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Generic Top Level Domain Name (gTLD) Decisions |
LendingTree, Inc. v. RV Financial
Services
Claim Number: FA0408000307128
PARTIES
Complainant
is LendingTree, Inc. (“Complainant”), represented by Debra Ashley, 11115 Rushmore Drive, Charlotte, NC 28277. Respondent is RV Financial Services (“Respondent”), represented by John R.
Crossan, of Chapman and Cutler LLP, 111 W. Monroe St., #1700,
Chicago, IL 60603-4080.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <rvlendingtree.com>,
registered with Domaindiscover.
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.
Honorable
Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 3, 2004; the Forum received
a hard copy of the
Complaint on August 9, 2004.
On
August 10, 2004, Domaindiscover confirmed by e-mail to the Forum that the domain
name <rvlendingtree.com> is
registered with Domaindiscover and that the Respondent is the current
registrant of the name. Domaindiscover
has verified that Respondent is bound by the Domaindiscover 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 18, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
7, 2004 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@rvlendingtree.com by e-mail. Respondent was granted an extension to
submit its Response, setting a deadline of September 14, 2004.
A
timely Response was received and determined to be complete on September 14, 2004.
On September 27, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Hon. Richard B.
Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
LendingTree,
Inc. is a corporation incorporated under the laws of the State of Delaware,
with a principal place of business in Charlotte,
North Carolina.
1. LendingTree® is an on-line lending
service that matches borrowers in the field of consumer and mortgage lending
through its <lendingtree.com>
website.
Currently, its services are offered only in the United States.
2. LendingTree also owns, has
registered, and uses a domain name that incorporates the LENDINGTREE mark at
<lendingtree.com>. Through its
website LendingTree offers its services and conducts its business. Potential borrowers can apply for mortgage
and consumer loans through <lendingtree.com>. LendingTree shares this information with a network of lenders who
then propose loan packages based on the qualification form submitted
by the
consumer. LendingTree then provides the applicant with offers from lenders in
connection with the potential loan.
3. Since as early as February 14, 1998,
Complainant has continuously owned and used the name and mark LENDINGTREE in
connection with
its LendingTree® online lending services. The LENDINGTREE mark is registered with the
United States Patent and Trademark Office (“USPTO”).
4. Complainant has valid and
enforceable trademark rights in the mark LENDINGTREE. The certificate of registration for the LENDINGTREE mark
constitutes “prima facie evidence of the validity of the registered mark
and of
the registration of the mark, of the registrant’s ownership of the mark, and of
the registrant’s exclusive right to use the
registered mark in commerce on or
in connection with the goods or services specified in the registration.” 15
U.S.C. § 1115.
5. On May 7, 2002, the USPTO issued U.S.
Pat. No. 6,385,594 protecting this unique and innovative method of doing
business.
6. Extensive marketing has resulted in
tremendous growth for LendingTree. From
the first quarter of 1999 through the second quarter of 2004, the number of
completed qualification forms completed by consumers
visiting LendingTree’s
website (for loan products and realty services) rose from just over 80,000 to
more than 702,000 and the dollar
value of loans and brokerage services
requested on such completed qualification forms rose from approximately $5.1
billion to more
than $58 billion.
During the same time period, the number of such transactions that
resulted in closed loans and realty services rose from over 700
to more than 69,000,
with a corresponding dollar value rising from $48 million in the first quarter
of 1999 to over $7.6 billion
for the second quarter of 2004.
7. Studies have shown that
Complainant’s mark has acquired a significant amount of public recognition and
is considered a famous mark.
8. An October 2002 Nielsen/Net Ratings
survey ranked the <lendingtree.com> website the top site in the category
of online “loan
brands or channels.”
Also, a 2002 study by Chadwick Martin Bailey, Inc. found that the <lendingtree.com>
website and the LENDINGTREE trademark have
over three times the level of brand
awareness as do Complainant’s nearest competitors.
9. Respondent owns, has registered, and
uses the domain name <rvlendingtree.com>
for a competing lending site.
10. Respondent registered the domain
name <rvlendingtree.com> on or
about September 16, 2003.
11. Furthermore, the Whois Search
Results states that the actual name of the company is RV Financial Services.
12. Respondent offers lending services
under the name “RV Lending Tree” on the <rvlendingtree.com>
website.
13. Complainant first became aware of
this site on or about January 20, 2004.
Complainant contacted Respondent via e-mail and U.S. Certified Mail
requesting that Respondent cease the use of the “RV Lending Tree”
name and
transfer the domain name to LENDINGTREE.
14. On or about February 13, 2004, Mr.
Bob Becker, who identified himself as legal counsel for RV Lending Tree
contacted Complainant. Mr. Becker
stated that he needed to confer with his client. Complainant did not hear back from Mr. Becker.
