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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fairview Commercial Lending, Inc.
v. Aleksandra Pesalj
Case No. D2007-0123
1. The Parties
The Complainant is Fairview Commercial Lending, Inc. of Atlanta, Georgia, United States of America, represented by Cushing, Morris, Armbruster & Montgomery, LLP, United States of America.
The Respondent is Aleksandra Pesalj of Indianapolis, Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fairviewlending.org> is registered with Go Daddy Software,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2007. On February 1, 2007, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On February 1, 2007, Go Daddy Software, Inc. 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 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, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2007.
The Center appointed Frederick M. Abbott, David M. Kelly
and Dennis A. Foster as panelists in this matter on March 27, 2007. The Panel
finds that it was properly constituted. Each member of 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 Complainant is a United States private commercial lending company that was founded in the middle of 2004. Using the names FAIRVIEW and FAIRVIEW COMMERCIAL LENDING, the Complainant markets its lending services via about 35,000 mortgage brokers throughout the United States of America. It has spent approximately USD 200,000 promoting its services through mailings, trade publications, industry conventions and the Internet. In conducting its business, the Complainant operates websites at several domain names that it owns.
The disputed domain name was registered by the Respondent
on October 19, 2006. The website at the disputed domain name solicits Internet
customer information, which the Respondent uses to collect application fees
from those customers for loans that the Respondent does not subsequently issue.
5. Parties’ Contentions
- Established in mid-2004, the Complainant is a private American commercial lending company whose primary offices are located in the states of Georgia and Colorado. The Complainant conducts business throughout the United States of America.
- The Complainant owns the trademarks FAIRVIEW and FAIRVIEW COMMERCIAL LENDING. It has also registered and owns various domain names related to the trademarks, i.e., <fairviewlending.com>, <fairviewlending.biz>, <fairviewfunding.com>, <fairviewcommerciallending.com>, etc.
- The Complainant’s marks are closely associated with a well-defined scope of lending, and the Complainant has invested heavily in establishing its name through use of e-mail, postal mailings, industry publications and trade shows. The Complainant’s websites also play a major advertising role. The Complainant has spent approximately USD 200,000 on such promotional efforts.
- Marketing its services through a network of some 35,000 mortgage brokers, the Complainant had, as of the end of 2006, a lending portfolio worth some USD 32,000,000.
- The Complainant’s websites are a key means of contacting potential borrowers. To the detriment of the Complainant’s reputation, the Respondent has used its website located at the disputed domain name not only to siphon off some of the borrowers but also to bilk those borrowers through the solicitation of phony application fees.
- The disputed domain name is virtually identical to the Complainant’s marks, varying only by the addition or deletion of a generic word. This has caused Internet user confusion as verified by contact received by the Complainant from consumers who have associated the Respondent’s website (and its dishonest practices) with the Complainant’s business.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no association or connection with the Complainant, and no authorization to use the Complainant’s marks in any way. When it registered the domain name, the Respondent neglected its duty to check whether it infringed any trademark. Although the Respondent’s website refers to “Fairview Lending” and “Fairview Lending Group”, there is no evidence that any such company exists. The website is a simple page site that seeks to obtain information from Internet customers for use in the Respondent’s scheme to charge those customers up-front fees for lending services that are never rendered.
- The Respondent has registered and is using the disputed domain name in bad faith. The Respondent should have known of the Complainant’s trademarks, and the Respondent’s fee scam is tarnishing the Complainant’s marks and disrupting its business through Internet user confusion.
- The Complainant attempted to contact the Respondent through postal mail, facsimile transmission and e-mail, but failed to obtain a response.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
According to paragraphs 4(a)(i)-(iii) of the Policy, the Complainant in this administrative proceeding may gain possession of the disputed domain name <fairviewlending.org> if the Complainant can prove the following:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The threshold issue confronting any panel in a UDRP proceeding is whether a complainant has rights in the trademark or service mark to which that complainant claims a disputed domain name is identical or confusingly similar. In the present case, the Complainant did not furnish the Panel with evidence that the Complainant possesses a valid trademark registration of either FAIRVIEW or FAIRVIEW COMMERCIAL LENDING in any jurisdiction or venue. Thus, in determining whether the Complainant’s case can be sustained, the Panel must first decide whether the Complainant can legitimately assert rights in either of those unregistered marks on another basis.
Many previous panels operating under the Policy have found complainants to
have common law trademark rights sufficient to satisfy the degree of trademark
or service mark ownership required under paragraph 4(a)(i). See Pilgrim Films
and Television Inc. v. Brandon Bator, NAF Case No. FA909831 (March 15, 2007);
and Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000, WIPO
Case No. D2006-0431 (June 1, 2006).
To sustain such a finding, a complainant must demonstrate that its mark is
either inherently distinctive (i.e., arbitrary, fanciful, or suggestive) or
a descriptive mark that has achieved a “secondary meaning” (i.e.,
the descriptive term has taken on a second, trademark meaning). Over the course
of many Policy decisions, a general consensus among panels has evolved with
respect to evaluating the applicability of common law rights to a given mark.
