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Madame Agnès Troublé contre Monsieur Jacques Chene [2005] GENDND 316 (15 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Option One Mortgage Corporation v. Option One Lending

Case No. D2004-1052

1. The Parties

The Complainant is Option One Mortgage Corporation, Irvine, California, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Option One Lending, Burbank, California, United States of America, represented by Marty Yeghishian, United States of America.

2. The Domain Name and Registrar

The disputed domain name <optiononelending.com> (“Domain Name”) is registered with Go Daddy Software, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2004. On December 15, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Name. On that same day, Go Daddy Software 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 January 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2005. The Response was filed with the Center on January 28, 2005.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 14, 2005. 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

For over a decade Complainant has been in the business of making, servicing and selling residential mortgage loans. With over $42 billion in assets under management, Complainant ranks among the top five originators of non-prime residential mortgage loans by volume in the United States. Complainant targets individuals with a credit score between prime lending and sub prime lending. Non-prime mortgages are often provided to individuals with a less than perfect credit history or hard to document income (e.g., individuals who are self employed).

Complainant is headquartered in Irvine, California and maintains seven branch offices in Lake Forest, Rancho Cucamonga, Roseville, San Diego, San Ramon, Saratoga and Woodland Hills, all located in California. Complainant employs more than 4,500 associates and markets and sells its mortgage products and services to homebuyers across the United States through over 100 wholesale, national account, correspondent and H&R Block Mortgage Corp. offices located in 32 states. Complainant originates loans through its network of 34,000 approved brokers and through its relationships with national financial institutions. Complainant originates its retail loans through its wholly owned subsidiary H&R Block Mortgage Corp. and services its own loans as well as those of other national lenders.

For the third quarter of 2004, Complainant originated 35,795 mortgage loans totaling over $5.4 billion. Complainant has received top ratings for its servicing operations from several national rating agencies for credit markets, including Fitch Ratings, Standard & Poor’s and Moody’s. Also, it has won many awards and accolades for its business and community involvement including being named business of the year in February 2004 by the Irvine Chamber of Commerce, winning the Pinnacle Award from Junior Achievement International for the third year in a row for the most funds raised in the business category and receiving the Sponsorship Award from Habitat for Humanity in 2003. In 2004, Complainant was named one of the top seven places to work in Orange County (California) by OC Metro Magazine, a business lifestyle magazine with a readership of more than 344,000 professionals and executives.

Since its inception in 1992, Complainant has been providing its mortgage services under the marks OPTION ONE, OPTION ONE MORTGAGE and OPTION ONE MORTGAGE CORPORATION. Complainant also owns two United States federal registrations (2,667,845 and 2,661,551) for the marks OPTION ONE MORTGAGE CORPORATION and OPTION ONE, respectively (the marks and registrations collectively will be referred to as “the Marks.”). They are both registered for mortgage lending; mortgage banking; and administrative services for others related to residential mortgage loans; real estate appraisal; and insurance agency services.

Through its efforts, Complainant has established a strong customer base and is known throughout its trading area as a provider of high quality mortgage lending products and services. As a result of its continuous and exclusive use of the Marks, Complainant has built up substantial value and goodwill.

Complainant also maintains an active presence on the Internet and has done so for more than seven years since June 13, 1997. Complainant owns several domain names containing the marks OPTION ONE or OPTION ONE MORTGAGE including, <optiononemortgage.com>, <optiononemortgage.net> and <optiononeonline.com> (the “Option One domain names”), all of which resolve to Complainant’s OPTION ONE website. Complainant’s Marks have been featured on this website since it went live. Complainant uses its website for a variety of purposes, to: (1) advertise and promote its mortgage lending services; (2) provide information regarding itself and the mortgage and lending industry to its partners and customers; (3) provide current and potential homebuyers information about Complainant’s mortgage products and services; (4) provide its brokers and partners with access to various forms, guidelines, marketing materials and information; and (5) solicit applications for Option One real estate brokers, residential appraisers and mortgage brokers.

On or about April 1, 2004, Respondent registered the <optiononelending.com> domain name. Sometime on or after April 1, 2004, Respondent began using the Domain Name to point Internet users to a website where Respondent advertises and sells its mortgage lending services. Respondent’s website uses “Option One Lending” throughout the site and states that its “primary business is to help you secure financing for your home purchases, commercial property ventures, refinancing needs and other mortgage related services”. Respondent’s website also states that it specializes in loaning money and providing mortgages to individuals with “less than perfect credit,” individuals that are self employed and individuals that have filed for bankruptcy. Respondent’s website lets home buyers apply for mortgages online and use mortgage calculators to determine monthly mortgage payments. It also states that Respondent provides its services in several cities and towns in Southern California including Los Angeles, Burbank, Glendale, Pasadena, San Diego and Santa Barbara.