15. <rvlendingtree.com>
is confusingly similar to the trademark LENDINGTREE and <lendingtree.com>
in that the only difference is the addition of the
letters “rv.” However, “rv” is a well-known acronym for
the term “recreational vehicle.” Thus,
“rv” may give the impression to Internet users that the domain name and website
are owned by the legitimate owner of the trademark
LENDINGTREE. See Dr. Ing. h.c. F. Porsche AG v.
Kang, D2004-0331 (WIPO Jun. 23, 2004) (finding that “the addition of the
term ‘usa’ does not diminish, but rather increases confusion”
in the domain
name <porscheusa.com>).
16. Furthermore, the addition of the
term “rv” might indicate an affiliation or sister company that LendingTree,
Inc. created specifically
to accommodate the needs and requests of such a
market. See Microsoft Corp.
v. N.R. Vinod, VinSoft, D2004-0310 (WIPO Jun. 23, 2004) (finding that the
addition of words to a name is a “common way of indicating subdivisions of
global
enterprises, or the geographical area that goods are offered under a
trademark”).
17. <rvlendingtree.com>
is being used to offer loan services that compete directly with the services
under the LENDINGTREE mark and at the <lendingtree.com>
website.
18. Respondent has no relationship with
or permission from Complainant for the use of the LENDINGTREE mark.
19. Complainant has acquired exclusive
rights to use its LENDINGTREE mark in conjunction with lending services that
Complainant has been
providing under that mark.
20. Respondent has no legitimate
trademark rights, business plans or any connection to the words “RV,” “LENDING”
and “TREE.” Rather, Respondent
registered the domain name in bad faith with the intention of taking advantage
of the goodwill that Complainant
has acquired through its honest and diligent
marketing efforts.
21. Respondent’s true purpose in
registering the domain name is to profit from the goodwill associated with the
LENDINGTREE mark and <lendingtree.com>
website. This is clearly evident from the fact that:
(i)
Respondent
is not known by the name “RV Lending Tree,” but rather operates RV Financial
Services, and uses the <rvlendingtree.com>
website to lure potential customers from the <lendingtree.com> site.
(ii)
Respondent
is using the <rvlendingtree.com>
website to offer competing lending services;
(iii)
Respondent
is using the domain name without the consent or approval of LendingTree; and
(iv)
Complainant
has written to Respondent asking Respondent to cease and desist use of the
domain name.
22. Further evidence of Respondent’s bad
faith is its attempt to trade off of the goodwill of Complainant’s LENDINGTREE
mark that has
substantial brand recognition in the United States. “[A]s the
Respondent and Complainant are engaged in the same industry, the Respondent
should have been aware of the Complainant’s famous mark. Its registration of
the domain names at issue clearly constitutes bad faith.”
See Korn/Ferry
Int’l v. CareerMosaic Cornperry, Inc., FA
97117 (Nat. Arb. Forum June 7, 2001).
B.
Respondent
(a) The domain name of Respondent is not
identical to the service mark in which Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶
4(a)(i). RVLENDINGTREE and LENDINGTREE
are distinct in their principal, distinctive initial parts, RVLE-- and LEND--.
(b) The domain name of Respondent is not
substantially similar to the service mark in which Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶
4(a)(i). The principal initial parts
are different, and the remainder is descriptive of a loan-brokering arrangement
now popularized on the
Internet by Complainant and others.
(c) Respondent adopted its domain name
in good faith and without intent to trade on any prior rights of others. Complainant does not lend money to or for
purchase of recreational vehicles, so no one coming to Respondent would have
gone to Complainant
in any event.
Respondent does not make mortgage or personal loans as does Complainant,
so no one coming to Respondent would have gone to Complainant
in any event, either. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶
4(a)(ii).
(d) There has appeared no actual
confusion between Complainant’s mark and website and that of Respondent in the
many months’ time the
two domain names have continued in coordinate
existence. Complainant alleges and refers
to no actual confusion, but only alleges the potential of possible confusion or
mistake. Respondent knows of no calls,
messages, or applications that it has received seeking Complainant’s mortgage
and real estate services. Complainant
specifies and refers to no calls, messages, or applications that it has
received for loans for recreational vehicles that
are meant for Respondent.
(e) Respondent is offering bona fide
services in and through its domain name, which services are not offered by or
available through Complainant’s
domain.
ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
(f) Respondent has adopted its domain
name in good faith and has not and would not offer it for sale to another; it
would not sell the
domain name apart from a sale of the entire business, and it
has solicited no purchase of its business.
(g) Respondent’s use of its domain name
does not impact Complainant’s use of its different, popular domain name. No one would misspell LENDINGTREE as
RVLENDINGTREE. Complainant has no
family of domains, as <houselendingtree.com> or
<condolendingtree.com> or <personalloanlendingtree.com>,
such that
use of Respondent’s name would be confusing to consumers or loan applicants.
