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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Option One Mortgage Corporation v. Horoshiy, Inc.

Case No. D2004-0874

 

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 Horoshiy, Inc., Curacao, Netherlands.

 

2. The Domain Names and Registrar

The disputed domain names are <optiononemortgagecorp.com>, <optiononemortgageonline.com>, <option1mortgage.com>, are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2004. On October 25, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the disputed domain names. On October 26, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com 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 October 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2004.

The Center appointed David Taylor as the sole panelist in this matter on December 6, 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

The non-contested facts in the present case are as follows:

The Complainant, Option One Mortgage Corporation, is in the business of making, servicing and selling residential mortgage loans across the United States of America and employs more than 4,500 people. It has been in this business for over a decade and today, according to the Complainant, manages over $42 billion in assets and ranks among the top five originators of non-prime residential mortgage loans by volume in the United States of America.

Option One Mortgage Corporation offers loans through a network of 34,000 approved brokers, via its relationships with national financial institutions and through its wholly owned subsidiary H&R Block Mortgage Corp.

The Complainant specifies that in the third quarter of 2004, it originated 35,795 mortgage loans totaling over $5.4 billion.

The Complainant states that it has used the service marks OPTION ONE, OPTION ONE MORTGAGE CORPORATION and OPTION ONE MORTGAGE since 1992, and has provided details of the following registered United States service marks:

OPTION ONE MORTGAGE CORPORATION, registration number 2,667,845 registered on December 31, 2002, covering the following services: mortgage lending; mortgage banking; administrative services for others related to residential mortgage loans; real estate appraisal; insurance agency service.

OPTION ONE registration number 2,661,551 registered on December 17, 2002, covering the following services: mortgage lending; mortgage banking; administrative services for others related to residential mortgage loans; real estate appraisal; insurance agency service.

The Complainant registered its <oomc.com> domain name on June 13, 1997, and has operated a website at this Internet address since that time. The Complainant also owns several other domain names containing the marks OPTION ONE or OPTION ONE MORTGAGE including, <optiononemortgage.com>, <optiononemortgage.net> and <optiononeonline.com>, all of which resolve to Complainant’s <oomc.com> website.

The Complainant’s registered marks feature prominently on its <oomc.com> website.

The Respondent registered the disputed domain names:

<optiononemortgageonline.com>, <optiononemortgagecorp.com> and <option1mortgage.com> on March 3, 2003, February 12, 2004 and April 4, 2003 respectively.

The disputed domain names all point to “www.dp.information.com”, a website containing a list of links to third party websites that advertise and/or sell mortgage products and services, examples of which are “www.lender-search.com”, “www.wizardofloan.com” and “www.mortgagerates.org”, each of these promote mortgages from competing vendors.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has prior registered trademark rights in the names OPTION ONE and OPTION ONE MORTGAGE CORPORATION and the unregistered mark OPTION ONE MORTGAGE, these names have been used since 1992, thereby building up substantial value and goodwill in these marks.

The Complainant also contends that it is the registrant of several domain names namely <oomc.com> registered on June 13, 1997, as well as <optiononemortgage.com>, <optiononemortgage.net> and <optiononeonline.com> containing its registered marks. The Panel has checked and these domain names were registered on March 9, 1999, February 28, 2002, and October 10, 2000 respectively.

The Complainant contends that the three disputed domain names registered by the Respondent are confusingly similar to the Complainant’s registered trademark rights and to the various domain names owned by the Complainant.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not authorized, licensed or otherwise permitted the Respondent to apply for or use any domain name comprising or incorporating the Complainant’s registered marks OPTION ONE or OPTION ONE MORTGAGE CORPORATION or its OPTION ONE MORTGAGE unregistered mark.

The Complainant contends that there is no evidence, pursuant to paragraph 4(c) of the Policy, that the Respondent has made demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services. Indeed the Complainant stresses that the actual use by the Respondent of the disputed domain names is not a legitimate use since the Respondent is using the three disputed domain names to divert Internet traffic to its website “www.dp.information.com” where it provides links to competing websites.