5. Parties’ Contentions

A. Complainant

The Domain Name is confusingly similar to Complainant’s Marks. Respondent has no legitimate interest with respect to the Domain Name. Respondent registered and is using the Domain Name in bad faith.

B. Respondent

The website for Option One Lending is an unregistered site. Respondent’s company was established and in no way was trying to compete with Complainant. Respondent’s advertising such as stating that its “primary business is to help you secure financing for your home purchases, commercial property ventures, refinancing needs and other mortgage related services,” use standard phrases in the mortgage industry (citing to the websites of: Lending Expo, IFC Loans.Com, Carmel Mortgage Corp., FGF Mortgage, Action Mortgage Corp., and America’s Mortgage Bancorp). Complainant is not the sole provider of these types of loans. Respondent claims that Complainant is attempting to detach itself from the mortgage industry and make it appear as though they have exclusive rights to all these words, phrases and features. Similarly, Respondent asserts that its website does provide mortgage calculators; however, any mortgage company website has this feature to better serve its clientele.

Respondent claims that one city can have hundreds of mortgage companies who services similar areas. Option One Lending is ready to prove that its entire customer base was found on the company’s own deserving merit. The customers of Option One Lending, in no way confused the company with the Complainant. The Option One Lending website does not come up when any kind of search is done. Therefore, the Complainant’s accusation of losing business is invalid and unsubstantiated. Option One Lending is a small one-man operation, and is not at a comparable level with the Complainant’s Company. The Respondent does not have the resources nor the man power to compete or take business away from the Complainant. Option One Lending is based locally and serves mainly its own customer base (returning clients and referrals from these clients). The website’s main purpose is to provide convenience for its revisiting clientele.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

This element contains two parts: first, does Complainant have rights in a relevant mark and, second, are the Domain Names identical or confusingly similar to that mark.

Complainant has submitted sufficient unrebutted evidence establishing its rights in the Marks. Furthermore, the <optiononelending.com> domain name is confusingly similar to Complainant’s Marks and its Option One domain names. Respondent’s Domain Name incorporates, in its entirety, Complainant’s OPTION ONE registered mark. Notwithstanding, Respondent’s assertion that “[t]he customers of Option One Lending, in no way confused the company with the Complainants,” where, as here, Respondent has registered a domain name which incorporates in its entirety Complainant’s Marks, sufficient similarity exists between the mark and Domain Name to render it confusingly similar. EAuto, LLC v. Triple S. Auto Parts et al, WIPO Case No. D2000-0047 (March 24, 2000); Quixtar Investments, Inc. v. Smithberger and Quixtar-IBD, WIPO Case No. D2000-0138 (April 9, 2000); G.A. Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424 (February 27, 2001). Respondent’s addition of the descriptive term “lending” to the core “OPTION ONE” mark does not distinguish the Domain Name from Complainant’s mark. Indeed Respondent has chosen a common term that coincides with the exact type of service Complainant provides; thus confusion is inevitable. See Harrods Limited v. Peter Pierre, WIPO Case No. D2001 0456 (June 6, 2001) (finding <harrodsdepartmentstores.com> and <harrodstores.com> confusingly similar to HARRODS trademark for department store services); see also Ansell Healthcare Products, Inc. v. Australian Therapeutics Supplies Pty. Ltd., WIPO Case No. D2001-0110 (April 2, 2001) (finding <ansellcondoms.com> confusingly similar to ANSELL for condoms); Arthur Guinness Son & Co. v. Steel Vertigogo, WIPO Case No. D2001 0020 (March 22, 2001) (finding <guinnessbeer> confusingly similar to GUINNESS for alcoholic beverages including beer).

Furthermore, the only difference between the Domain Name and Complainant’s OPTION ONE MORTGAGE mark and domain names is the substitution of the word “mortgage” for the related word “lending”. The term “mortgage” can be considered a subset of and related to the broader term “lending” and the term “lending” is often used to refer to the practice of offering for sale or selling residential mortgages (e.g., “mortgage lending”. (See articles using the term “lending” to refer to the practice of providing a mortgage attached to the Complaint as Annex H.)

Complainant argues that confusion in this case is bolstered by the fact that it is commonly accepted that when consumers who are looking for a company on the Internet do not know the company’s precise Internet address, they attempt to guess at the address by typing in the company’s name and a term that describes the company’s business. (See articles discussing how consumers “guess” at domain names attached to the Complaint as Annex I.) Respondent responds that “the Option One Lending website does not come up when any kind of search is done”, attaching the results of a search using the Google™ search engine and the terms - option, one, lending. Respondent’s search solely using the Google™ search engine does not support the broad assertion that Complainant’s website does not “come up when any kind of search is done” despite the popularity of the Google™ search engine. Furthermore, the Panelist takes judicial notice of the fact that Respondent’s site does come up performing a search with the altavista™ search engine.

