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National City Corporation v. MH Networks LLC [2004] GENDND 742 (15 June 2004)

1. The Parties

The Complainant is National City Corporation (“National City” or “Complainant”), a Delaware corporation located at National City Center, Cleveland, Ohio, United States of America. It is represented by Sughrue Mion, PLLC.

The Respondent is MH Networks LLC, Las Vegas, Nevada, United States of America (“Respondent” or “MH Networks”).

2. The Domain Name and Registrar

The disputed domain name <national-city-mortgage.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2004. On February 19, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On February 19, 2004, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2004. Proceedings were suspended upon the Complainant’s request on March 12, 2004, and reinstituted on April 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2004.

The Center appointed Michael A. Albert as the Sole Panelist in this matter on May 17, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Founded in 1845, Complainant National City is a financial services company headquartered in Cleveland, Ohio. Among other services, it provides mortgage financing and servicing through over a thousand branches located throughout the midwestern United States. It is the tenth-largest banking company in the United States, and its stock is traded on the New York Stock Exchange. For over a century, National City has been providing mortgage services to its customers. In 2003, it originated more than $113 billion in mortgages.

In addition to the locations of its numerous branch offices, Complainant also operates an e-commerce site on the Internet at “www.nationalcity.com.” This site provides a variety of information, including mortgage costs, types of mortgages, information about how to obtain a mortgage, and on-line mortgage application forms. That domain name was registered in 1995.

Complainant’s wholly-owned subsidiary National City Mortgage Co. has been using the service mark and trade name NATIONAL CITY MORTGAGE, since 1989, in connection with the provision of mortgage services. That entity operates an e-commerce site devoted to mortgage services, located on the Internet at “www.nationalcitymortgage.com.” That domain name was registered in 1997.

Complainant has used NATIONAL CITY as a service mark for over a century. Complainant owns, and has appended to its complaint copies of, numerous valid and subsisting U.S. trademark registrations for the NATIONAL CITY mark in connection with financial services of various kinds.

5. Parties’ Contentions

A. Complainant

Complainant contends that NATIONAL CITY and NATIONAL CITY MORTGAGE are well-known trademarks and trade names that it owns; that Respondent registered the Domain Name <national-city-mortgage.com> on January 28, 2004; that the Domain Name is virtually identical, and confusingly similar, to Complainant’s NATIONAL CITY mark and identical to its subsidiary’s NATIONAL CITY MORTGAGE mark; that Respondent has no legitimate rights or interest in the Domain Name; and that Respondent must have known of Complainant’s marks at the time it registered the Domain Name due to the fame of the marks and duration of their use; and that Respondent has acted in bad faith by using a confusingly similar mark to direct Internet traffic to a website that offers competing mortgage services.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

This Panel finds as follows:

A. Identical or Confusingly Similar

The Domain Name is confusingly similar to Complainant’s marks.

The Domain Name is precisely identical, save for the addition of hyphens and the top-level domain “.com,” none of which obviate confusion, to Complainant’s subsidiary’s service mark, trade name, and website NATIONAL CITY MORTGAGE.

In comparing Complainant’s mark to the Domain Name, it is well established that the generic top-level domain, in this case “.com,” must be excluded from consideration as being a generic or functional component of the Domain Name. See Sporty’s Farm v. Sportsman’s Market, [2000] USCA2 33; 202 F.3d 489, 498, (2d Cir. 2000).

This Panel further agrees with the numerous WIPO panels that have found that mere addition of punctuation such as hyphens within a mark do not constitute a substantive change or obviate confusion. E.g., The Coca-Cola Co. v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (February 14, 2001) (recognition of a mark “applies whether the trademark is rendered with or without a dash”); Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (October 6, 2000) (“Mere differentiation by the insertion of dashes (“-”) still leaves the two [marks] virtually identical.”); Transamerica Corp. v. Inglewood Computer Services, WIPO Case No. D2000-0690 (August 20, 2000) (finding <trans-america.com> to be “nearly identical” to mark Transamerica “in that it differs only by the lower case ‘t’ and the inclusion of a dash after the fifth letter in the word ‘transamerica’.”).