For descriptive marks, panels have considered factors such as longevity of use,
amount of sales, nature and extent of advertising, consumer surveys and media
recognition in determining whether secondary meaning exists. See Control
Techniques Limited v. Lektronix Ltd, WIPO
Case No. D2006-1052 (October 11, 2006); Amsec Enterprises, L.C. v. Sharon
McCall, WIPO Case No. D2001-0083 (April 3, 2001);
as well as the WIPO
Overview of WIPO Panel Views on Selected UDRP Questions. In conducting such
an evaluation, a panel should also take into consideration that the hurdle a
complainant must clear in establishing such rights is higher if the claimed
trademark is descriptive. See One Creative Place, LLC v. Kevin Scott,
WIPO Case No. D2006-0518 (June 16, 2006);
and Deutsche Post AG v. NJDomains, WIPO
Case No. D2006-0001 (March 1, 2006).
Although comprised of two common English words, “fair” and “view”, the base mark in question, FAIRVIEW, is not itself a generic or descriptive English term. Furthermore, “fairview” is not obviously suggestive of any area of business or commerce, although it is arguably suggestive of a business that employs “fair” lending practices. The addition of the common words “commercial” and “lending” to the basic mark does suggest that the owner is involved generically in the commercial lending business, but does not detract from the distinctiveness of the FAIRVIEW mark. In summation, the Panel concludes that Complainant’s marks are inherently distinctive.
In analyzing the other considerations involved in
its determination regarding common law rights, the Panel notes that the Respondent
filed no response to the Complainant’s contentions. It is thus reasonable
for the Panel to proceed as though the Complainant’s contentions are true,
unless contrary to the evidence presented or facts known by the Panel within
the purview of its own experience. See Hyatt Corporation v. Sinichi Akiyama;
NAF Case No. FA839408 (December 26, 2006); and Talk City, Inc. v. Michael
Robertson, WIPO Case No. D2000-0009
(February 29, 2000).
In this case, the Complainant offers no sales totals, but does assert a portfolio value of USD 32 million. Also, it contends without contradiction that about 35,000 mortgage brokers are in some way affiliated with, and therefore knowledgeable about, its operations. The Complainant has spent USD 200,000 on advertising and promotion of its mark through mailings, the Internet and trade publications. Furthermore, the Complainant has attended dozens of lending industry trade conventions in various locations throughout the United States of America. Most significantly, it possesses an array of domain names and corresponding websites that actively spread recognition of its marks on a countrywide basis.
While this level of activity over less than three years may not have caused
the marks to be uniquely associated with the Complainant in the minds of the
entire general public of the United States of America, it has assuredly caused
such an association among the targeted audience of commercial lending professionals
and a good many of their clients. The Panel finds this association is sufficient
to confer common law rights in a trademark, even if the Complainant’s
marks would be deemed descriptive. See Imperial College v. Christophe Dessimoz,
WIPO Case No. D2004-0322 (June 30, 2004)
(where the panel concluded, “…even if Complainant’s mark THE
IDEA LEAGUE acquired goodwill and reputation only in a limited academic field,
this would still be sufficient to establish common law trademark rights within
the meaning of paragraph (a)(i) of the Policy”); and Funskool (India)
Ltd. v. funschool.com Corporation, WIPO
Case No. D2000-0796 (where the panel stated that, “The Policy places
no limitation on the operative extent of a trademark which the Complainant must
show the disputed domain name to be identical or confusingly similar to.”).
Certainly the Respondent recognizes an association of the mark with the Complainant
and its operations since, of the multitude of names available to it, the Respondent
selected a domain name incorporating “fairview” to engage in the
Taking into account all of the considerations above, the Panel determines that the Complainant has demonstrated its common law trademark rights in FAIRVIEW and FAIRVIEW COMMERCIAL LENDING.
The other aspect of Policy, paragraph 4(a)(i) that the Complainant must establish
is that the disputed domain name is identical or confusingly similar to at least
one of its trademarks. The domain name <fairviewlending.org> contains
all of the Complainant’s first mark, adding the generic word, “lending”,
to it, and incorporates the Complainant’s second mark in full, with the
exception of the middle generic word “commercial”. Thus, the Panel
concludes that the similarity of the name to the marks could hardly be more
confusing. Prior UDRP panels have sustained findings of confusing similarity
in like situations. See, for example, The Gillette Company v. RFK Associates,
NAF Case No. FA492867 (July 28, 2005); and Dell Inc. v. George Dell and Dell
Net Solutions, WIPO Case No. D2004-0512
(August 24, 2004).
