DECISION

Wilshire Credit Corporation v. Henry Chan

Claim Number:  FA0403000245957

PARTIES

Complainant is Wilshire Credit Corporation (“Complainant”), represented by Gary H. Lau, of Northwest IP Law Group LLP, 725 NW 10th Ave., Suite 407, Portland, OR 97209.  Respondent is Henry Chan (“Respondent”), P.O. Box SS-6348/A124, Nassau, Bahamas.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <wilshirecredit.com> and <wilshirecreditcorp.com>, registered with Iholdings.com, Inc. d/b/a 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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 15, 2004; the Forum received a hard copy of the Complaint on March 17, 2004.

On March 19, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <wilshirecredit.com> and <wilshirecreditcorp.com> are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a 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 March 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 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@wilshirecredit.com and postmaster@wilshirecreditcorp.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 April 21, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wilshirecredit.com> and <wilshirecreditcorp.com> domain names are confusingly similar to Complainant’s WILSHIRE FINANCIAL SERVICES GROUP, WILSHIRE CREDIT CORPORATION, and WILSHIRE marks.

2. Respondent does not have any rights or legitimate interests in the <wilshirecredit.com> and <wilshirecreditcorp.com> domain names.

3. Respondent registered and used the <wilshirecredit.com> and <wilshirecreditcorp.com> domain names in bad faith.

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

FINDINGS

Complainant provides a variety of services in the credit and financial industries including investments, debt servicing, and collections.  Complainant provides these services under the WILSHIRE FINANCIAL SERVICES GROUP, WILSHIRE CREDIT CORPORATION, and WILSHIRE marks.

Complainant has used the WILSHIRE FINANCIAL SERVICES GROUP mark for “loan financing, financing services, mortgage banking and brokerage, and debt servicing and collection” since October 31, 1990.  Complainant registered the WILSHIRE FINANCIAL SERVICES GROUP mark with the United States Patent and Trademark Office (“USPTO”) on July 29, 1997 (Reg. No. 2082695).

Additionally, Complainant has used the WILSHIRE CREDIT CORPORATION and WILSHIRE marks in connection with “financial investment in the fields of real estate loans and securities; loan financing; home equity loans; installment loans; mortgage lending; loan collection services; real estate foreclosure trustee services; financial evaluation of real estate; loan servicing” since February 12, 1993 and July 1, 2000, respectively.  Complainant filed a registration application for the WILSHIRE CREDIT CORPORATION mark with the USPTO on February 10, 2004 (Ser. No. 78/365627).  Likewise, Complainant filed a registration application for the WILSHIRE mark with the USPTO on February 13, 2004 (Ser. No. 78/367727). 

Respondent registered the disputed domain names <wilshirecredit.com> and <wilshirecreditcorp.com> on November 8, 2002 and November 7, 2002, respectively.  The domain names are being used by Respondnet to host indexing websites that relate to mortgage quotes and rates provided by third-party businesses.  Links to these businesses are prominently displayed on Respondent’s websites.

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

The registration of one’s mark with the USPTO is sufficient to establish rights in the mark under the Policy.  In this case, Complainant has registered the WILSHIRE FINANCIAL SERVICES GROUP mark and owns registration applications for the WILSHIRE CREDIT CORPORATION and WILSHIRE marks with the USPTO.  Therefore, Complainant has established rights in the marks. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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 SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broad. 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”).

Domain names that contain the predominant portion of a complainant’s mark, but merely omit a word, have been found to be confusingly similar to a complainant’s mark under Policy ¶ 4(a)(i).  Here, the domain name <wilshirecredit.com> contains the first two words of Complainant’s WILSHIRE CREDIT CORPORATION mark, but merely omits the word “corporation,” which represents the type of entity Complainant operates as.  Thus, the domain name <wilshirecredit.com> is confusingly similar to Complainant’s WILSHIRE CREDIT CORPORATION mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, “hammondsuddards.net,” is essentially identical to Complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant independently of the word “Edge”); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).

In addition, domain names that contain the predominant portion of a complainant’s mark, but merely abbreviates a word within the complainant’s mark, have been found to be confusingly similar to the mark under the Policy.  In this case, the domain name <wilshirecreditcorp.com> has included the first two words of Complainant’s WILSHIRE CREDIT CORPORATION mark, but has merely abbreviated the word “corporation.”  Therefore, the domain name <wilshirecreditcorp.com> is confusingly similar to Complainant’s WILSHIRE CREDIT CORPORATION mark.  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (stating that “[n]otwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for “Modern Props.” “Mod” cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).

Therefore, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not provided the Panel with a Response to the Complaint.  Thus, the Panel presumes that Respondent lacks rights and legitimate interests in the domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

As a result of the foregoing, there is nothing in the record to indicate Respondent is commonly known by the disputed domain names 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); 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").

A bona fide offering of goods or services under Policy ¶ 4(c)(i) and a legitimate noncommercial or fair use of domain names under Policy ¶ 4(c)(iii) does not include using domain names confusingly similar to a complainant’s mark that are used to host websites offering services that compete with those provided by complainant under its mark.  In the instant case, Respondent registered domain names that have appropriated confusingly similar variations of Complainant’s WILSHIRE-related marks.  Respondent then linked the domain names to content relating to mortgage services provided by businesses in direct competition with Complainant’s mortgage services offered under each of its WILSHIRE marks.  Such use does not satisfy Policy ¶¶ 4(c)(i) or (iii). See 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); see also 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 Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website).

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv) through its intentional attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s WILSHIRE-related marks.  Evidence of this comes in the form of Respondent’s registration of domain names that are confusingly similar to Complainant’s marks and Respondent’s subsequent use of those names to host links to third-party businesses that are direct competitors of Complainant’s business, presumably for commercial gain.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Therefore, Complainant has established Policy ¶ 4(a)(iii).

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 <wilshirecredit.com> and <wilshirecreditcorp.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated: May 4, 2004

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