The Complainant contends that the Respondent is not commonly known by any of the disputed domain names.

The Complainant further contends that the Respondent has registered and is using the disputed domain names in bad faith since it has registered them primarily for the purpose of intentionally attracting for commercial gain, Internet users to the Respondent’s website where it provides links to competing websites, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. The Respondent is therefore seeking to divert Internet users who are seeking the Complainant’s mortgage services.

B. Respondent

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

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The disputed domain names are 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 disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances or acts that would be evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out three non-exhaustive circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondent’s rights or legitimate interests in the disputed domain names for purposes of paragraph 4(a)(ii).

In this case, the Panel finds that as a result of the Respondent failing to respond to the Complaint notified to him, he has thereby failed to rebut any of the factual assertions made by the Complainant and supported by the evidence submitted. The Panel does not, however, draw any inferences from the default in responding other than those that have been established or can fairly be inferred from the facts presented by the Complainant.

In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might have concluded that the Respondent has any rights or legitimate interests in the disputed domain names.

The default of the Respondent does not remove the burden on the Complainant to establish the three criteria in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has clearly demonstrated that it has prior registered trademark and/or service mark rights in the names OPTION ONE and OPTION ONE MORTGAGE CORPORATION by the registrations of its service marks on the Principal Register of the USPTO as such establishing a presumption of validity of the marks under United States law. The registrations also constitute constructive notice to all other parties of the Complainant’s ownership of the marks. Since the Policy is not restricted to registered rights, the Panel also finds that the Complainant has demonstrated that it has unregistered or so-called common law rights in the name “OPTION ONE MORTGAGE”.

Two of the disputed domain names comprise the Complainant’s registered trademark OPTION ONE in its entirety: <optiononemortgageonline.com> and <optiononemortgagecorp.com>. The third disputed domain name: <option1mortgage.com> domain name also comprises the Complainant’s registered trademark OPTION ONE in its entirety except for the subtle variation of the substitution of the number “1” for the word “one” which the Panel considers to be identical for the present purposes.

Each of disputed domain names also comprises the Complainant’s common law trademark OPTION ONE MORTGAGE in its entirety. The disputed domain names <option1mortgage.com> is identical except for the substitution by the Respondent of the number “1” for the word “one” and which the Panel considers to be identical for the present purposes. The other two disputed domain names <optiononemortgageonline.com> and <optiononemortgagecorp.com> are identical save for the addition of a generic term “online” or “corp”, the latter a standard abbreviation for “corporation”.

The other registered trademark of Complainant, OPTION ONE MORTGAGE CORPORATION is identical to the third disputed domain name <optiononemortgagecorp.com> save that the domain name abbreviates the word “corporation” to “corp”.

It has been well established by previous UDRP panel decisions that when a domain name consisting of a trademark or service mark is combined with a generic term the generic term has a limited effect in distinguishing the domain name from the trademark or service mark. Nokia Corporation v. Nokiagirls.com aka IBCC, WIPO Case No. D2000-0102, where the noun “girls” was added to the registered trademark NOKIA. As for the disputed domain name <option1mortgage.com> this is a simple and obvious case of typo-squatting.

The Panel finds that the disputed domain names are confusingly similar to the registered trademarks and unregistered common law rights in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if shown by the Respondent to be present, are considered as suitable evidence of the Respondent’s rights or legitimate interests in respect of the disputed domain name. However, the primary burden is on the Complainant to show that the Respondent has no such rights or legitimate interests. Once the Complainant has made out a prima facie case in support of its allegations, the burden shifts to the Respondent to demonstrate the contrary, i.e. provide credible evidence to substantiate any claim of rights or legitimate interests in the disputed domain names.

The Complainant states in the Complaint that the Respondent has no rights or legitimate interests in the disputed domain names. This contention has not been contested and there is no evidence in the record that the Respondent has any legitimate interests in the disputed domain names. The fact that the Complainant’s registered trademark rights are included in the disputed domain names without any authorisation or license from the Complainant is such a prima facie case. The Panel finds that the disputed domain names are not the name of the Respondent nor do they appear to be associated with him in any way.