(h) Respondent has registered its
corporate name, RVFINANCIALSERVICES.com as a back-up or alternative domain
name, in 2002; that name
is now being renewed but has been inactive. Respondent also owns
<rvmoneytree.com>, also inactive, but no others. Respondent is not stock-piling domain names.
(i) Because Complainant does not offer
RV loans, there can be no likelihood of confusion between Complainant’s mark
and Respondent’s as
to the source, sponsorship, affiliation, or endorsement of
Respondent’s website or location or of a product or service on Respondent’s
website or location.
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.
FINDINGS
Complainant
asserts that it has established rights in the LENDINGTREE mark through
registration with the USPTO (Reg. No. 2,265,733
registered on July 27,
1999). The Panel finds that Complainant
has established rights in the mark due to its registration with the USPTO. 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).
Complainant
argues that Respondent’s <rvlendingtree.com>
domain name is confusingly similar to Complainant’s LENDINGTREE mark
because the domain name fully incorporates the mark and merely
adds the acronym
“rv.” See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant
combined with a generic word or term); see also Sony Kabushiki Kaisha v. Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary
descriptive word . . . nor the suffix ‘.com’
detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i)
is satisfied).
The
Panel finds that the addition of the generic top-level domain “.com” is
irrelevant in determining whether the <rvlendingtree.com>
domain name is confusingly similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain
(gTLD) “.com” after the name POMELLATO is not
relevant); see also 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).
Respondent
argues that there is no evidence of actual confusion between the <rvlendingtree.com> domain name
and Complainant’s mark. However, the
Panel finds that actual confusion is not required to satisfy Policy ¶ 4(a)(i). See Nikon, Inc. v. Technilab, Inc.,
D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark
in the domain name rather
than upon the likelihood of confusion test under U.S. trademark law); see
also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29,
2001) (holding that confusing similarity under the Policy is decided upon the
inclusion of a trademark
in the domain name rather than upon the likelihood of
confusion test under U.S. trademark law).
Complainant argues that Respondent lacks rights and
legitimate interests to the <rvlendingtree.com> domain name
pursuant to Policy ¶
4(c)(ii) because Respondent is not
commonly known by the domain name. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant;
(2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the
domain
name in question).
Complainant
contends that Respondent is a competitor and uses the <rvlendingtree.com> domain name to disrupt Complainant’s
business. The domain name resolves to a
website that contains information regarding financing services for automobiles
and recreational vehicles. The Panel
finds that Respondent is using the domain name to disrupt Complainant’s
business, and the Panel concludes that such use
does not constitute 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 Clear Channel Communications, Inc. v. Beaty Enters., FA 135008
(Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of
Complainant, had no rights or legitimate interests
in a domain name that
utilized Complainant’s mark for its competing website); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(holding that Respondent’s appropriation of Complainant’s mark to market
products that
compete with Complainant’s goods does not constitute a bona fide
offering of goods and services).
Furthermore,
Complainant argues that Respondent lacks rights and legitimate interests in the
<rvlendingtree.com> domain
name because it is confusingly similar to Complainant’s mark and is used for
commercial gain. The Panel accepts this
argument, the Panel concludes that Respondent lacks rights and legitimate
interests in the domain name pursuant
to Policy ¶¶ 4(c)(i) and (iii). See 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); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored
by Respondent hardly seems legitimate”).
Complainant
contends that Respondent had actual or constructive knowledge of Complainant’s
rights in the LENDINGTREE mark because
Respondent is engaged in the same type
of business as Complainant.
Registration of a domain name that is confusingly similar to a mark,
despite knowledge of the mark holder’s rights, is evidence of
bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[t]here is a legal presumption of bad faith, when Respondent
reasonably should have
been aware of Complainant’s trademarks, actually or
constructively.”); see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark
and the content advertised on Respondent’s
website was obvious, Respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”).
Furthermore,
Complainant contends that Respondent registered and used the <rvlendingtree.com> domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name is
confusingly similar to Complainant’s mark and is
used for commercial gain. The Panel finds that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to
Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website);
see also H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to
Policy ¶ 4(b)(iv) because Respondent intentionally attempted to
attract Internet users to its fraudulent website by using Complainant’s
famous
marks and likeness).
In
addition, Complainant argues that Respondent registered and used the <rvlendingtree.com> domain name
in bad faith pursuant to Policy ¶ 4(b)(iii) because the domain name resolves to
a website that provides services that
compete with those offered by
Complainant. The Panel finds that the
services compete with those offered by Complainant, and the Panel concludes
that Respondent registered and
used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). See Gen. Media Communications, Inc. v. Vine Ent.,
FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor
of Complainant registered and used a domain name
confusingly similar to
Complainant’s PENTHOUSE mark to host a pornographic web site); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rvlendingtree.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________
Hon. Richard B. Wickersham, Judge (Ret.),
Panelist
Dated: October 11, 2004
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