In any event, for the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy inquires as to whether the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

Complainant has established rights in the Marks and the Option One domain names. It is uncontested that Complainant has not licensed or otherwise authorized Respondents to use the Marks or Option One domain names, or a confusing variation of them, in connection with Respondent’s business or as part of the Domain Name. Insofar as Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Names. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). “‘Concrete evidence’ constitutes more than mere personal assertions. . . . Evidence in the form of documents or third party declarations should be furnished in support of such assertions”. Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000). Pursuant to Paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if they have acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent claims that its company was not trying to compete with Complainant and that it is a small one-man operation which does not have the resources or man power to compete or take business away from Complainant. Respondent also claims that Complainant is not the sole provider of mortgage loans, and that it is permitted to use on its website the same industry phrases that Complainant and others use on their website for similar products and services. These remarks do not address or rebut Complainant’s evidence in this proceeding. Nor has Respondent demonstrated that he was commonly known by the Domain Name; any reputation gained by Respondent has come from the Respondent’s bad faith use of the domain name, as decided below.

The unrebutted facts are that since 1992, Complainant has been in the business of making, servicing and selling non-prime residential mortgage loans under the Marks. Non-prime mortgages are often provided to individuals with a less than perfect credit history or hard to document income (e.g., individuals who are self employed). Respondent likewise helps individuals secure financing for home purchases through residential mortgage loans and, according to Respondent’s website, specializes in obtaining mortgages for individuals with “less than perfect credit,” individuals who are “self employed” and individuals who have filed for bankruptcy. As advertised on Complainant’s and Respondent’s websites, both businesses offer their mortgage lending services to residents in Southern California. It is undisputed that Complainant and Respondent operate in the same field. Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy. See Reed Elsevier Properties, Inc. et al v. Weekly Publishers, NAF Case No. 151536 (May 5, 2003); see also Reed Elsevier, Inc. et. Al v. Ulexis a/k/a Law firm, NAF Case No. 97684 (August 31, 2001) (finding no legitimate interest when respondent used the disputed domain name to offer similar/related services and to divert potential customers to its competing website); Reed Elsevier, Inc. et al v. Carlos M. Alvarez d/b/a IT Lexis, NAF Case No. 982498 (August 20, 2001) (finding respondent’s use of the domain name to offer competing services in same general field as complainant not to constitute a bona fide offering of goods and services under the UDRP); MBS Computers Ltd. v. Workman, NAF Case No. 96632 (March 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); Chip Merch, Inc. v. Blue Star Elec., WIPO Case No. D2000-0474 (August 21, 2000) (finding the disputed domain names confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

For the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It is undisputed that Respondent registered and has been using the Domain Name since about April 1, 2004, long after Complainant was using the Marks and the Option One domain names for its similar products and services. Considering those facts and Complainant’s undisputed evidence that Respondent provides its services in Southern California, where Complainant’s headquarters is located, where Complainant maintains several additional branch locations, and where Complainant has won several awards for its community involvement, it is reasonable to infer that Respondent had at least constructive, if not actual, knowledge of Complainant’s rights in the Marks and the OPTION ONE domain names when Respondent registered the Domain Name and since then. To have proceeded with registration knowing of Complainant’s rights demonstrates Respondents’ bad faith. Dollar Rent A. Car, Inc. v. Albert Jackson, NAF Claim No. 187421 (September 24, 2003) (Registration of a domain name that infringes on Complainant’s rights, despite actual knowledge of Complainant’s mark, is evidence of bad faith.); Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (November 4, 2001).

Furthermore, Respondent’s failure to establish any rights or legitimate interests respecting the Domain Name and the evidence showing that Respondent is using a confusingly similar domain name on a website that offers for sale similar mortgage lending products and services to Internet users, leads to the conclusion that Respondent has registered and is using the Domain Name for its own pecuniary gain, notwithstanding Respondent’s protestations to the contrary. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004). See also, AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001 0289 (April 24, 2001) (bad faith use and registration found where Respondent used confusingly similar domain name to sell competing products); NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001) (Registration and use of a domain name to re-direct Internet users to websites of competing organizations constituted bad faith registration and use); Express Messenger Systems, Inc. v. Golden State Overnight, WIPO Case No. D2001-0063 (April 2, 2001) (use of confusingly similar domain name by competitor of Complainant constituted bad faith registration and use).

For the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(iii) has been satisfied.

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, <optiononelending.com> be transferred to the Complainant.

Harrie R. Samaras
Sole Panelist

Date: February 27, 2005