Because Complainant’s subsidiary is not a party to this proceeding, however, and because it is not clear from the record what, if any, rights Complainant may have in its subsidiary’s trademark, we will proceed to consider the question of confusing similarity solely with regard to the similarity of the Domain Name to Complainant’s mark, rather than to the mark used by its subsidiary.

Complainant owns the mark NATIONAL CITY and uses that mark, both on-line and through a large number of branch offices, in connection with mortgage services. In adopting and using the Domain Name, which adds nothing more to Complainant’s mark than the generic descriptor “mortgage” (along with the above-mentioned hyphens and top-level domain), Respondent has not succeeded in obviating confusion. It is well established that the addition of a single, generic term to an otherwise strong trademark does not necessarily eliminate or even reduce the risk of confusion between a trademark and a domain name. See MasterCard International Incorporated v. John Henry Enterprises, WIPO Case No. D2001-0632 (, June 28, 2001) (adding word “international” to the trademark “MasterCard” does not eliminate confusion”); AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276 (, November 25, 2000) (adding word “global” to an AT&T trademark was insufficient to distinguish the domain name from the trademark). Indeed, not only does the addition of a generic descriptor to a well-known trademark not prevent confusion, but the fact that Respondent has used a descriptor which precisely matches one of the core services provided by Complainant (and its related businesses) serves to enhance the likelihood of such confusion.

B. Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the Domain Name. It is not licensed to use Complainant’s mark. There is no evidence that it has made any commercial use of the mark prior to notice of the dispute. On the contrary, in light of the length of time Complainant has provided its services, including on the Internet, the comparatively recent adoption by Respondent of the Domain Name, and the striking similarity between the two, it is implausible that Respondent had adopted its Domain Name without knowledge of the Complainant’s use. Respondent, by its default, has not even attempted to offer any evidence suggesting rights or legitimate interests.

C. Registered and Used in Bad Faith

Complainant’s final hurdle is to establish that Respondent registered the Domain Name in bad faith. The Panel finds that Complainant has proven that element of its case as well. It is difficult to conceive of a purpose Respondent could have had in registering the Domain Name other than to try to sell it to Complainant for a profit or to redirect traffic intended for Complainant to Respondent own website. Additionally, it is difficult to imagine that Respondent could have lacked knowledge of Complainant’s mark. See National City v. Party Night, WIPO Case No. D2003-0683 (October 20, 2003) (“The ‘NATIONAL CITY’ service mark has been well-known for decades in the banking and financial industry. It cannot be reasonably argued that the Respondents could have been unaware of the service mark when registering the disputed domain names.”) Indeed, Respondent was on constructive notice of Complainant’s federally registered NATIONAL CITY mark, as a matter of law, pursuant to 15 U.S.C. §1072. It also seems inconceivable that Respondent was not aware of Complainant’s domain name <nationalcitymortgage.com> which has been registered since October 1997.

As of February 2, 2004, the Domain Name resolved to a website that included links to mortgage-related services under captions such as “Mortgage companies,” “cheap mortgages,” etc. As established in the attachments to the Complaint, these links in turn led to a search results page listing “sponsored links,” many of which featured Complainant’s competitors such as Lending Tree, Ameriquest, and Quicken Loans.

Numerous panels have held that using a domain name confusingly similar to a complainant’s mark to link to a website of the complainant’s competitor constitutes “bad faith” under the Policy. See, e.g. Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319 (February 1, 2002) (“[R]egistration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001) (“[R]egistration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s website to the website of . . . a company which directly competes with the Complainant, constitutes bad faith registration and use.”); Zwack Unicom Ltd v. Duna, WIPO Case No. D2000-0037 (March 10, 2000) (respondent’s linking to complainant’s competitor held to constitute bad faith); Oly Holigan, L.P. v. Private, Case No. FA0011000095940 (N.A.F. December 4, 2000) (finding bad faith where respondent used the disputed domain name to “redirect[] the Complainant’s consumers and potential consumers to commercial websites which are not affiliated with Complainant”); Marriott International, Inc. v. Kyznetsov, Case No. FA0009000095648 (N.A.F. October 24, 2000) (finding bad faith where respondent registered the domain name <marriottrewards.com> and used it to route internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <national-city-mortgage.com> be transferred to the Complainant.

Michael A. Albert
Sole Panelist

Dated: June 15, 2004