Accordingly, the Panel rules that the Complainant has satisfied its burden in proving that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the Policy confers upon the Complainant the burden of showing that the
Respondent has no rights or legitimate interests in the disputed domain name,
it has become more than well-established through prior Policy decisions that
the burden shifts to the Respondent to demonstrate otherwise after the Complainant
makes a prima facie case in its favor. See, for example, Telex Communications,
Inc. v. Jinzheng Net, NAF Case No. FA833071 (December 27, 2006); and Belupo
d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110
(April 14, 2004). Given that the Complainant has established common law trademark
rights in its marks, as reasoned above, and has contended that it never authorized
the Respondent’s use of those marks in a domain name or for any other
purpose, the Complainant has made such a prima facie case.
Faced with a complainant’s prima facie case regarding paragraph 4(a)(ii) of the Policy, a respondent relies typically on one of the three possible avenues of rebuttal offered in paragraphs 4(c)(i-iii). However, in this case the Respondent falls short with respect to all three.
Despite the allusion on its website that the Respondent conducts business under the name of “Fairview Lending” or “Fairview Lending Group”, the Panel accepts the Complainant’s contention that no such company exists. Consequently, the Panel refuses to find that the Respondent is “commonly known” by the disputed domain name per paragraph 4(c)(ii). Furthermore, given that the Panel believes the Complainant’s uncontested allegation that the Respondent solicits loan application fees through that website, paragraph 4(c)(iii) fails to apply on the Respondent’s behalf because such a for-profit solicitation does not constitute “non-commercial or fair use of the disputed domain name”.
Finally, the use to which the Respondent has put the disputed domain name does not satisfy the circumstance cited in paragraph 4(c)(i), i.e., “before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services”. The Panel agrees with prior panels ruling pursuant to the Policy that using a disputed domain name in these circumstances to offer services similar to those offered by the Complainant is not a “bona fide offering”. See Instron Corporation v. Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t, NAF Case No. FA768859 (September 21, 2006); and Reed Elsevier Properties Inc. and Reed Elsevier Inc. v. Weekly Publishers, NAF Case No. FA151536 (May 5, 2003). In this case, the Respondent’s offering of services might be fraudulent, reducing further any claim to being a “bona fide offering”. See Hewitt Associates LLC v. Robin Cuff, NAF Case No. FA376375 (February 3, 2005).
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s contention
that the Respondent benefits commercially by charging fees for lending services
that Internet users never receive. The Respondent accomplishes this goal by
use of a domain name that is confusingly similar to the Complainant’s
trademark – a trademark associated with lending services. As a result,
the Panel determines that the Respondent is attempting to divert Internet users
for commercial gain by attracting them to its website through a likelihood of
confusion with Complainant’s mark, which is conclusive evidence of bad
faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. See
Mostchoice.com Inc. v. Xianqing Zhu c/o Most choice.com, Inc., NAF Case
No. FA424540 (April 11, 2005); Baudville, Inc. v. Henry Chan, WIPO
Case No. D2004-0059 (April 5, 2004); and Hewitt Associates LLC, supra.
Therefore, the Panel rules that the disputed domain name was registered and is being used by the Respondent in bad faith.
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 <fairviewlending.org> be transferred to the Complainant.
David M. Kelly
Dated: April 16, 2007
Concur by Panelist Abbott
I am in agreement with the determination by the Panel that Complainant has established common law trademark rights in FAIRVIEW and FAIRVIEW COMMERCIAL LENDING in this proceeding in which the Panel has substantially relied on the undisputed pleadings of the Complainant. I write this separate concurrence because of a technical difference with a majority of the Panel with respect to the character of Complainant’s trademark rights, particularly in respect to FAIRVIEW COMMERCIAL LENDING.
In my view, the mark FAIRVIEW is on the border between “suggestive” and “descriptive” when used for the commercial lending business. For purposes of this proceeding, FAIRVIEW can be considered suggestive and inherently distinctive. However, FAIRVIEW is a comparatively weak mark in the hands of Complainant. It is a term widely used as an identifier by third party businesses in the United States of America, it is used by third parties in the lending field, and it has been used for only a few years by Complainant. (USPTO TARR database search for FAIRVIEW and basic Google search for term “fairview lender mortgage” (conducted by Panelist Abbott on April 15, 2007)). Given that FAIRVIEW is not registered by Complainant and lacks a presumption of validity, is borderline suggestive in connection with commercial lending, and is in common usage by businesses in the United States of America, I consider that the combination term “FAIRVIEW COMMERCIAL LENDING” is sufficiently descriptive to require demonstration of secondary meaning to be accorded common law trademark protection. That is, to the extent that “FAIRVIEW” is a comparatively weak identifier standing alone, its combination with two highly descriptive terms (i.e., “COMMERCIAL LENDING”) lessens the overall distinctiveness of the mark. This technical observation does not affect the outcome of this uncontested proceeding as Complainant has submitted evidence that tends to support its claim of secondary meaning and common law rights in FAIRVIEW COMMERCIAL LENDING
Frederick M. Abbott