The Panel also finds that since the content of the websites associated with the disputed domain names offer competing services to those of the Complainant this cannot realistically constitute a bone fide offering of these services. The Panel is of the opinion that the Respondent is clearly seeking to mislead and divert consumers with intent for commercial gain. Indeed there is little surprise, based upon the evidence before this Panel that the Respondent decided not to reply to the Complaint, it has an impossible task to demonstrate any rights or legitimate interests in the disputed domain names.

The Panel therefore concludes that the Complainant has successfully made out a prima facie case in support of its allegations and the Respondent has not demonstrated any rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which for the purposes of paragraph 4(a)(iii) of the Policy would, if the Panel finds them to be present, constitute evidence of bad faith registration and use.

The Complainant contends that the Respondent has exhibited its clear bad faith under paragraph 4(b)(iv) of the Policy which reads:

“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.”

The Respondent has registered the and has also used these disputed domain namedisputed domain names encompassing the Complainant’s trademarkss to link to websites offering mortgage services which directly compete with the Complainant’s services and therefore the Panel finds that the Respondent has intentionally sought to confuse the Complainant’s potential customers and that the Respondent is thereby seeking to trade upon the goodwill of the Complainant’s registered trademarks for his own commercial gain

The fact that the Respondent has registered three domain names specifically including variations of the Complainant’s trademarks is a further indication of bad faith. The circumstances which would constitute evidence of bad faith registration and use are not limited to those set out under paragraph 4(a)(iii) of the Policy, which are by definition non-exhaustive. Numerous UDRP cases have held that typo-squatting, i.e. the registration of a domain name that differs only by a common or likely typographical error from the Complainant’s trade or service mark or existing domain name can constitute the necessary bad faith if this is to the business advantage of the Respondent or the disadvantage of the Complainant. Case examples include: Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274, where there was a finding of bad faith in the registration of <wwwmicrosoft.com>; Estйe Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, where the Panel found that “intentionally registered domain names with a slight, but knowingly confusing, spelling difference are pertinent to determining whether Respondent has acted in good faith,” and that “the intent to attract or divert Internet users interested in the Complainant is also pertinent.”

In this case the Panel finds that the use of “1” in the disputed domain name <option1mortgage.com> as opposed to “one” in the Complainant’s unregistered trademark OPTION ONE MORTGAGE and the Complainant’s domain names <optiononemortgage.com> and <optiononemortgage.net> is a deliberate attempt to divert Internet users interested in the mortgage activities of the Complainant and by doing so is further evidence of the bad faith registration and use by the Respondent.

The other two disputed domain names <optiononemortgageonline.com> and <optiononemortgagecorp.com> further reinforce this view since they are virtually identical to the trademarks of the Complainant save for the addition of a generic term “online” or “corp” an abbreviation for “corporation”.

It is thus clear to the Panel that the Respondent had actual knowledge of the Complainant’s trademarks when it registered the disputed domain names and is clearly seeking to redirect Internet users looking for the Complainant or the services offered by the Complainant, to other websites, motivated by commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks.

The Panel therefore concludes that the Respondent has registered and used the disputed domain names in bad faith.

The Panel finds that the Complainant has argued its case clearly and persuasively. The Respondent is clearly a serial cybersquatter, though the Complainant did not refer to previous decisions against the Respondent a quick search by the Panel shows that the Respondent has previous form with a number of decisions against it, non of which it has sought to contest (InfoSpace, Inc. v. Horoshiy, Inc. a/k/a Horoshiy NAF Claim Number: FA0406000282775, 23 July 2004 and Avery Dennison Corporation v. Horoshiy, Inc. a/k/a Horoshiy NAF Claim Number: FA0406000289048).

 

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 disputed domain names, <optiononemortgagecorp.com> <optiononemortgageonline.com> and <option1mortgage.com> be transferred to the Complainant.


David Taylor
Sole Panelist

Dated: December, 20, 2004

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0874.html

 

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