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Omyacolor S.A. v. Recep Tanisman - Emko Emaye A.S. [2005] GENDND 653 (3 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Countrywide Financial Corporation, Inc. and Countrywide Home Loans, Inc.

v. Marc Bohleren

Case No. D2005–0248

1. The Parties

The Complainants are Countrywide Financial Corporation, Inc. (Countrywide Financial) and Countrywide Home Loans, Inc. (Countrywide Home Loans), Calabasas, California, United States of America, represented by Orrick, Herrington & Sutcliffe, Los Angeles, California, United States of America.

The Respondent is Marc Bohleren, Karlsruhe, Germany.

2. The Domain Names and Registrar

The disputed domain name <countrywidehomeloans.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in the requisite number of hard copies on March 7, 2005, and, at the request of the Center, in electronic form on March 11, 2005. On March 9, 2005, the Center acknowledged receipt of the Complaint in hard copy form and transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 9, 2005, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. Further to eNom’s partial response, in noticing that the “Whois Privacy Protection Service” was in place, on March 15, 2005, the Center requested that eNom provide information as to the real identity of the disputed domain name’s registrant. In reply, on March 15, 2005, eNom informed the Center that the whois privacy protection for the domain name in question had been removed, thus allowing for the actual registrant’s contact information to be viewable in the public whois lookup. On March 16, 2005, the Center made a WHOIS printout, which showed that the disputed domain name is registered in the name of Marc Bohleren, with address of record in Germany.

Per the Center’s request, on March 19, 2005, the Complainants partially amended their Complaint so as to reflect the recently ascertained identity of Respondent as then available in the Whois database.

On March 21, 2005, 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 March 21, 2005. In conformity with the Rules, paragraph 5(a), the due date for Response was April 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2004.

The Center appointed Reynaldo Urtiaga Escobar as the Sole Panelist in this matter on May 13, 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

Complainant Countrywide Home Loans is a wholly-owned subsidiary of Complainant Countrywide Financial, both companies being incorporated under the laws of the United States of America and engaged in the business of mortgage home loan services, mortgage lending and financial services and other real-estate related services.

Complainant Countrywide Financial is the owner of a number of service marks incorporating the term “countrywide”, which are registered under United States Registration Nos. 1,918,325; 1,918,326; 1,744,794 and 1,432,224, all of them covering the sort of services mentioned in the above paragraph. The oldest registration dates back to 1987, having been first used in commerce as of 1983.

Complainant Countrywide Home Loans has used for over nine years in connection with its services, the common law mark “COUNTRYWIDE HOME LOANS”, for which is also the owner of United States service mark application No. 7/8,481,133, pending.

For its part, Respondent registered the domain name that is the subject of this dispute on July 14, 1999.

Considering that registration and use of the domain name at issue infringe upon Complainants’ registered and common law service mark rights, counsel for Complainant Countrywide Home Loans wrote on two occasions to the Whois agent for the disputed domain name in an attempt to secure transfer of the latter and to have registrant cease any use of the Complainants’ protected marks. In view of Respondent’s lack of response, the Complainants jointly moved to commence the present proceedings.

5. Parties’ Contentions

A. Complainants

The Complainants’ submissions can be summarized as follows:

(i) The Complainants’ respective use and registration of the “COUNTRYWIDE” family of marks in the United States of America are sufficient to establish Complainants’ rights in the mark as required by paragraph 4(a)(i) of the Policy.

(ii) The “countrywide” and “countrywide home loans” terms are inherently distinctive as they have no descriptive meaning of the associated services. At most, they are suggestive of those services and therefore generate common law service mark rights as of their first use in commerce.

(iii) Even if either of the Complainants’ marks is found by the Panel to be descriptive, the extensive use of the “COUNTRYWIDE” family of marks by the Complainants for over a nine-to-twenty year period suffices for regarding the said marks to have acquired substantial secondary meaning, rendering them distinctive and thus subject to protection pursuant to the Lanham Act, 15 U.S.C. § 1052 (f).

(iv) Establishing inherent distinctiveness and secondary meaning may not be necessary in the instant case for the likelihood of confusion is apparent. All that is necessary is that the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services likely thinks that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark.

