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and Mediation Center
Ohio Savings Bank v. America’s Trust Mortgage Corp.
Case No. D2006-0108
1. The Parties
Complainant is Ohio Savings Bank, Cleveland, Ohio, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
Respondent is America’s Trust Mortgage Corp., Plantation, Florida, United
States of America, represented by Erik M. Pelton, United States of America.
2. The Domain Name and Registrar
The disputed domain name <amtrustloans.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2006. On January 25, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 3, 2006, Tucows 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 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2006. The Respondent submitted its Response on February 25, 2006, which the Center duly acknowledged.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 10, 2006. 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.
The Complainant submitted its Addendum 1 to the original
Complaint to the Center electronically on February 2, 2006. The Panel has considered
this Supplemental Filing.
4. Factual Background
Complainant is the 17th largest thrift institution in the U.S. with 56 branches, and assets of $16 billion. Complainant uses the AMTRUST trademark in connection with its services and in commerce throughout 18 states in the United States. Complainant does business throughout the continental U.S. as AMTRUST through nationwide telephone and internet banking.
Complainant owns U.S. Registration No. 1,462,208 for the service mark AMTRUST which registered on October 20, 1987, for “retail banking services provided to the general public.” Said service mark has been in use by Complainant or its predecessor-in-interest since at least as early as August 27, 1985. Complainant has spent approximately $1.8 million in advertising and marketing the AMTRUST trademarks during the past year, and has spent equally significant sums in prior years.
Complainant owns a large family of AMTRUST domain names, including <amtrust.com>.
Respondent registered the domain name <amtrustloans.com>
on February 10, 2000.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainant contends that:
The Domain Name contains elements identical to and confusingly similar to the AMTRUST trademarks in which the Complainant has prior rights.
With respect to paragraph 4(a)(ii) of the Policy, Complainant contends that:
Respondent is not either as an individual, business or other organization commonly known by the name “AMTRUST” or any variation thereof.
Respondent does not own any business or business name registrations containing AMTRUST.
Respondent is not related to Complainant, and has not received any license, permission, or consent to use or own the trademark AMTRUST or any variation thereof.
Complainant’s rights to the term AMTRUST in connection with financial services and banking, precede by at least 15 years the registration date of the Domain Name at issue.
AMTRUST is a unique coined term.
With respect to paragraph 4(a)(iii) of the Policy Complainant contends that:
The Domain Name should be considered as having been registered and used in bad faith because:
At least as early as August 18, 2005, Complainant notified Respondent in writing that the Domain Name violated Complainant’s intellectual property and trademark rights, and requested that Respondent remove and cease use of the Domain Name.
The Domain Name actively uses the AMTRUST trademark and the AMTRUST brand in connection with mortgage and lending services.
Respondent blatantly and prominently displays at the website associated with the Domain Name Complainant’s own AMTRUST trademarks, making it impossible for a consumer to believe anything other than that it is affiliated or associated with Complainant.
Respondent had both constructive and actual prior knowledge of Complainant’s prior rights in the AMTRUST trademarks and willfully proceeded to register and use the Domain Name. Actual or constructive knowledge of Complainant’s rights in its trademarks is a factor supporting bad faith.
Since the Domain Name contains Complainant’s entire AMTRUST trademark, registration and use of the Domain Name was deliberately designed and calculated to trade on and misappropriate the monetary value, reputation, notoriety, fame and goodwill in the AMTRUST trademarks, and to unjustly enrich Respondent by enabling it to obtain unfairly the benefits and advantages of Complainant’s own use, research, testing, marketing, offering, and advertising of the AMTRUST trademarks.
Respondent registered, acquired and uses the Domain Name primarily for the purpose of selling competing funding, financial and/or lending services under the AMTRUST trademarks for confusing the public, and/or for the purpose of selling or transferring the Domain Name registration to Complainant.
By registering and using the Domain Name, Respondent has intentionally attempted to use the Domain Name to divert and attract, for commercial gain, Internet users to its Domain Name, URL, web site or other on-line location, by creating a likelihood of confusion with the AMTRUST trademarks as to the source, sponsorship, affiliation, association, or endorsement of Respondent’s Domain Name, URL, web site or other on-line location.
With respect to paragraph 4(a)(i) of the Policy, Respondent contends that:
Complainant does not have the exclusive trademark rights to the word “Amtrust” since more than ten (10) different entities are using the term Amtrust in connection with financial services and since Complainant has failed to enforce its federal trademark registration against these third party uses.
Complainant’s federal trademark registration is currently the subject of a cancellation proceeding.
Complainant has allowed multiple parties to use the trademark AMTRUST for numerous years, including: Amtrust Mortgage Corporation; Amtrust Mortgage Funding, Inc.; AmTrust Funding; AmTrust Financial; Amtrust Mortgage Corporation; AmTrust Mortgage Corporation; AmTrust Capital Corp; AmTrust Financial Services, Inc.; American Trust Bank; AmTrust Auto Finance; AmTrust Financial Group; and others.
Common words and descriptive terms are legitimately subject to registration as domain names on a first-come, first-served basis.
Respondent is the owner of a state mortgage license from Florida for “America’s Trust Mortgage Corp.”
The domain name is not identical to Complainant’s trademark.
Because the term “Amtrust” is so diluted, the rights to domain names including that term should not be granted exclusively to Complainant.
With respect to paragraph 4(a)(ii) of the Policy, Respondent contends that:
Respondent has rights and/or legitimate interests in the Domain Name at issue because the domain name:
(a) is not identical to the mark or domain name of Complainant,
(b) is composed of generic terms, “Amtrust” and “loans”, and
(c) the term “Amturst” is a legitimate abbreviation of Respondent’s “America’s Trust” trademark.
Complainant has not met its burden to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name.
