that a third party owns a domain name registration is not evidence that the registrant has rights or legitimate interests in the domain name. Nor does the fact that Complainant did not contest Respondent’s ownership until after she resigned from Complainant’s employ rebut Complainant’s prima facie showing.

Finally, Respondent’s conclusory assertion, unsupported by any evidence, that she has been commonly known by the domain name is not sufficient to rebut Complainant’s prima facie showing.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Respondent Has Registered and Used the Domain Name in Bad Faith

Complainant has established that Respondent has registered and used the domain name in bad faith by showing that Respondent used the name to intentionally try to attract, for commercial gain, visitors to Respondent’s site, by creating a likelihood of confusion with the ARGENT MORTGAGE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or the goods and services by Respondent. See Policy, Paragraph 4(b)(iv).

The fact that Respondent may have used her own funds and used the website “personally” and not directly on behalf of her new employer does not change this conclusion. It is apparent that Respondent used the domain name to attract visitors who were seeking her (and perhaps others) in her capacity as representatives of Complainant and to redirect them to herself at her new employer.

Finally, Respondent’s claim that she registered the domain name with Complainant’s knowledge and consent is not supported by any evidence. As noted above, it does appear that Complainant became aware of Respondent’s registration. However, Respondent has provided no evidence that Complainant consented to her registration and use of the domain name. In fact, the evidence provided by Complainant shows that Complainant did not consent.

Under these circumstances, the Panel finds that Respondent has registered and used the domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <argentmtg.com> be transferred to Complainant.

Debra J. Stanek
Sole Panelist

Dated: September 21, 2004

¹ Respondent cites a dictionary definition of the word “argent” as meaning the colors silver or white.

² For the same reason, omission of the term “company,” which appears in Complainant’s trademark registrations, similarly does not avoid confusing similarity.

³ These might include results of searches of: (a) federal and state trademark databases for “argentmtg” marks owned by Respondent, (b) telephone listings for Villa Park, California and the surrounding area, or (c) databases of California corporations.

⁴ In this regard, it is worth noting that the Response identifies the Respondent as an individual named “Suzanne Perez.”