(v) It is beyond dispute that there is, at a minimum, confusing similarity between <countrywidehomeloans.com> and Complainants’ family of “COUNTRYWIDE” marks. In reaching this conclusion and in line with prior Panel decisions, it is proper to disregard the “.com” portion of the disputed domain name as “an irrelevant distinction which does not change the likelihood of confusion”.

(vi) Neither Complainant has ever licensed or otherwise conveyed rights in any of its “COUNTRYWIDE” marks to Respondent.

(vii) Respondent has no intellectual property or other rights to the domain name at issue, nor is it using the latter in a manner consistent with any legitimate interest.

(viii) It is apparent that Respondent has constructed its own website containing numerous linkages for the purpose of improperly diverting users with click-through advertising to a large number of “sponsored” websites. These arrangements, which typically provide revenues to the diverting website owner –here Respondent- from fees paid by the “sponsored” websites, have consistently been held not to constitute rights or legitimate interests under the Policy because they do not amount to a bona fide offering of goods or services.

(ix) The Complainants further believe and, upon that belief, aver that Respondent has never been commonly known by the name “countrywidehomeloans.com”, and that Respondent does not have a right or legitimate interest in the domain name under paragraph 4(c)(ii) of the Policy.

(x) Respondent’s registration of the disputed domain name for the sole purpose of attracting and diverting consumers, for commercial gain, to sponsored websites via “sponsored links” found at the domain name website, creates a likelihood of confusion with Complainants’ marks as to the source or sponsorship of the <countrywidehomeloans.com> domain name, in direct contravention of paragraph 4(b)(iv) of the Policy, pursuant to prior Panel decisions.

(xi) Respondent’s deliberate intention of having made itself difficult to locate by not identifying its true identity or providing its own contact details, coupled with its failure to respond to Complainant Countrywide Home Loans’ cease and desist letters, are actions that have consistently been found by previous Panels as evidence of bad faith within the meaning of the Policy.

(xii) By the very registration of the disputed domain name and use of its associated website in the manner it has, Respondent has disrupted the business of Complainants, in part by preventing the latter from reflecting their “COUNTRYWIDE” and “COUNTRYWIDE HOME LOANS” marks in a corresponding domain name, which effect should be considered in determining Respondent’s bad faith despite Complainants’ failing to show Respondent’s pattern of such conduct as that showing was hampered in part by Respondent’s own lack of disclosure of actual identity so that the extent of its activities could have been properly ascertained.

(xiii) The following circumstances, taken together, warrant a finding of bad faith: first, Respondent’s use of the disputed domain name to trade on the goodwill of Complainants by diverting consumers to other commercial websites; second, Respondent’s operating through a Whois Agent; third, Respondent’s disregard of Complainant Countrywide Home Loans’ cease and desist letters and lastly, Respondent’s lack of justification for its continued use of the domain name at issue.

B. Respondent

No counter-arguments were submitted on behalf of Respondent.

6. Discussion and Findings

Preliminary

It is worth noting that even though Respondent’s failure to submit a Response does not automatically result in a decision in favor of the Complainant (as reflected in the recently published WIPO Overview of WIPO Panel Views on Selected UDRP Questions at para. 4.6), it is well established that the Panel may accept all reasonable and supported allegations and inferences in the Complaint as true. See Charles Jourdan v. Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint) and also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., NAF Case No. 95095 (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

On the other hand, in regard to the appropriateness for these proceedings to have been jointly instituted by the Complainants, given that Complainant Countrywide Home Loans is a wholly-owned subsidiary of Complainant Countrywide Financial, both having proprietary rights over the COUNTRYWIDE mark and thus legal standing to assert their respective rights against Respondent, the Panel is satisfied that Complainants have “sufficient interest in the disputed domain name for them to be joined in this action.” See Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537; also Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117.

General

According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:

(i) The Domain Name 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. Identity or Confusing Similarity

First of all the Panel notes that Complainant Countrywide Financial’s marks are either inherently distinctive or, in the alternative, they have attained a secondary meaning within the mortgage-related business community by virtue of their continued use in the United States of America since 1983, the date of first use in commerce.