Respondent has used the domain name in connection with a bona fide offering of goods and services for more than five (5) years prior to the receipt of any notice regarding this dispute.
Due to more than five (5) years of use of the domain name <amtrustloans.com>,
Respondent has become known in part by internet users as AMTRUSTLOANS.COM. Respondent
has also become known in part as AMTRUSTLOANS.COM to dozens of internet search
engines and directories which list and/or link to <amtrustloans.com> as
a result of Respondent’s use of and rights in the domain name.
With respect to paragraph 4(a)(iii) of the Policy, Respondent contends that:
The domain name was not registered by Respondent in an intentional attempt to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
AMTRUST is used by more than a dozen different parties in connection with financial services.
Complainant has not alleged any use of or rights in the phrase “Amtrust Loans.”
Contrary to Complainant’s allegation that Respondent had “actual or constructive knowledge of [Complainant’s] rights in its trademarks,” Respondent states that it had no knowledge of Complainant’s alleged rights in its trademark when Respondent registered the Domain Name.
Respondent presumed, at the time of the Domain Name registration, that the phrase was generic and/or unprotected, as well as a legitimate abbreviation of the words “America’s Trust.”
The domain name was not registered by Respondent primarily to disrupt the Complainant’s business, but rather as a legitimate abbreviation of Respondent’s business name.
In a recent UDRP proceeding with similar facts concerning the domain name <amtrust.us>, Respondent was found to have used the name in a bona fide offering of services, and not in bad faith.
Respondent’s failure to consent to the demands of Complainant’s August 18, 2005, letter does not constitute bad faith. Respondent did not ignore the requests of Complainant, but rather retained counsel to send Complainant a written response to the August 18, 2005, letter.
Complainant’s failure to institute this action for more than five years after Respondent began using the domain name constitutes laches and estoppel.
Complainant has demonstrated no evidence of actual confusion.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Complainant is the owner of United States Trademark Registration No. 2,162,548 (issued 1987) for the service mark AMTRUST.
The domain name <amtrustloans.com> is likely to be confused with Complainant’s AMTRUST service mark.
The addition of the word “loans” does not eliminate the confusion.
The mere addition of a generic or descriptive term is not sufficient to avoid
confusion. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO
Case No. D2003-0888 (January 6, 2004). (The fact that the word “autoparts”
is added to Complainant’s trademark does not eliminate the identity, or
at least the similarity, between Complainant’s trademark and the disputed
domain name, as “autoparts” is a descriptive component of the disputed
domain name.) See also, Bayer Aktiengesellschaft v. Dangos & Partners,
WIPO Case No. D2002-1115 (February 3,
2003) (addition of generic words “healthcare” to form <bayerhealthcare.com>
domain name deemed “confusingly similar to the BAYER trademark”);
Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,
WIPO Case No. D2005-0037 (March 9, 2005)
(addition of “ordinary descriptive” term “buy” to mark
LANTUS in domain <buylantus.com> “does nothing to dispel and serves
only to reinforce the connection in the public mind between the word LANTUS
and the Complainants, and therefore increases the risk of confusion”);
PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY
(a/k/a EMS), WIPO Case No. D2003-0696
(October 28, 2003) (finding domains such as <pepsibasketball.com>, <pepsigames.com>,
<pepsihockey.com>, and <pepsisoccer.com> confusingly similar to
plaintiff’s PEPSI mark, stating that “[t]hat the mere addition of
common terms such as ‘sports,’, ‘basketball’ or ‘soccer’
to the PEPSI mark is of no import”).
B. Rights or Legitimate Interests
Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the Domain Name, Policy, paragraph 4(a)(ii). Respondent has used <amtrustloans.com> for five years since the domain was registered in February 2000. Respondent’s Exhibit 19 is a Florida State Mortgage Lender License dated September 1, 2004. Respondent’s Exhibit 25 is advertising that asserts that Respondent has “Over $150 million in mortgage funding since 1990. These facts show that before Complainant gave notice of the dispute in August 2005, Respondent had used the domain name in connection with a bona fide offering of goods or services. Policy, paragraph4(c)(i) provides that proof of these facts shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of Policy, paragraph4(a)(ii).
The Panel has considered the cases of Ohio Savings Bank d/b/a Amtrust v. Manfred Kempa, FA0512000605065 (NAF 2006)(<amtrust.us> transfer denied) and Ohio Savings Bank d/b/a Amtrust v. Manfred Kempa, FA0512000608684 (NAF 2006)(<amtrustdirect.com> transfer granted). Although neither is binding on the Panel, the Panel nonetheless observes that it finds the analysis in the <amtrust.us> decision more persuasive primarily because it considered and relied on the respondent’s prior bona fide use of the domain name. The <amtrustdirect.com> decision did not evaluate this fact.
C. Registered and Used in Bad Faith
Complainant has also failed to prove bad faith registration and use. There
is no evidence that Respondent was actually aware of Complainant’s rights
at the time it registered the domain in 2000. It is also relevant that Respondent
does not use “Amtrust” as a trademark on its web site; instead,
it uses its trade name “America’s Trust Mortgage.” This undermines
the claim that Respondent “intentionally attempted to attract, for commercial
gain, Internet users to its web site…by creating a likelihood of confusion
with the complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of your web site or location or of a product or service on your
web site or location.” Policy, paragraph4(b)(iv). The Panel also notes
that Complainant’s five year delay in complaining of Respondent’s
use of the domain name undermines its contention that Respondent registered
the mark in bad faith. America Online, Inc. Go Technology Corp.,
FA0501000403101 (NAF 2005)(“While the Policy does not provide for the
equitable defense of laches, the absence of any complaint over a long period
of time in which domain names are in active use can suggest that such use does
not give rise to a serious problem.”).
For all the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Dated: March 26, 2006