In support of the Panel’s primary finding of inherent distinctiveness, it is concluded that Complainant Countrywide Financial’s “COUNTRYWIDE” marks are not descriptive of: the intended purpose, function or use of the services; the provider of the services; the class of users of the services; the nature of the services; or the end effect upon the user [McCarthy on Trademarks and Unfair Competition, Fourth Edition, Thomson/West, § 11:16] for it cannot be said that no imagination is required to associate the term countrywide with a company in the mortgage services’ field.

More importantly, as held in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, a trademark’s registration “is prima facie evidence of the validity of Complainant’s registration”, and creates a rebuttable presumption that the COUNTRYWIDE marks are inherently distinctive. Respondent has not submitted any evidence that would refute this assumption.

In this vein, the uncontroverted fact that the four federal service mark registrations in the name of Complainant Countrywide Financial have subsisted up to this day without any of them being cancelled on any grounds,-including lack of inherent distinctiveness-, is telling, which in the Panel’s view reinforces the above-stated presumption.

But even if the marks upon which the Complaint is based were not registered as is the case of the “COUNTRYWIDE HOME LOANS” common law service mark, the Panel acknowledges that there is no requirement, at least under US trademark law, that is the law of the Complainants, for a mark to be registered before rights attach, but rather, the latter arise out of use of the mark in commerce. Likewise, it is now well established that unregistered rights provide sufficient legal basis to justify Complainants’ rights in a mark within the meaning of paragraph 4(a)(i) of the Policy as illustrated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions at para. 1.7.

As for the subsidiary finding of acquired distinctiveness, in the absence of evidence and argument to the contrary, the Panel accepts Complainants’ proposition that proof of secondary meaning is not required in the instant case for pursuant to the law of the service marks upon which the Complaint is based, it is not necessary to submit proof of secondary association where the mark in question is not “merely descriptive”, and also because continuous use of the marks for periods longer than five years creates a prima facie presumption of their distinctiveness in accordance with relevant case law applying the Lanham Act, 15 U.S.C. § 1052 (f).

Having said that, as noted in Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case D2000-1415, the issue under this type of analysis is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website) but rather, whether the domain name in issue, standing alone, is sufficiently similar to the Complainant’s trademark to justify a remedy under the Policy.

As rightly pointed out by Complainants, it is well settled that the addition of the generic top-level domain (gTLD) “.com” is without legal significance under this type of analysis for the following reasons: use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider as a source of goods or services. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127; Infinity Broadcasting Corp. v. Quality Services, Inc., WIPO Case No. D2000-0361 and Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165.

Thus, turning to the relevant question of this part of the decision, on its face, it is evident that the disputed domain name is confusingly similar to the Complainant Countrywide Financial’s marks, where the latter are wholly included in the domain name, because the mere incorporation of descriptive terms such as “home loans” is too tenuous and insubstantial to detract from this conclusion.

In effect, case law has consistently confirmed that when a domain name incorporates a Complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words, including generic or descriptive terms, or words designating goods or services with which the mark is used. See Experian Information Solutions Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“credit” added to mark EXPERIAN); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA); Britannia Building Society v Britannia Fraud Prevention, WIPO Case No. D2001-0505, (“buildingsociety” added to trademark “Britannia”); Chanel Inc., v. Estco Technology Group, WIPO Case No. D2000-0413 (“chanelstore” and “chanelfashion” were found to be confusingly similar to the “Chanel” mark).

The finding of confusion in this case is strengthened by the fact that the words “home loans” are descriptive in the mortgage services’ industry and, as such, they have an inextricable connection to the Complainants’ business so that there is every possibility that consumers browsing for Complainant’s information and website will eventually find themselves in a completely unrelated website diverting them to providers offering the same type of services as Complainants. See Brambles Industries Limited v. Geelong Car Company Pty Ltd, WIPO Case No. D2000-1153, (<bramblesequipment.com> found to be confusingly similar to complainants’ “BRAMBLES” mark because the differentiating word ‘equipment’ is descriptive only and the combination of the two words ‘brambles’ and ‘equipment’ in the domain name implies that there is an association with the Complainant’s business).

Accordingly, this Panel finds that the Complainants have proven the first threshold of paragraph 4(a) of the Policy.

B. Legitimacy of Respondent’s Interest

Complainants deny to have ever licensed or otherwise conveyed rights in any of their “COUNTRYWIDE” marks to Respondent. Upon information and belief, it is averred that Respondent has no intellectual property or other rights to the domain name at issue, nor is it using the latter in a manner consistent with any legitimate interest.

In view of the foregoing and in concert with prior Policy decisions, the Panel is satisfied that the Complainants have shown prima facie evidence with respect to this element of the Policy, thus shifting the burden of proof on Respondent. Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553; and Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467.

In light of this, the Panel chooses to view Respondent’s failure to submit a Response to the Complaint as evidence that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Additionally, as relied on by the Complainants, the Panel agrees that the authority is legion under the Policy that Respondent’s diversion of users with click-through advertising to a large number of sponsored websites, presumably in exchange for a fee, does not amount to a bona fide offering of goods or services so as to constitute rights or legitimate interests in the domain name at issue. See Rolf C. Hagen (USA) Corp. v. Domain Administrator, WIPO Case No. D2003-0855 (using website with name that is confusingly similar to trademark of another for re-directing Internet web traffic not a bona fide offering of goods or services); FMV Opinions, Inc. v. the Fair Market Valuation experts, WIPO Case No. D2002-0372 (operation of website for limited purpose of diverting users to another site, absent other evidence, is not a legitimate use of disputed domain name under the Policy).

As a result, the Complainants have demonstrated the second limb of paragraph 4(a) of the Policy.

C. Registration and Use in Bad Faith

Complainants submit that the following circumstances, taken as a whole, warrant a finding of bad faith on the part of Respondent:

(i) Respondents’ deliberate intention to cover up its actual identity and contact details by operating through a Whois Agent;

(ii) the disruption caused to Complainants by preventing them from reflecting their “COUNTRYWIDE” and “COUNTRYWIDE HOME LOANS” marks in a corresponding domain name;

(iii) Respondent’s use of the disputed domain name to trade on the goodwill of Complainants by diverting consumers to other commercial websites;

(iv) Respondent’s disregard of Complainant Countrywide Home Loans’ cease and desist letters, and lastly;

(v) Respondent’s lack of justification for its continued use of the domain name at issue.

In relation to the above, the Panel determines that by operating through a Whois Agent, the Respondent took deliberate steps to hide its true identity so as to make impossible for third parties any direct communication with it, which behavior has been found to constitute evidence of bad faith within the meaning of the Policy. See Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Hermenegildo Zegna Corporation v. LionHeart securities Corp., WIPO Case No. D2003-0285.

Moreover, in the Panel’s view, the Whois Agent on record served as a mere ‘front’ or ‘façade’ for Respondent to wash its hands of any aspect concerning the disputed domain name, including third parties’ claims, as reinforced by the lack of response on the part of the domain name registrant to Complainant Countrywide Home Loans’ cease and desist letters. See Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (failure to respond to any communication might lead to the conclusion that a false identity has been provided to the registrar, which would be a clear indication of bad faith); Lycos Asia Ltd v. Buy This Name, WIPO Case No. D2001-0828 (“whether or not the Respondent is simply a front, it seems that the true identity of the party that actually holds or controls the domain name remains uncertain” which warrants a finding of bad faith on the part of the party that registered the domain name and/or the Respondent).

In closing, the uncontested evidence, pleadings and inferences before it, lead the Panel to conclude that the Respondent registered and has been using the contested domain name “for the purpose of causing confusion with the Complainant(s) and for the purpose of benefiting from that confusion”. Sydney Markets Limited v. Nick Rakis, trading as Shell Information Systems, WIPO Case No. D2001-0932.

Based on the above, the Panel holds that Policy 4(a)(iii) has been satisfied.

7. Decision

In light of all the foregoing, this Panel concludes that the Complainants have met their burden as established by paragraph 4(a) of the Policy. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <countrywidehomeloans.com> be transferred to Countrywide Financial Corporation, Inc.

Reynaldo Urtiaga Escobar
Sole Panelist

Dated: June 9, 2005