Ameriquest Mortgage Company v. Jason Banks

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ameriquest Mortgage Co. v. Jason Banks

Case No. D2003-0293

1. The Parties

Complainant is Ameriquest Mortgage Company, Orange, California ("Ameriquest"

or "Complainant").

Respondent is Jason Banks, Florida ("Banks" or "Respondent").

2. Domain Name and Registrar

The domain name at issue is: <wwwameriquestmortgage.com> (the "domain

name").

The registrar is Go Daddy Software, Inc., (the "Registrar").

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

the Complaint by e-mail on April 15, 2003, and in hard copy on April 17, 2003.

The Center verified that the Complaint satisfies the formal requirements of

the ICANN 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"). Complainant made the required payment

to the Center.

On April 16, 2003, the Center transmitted via e-mail to the Registrar

a request for registrar verification in connection with this case. On April 16, 2003,

the Registrar transmitted via e-mail to the Center its response, confirming

(inter alia) that (1) a copy of the Complaint was sent to it by Complainant

as required by Supplemental Rule 4(b); (2) the domain name was registered

through it; (3) Respondent is the current registrant of the domain name; (4)

the Administrative, Technical and Billing Contacts for the domain name are Respondent;

(5) the Policy applies to the domain name; and (6) the domain name will remain

locked during this administrative proceeding.

On April 24, 2003, the Center transmitted the Notification of Complaint

and Commencement of Administrative Proceeding, together with a copy of the Complaint,

via e-mail with copy by courier (FedEx) to Respondent and to the Registrar.

The Center advised that Respondent’s Response was due by May 14, 2003,

pointed out that the Response should be in accordance with the Rules and the

Supplemental Rules, and described the consequences of a default if the Response

was not sent by the due date. The Center also noted that Complainant had elected

for a single Panelist to decide this matter.

The requirements of Rule 2(a) having been satisfied, the formal date of the

commencement of this administrative proceeding, pursuant to Rule 4(c), is April 24, 2003.

[1]

No Response was received from Respondent by the May 14, 2003 deadline.

On May 16, 2003, the Center transmitted to Respondent, via e-mail,

a Notification of Respondent Default. The Center advised Respondent that (a)

Respondent had failed to comply with the deadline for submission of its Response

and (b) the consequences of default, including (1) that a single Panelist would

be appointed (per the Complainant’s request); (2) that the Panel would be informed

of Respondent’s default and would decide, in its sole discretion, whether to

consider a Response if submitted later; and (3) notwithstanding the default,

the Center would continue to send all case-related materials to Respondent.

No Response conforming to the Rules was received from Respondent, either by

the May 14, 2003 deadline or at any other time.

On May 23, 2003, the Center advised the parties, in accordance with

Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist

in this case. Pursuant to Rule 15(b), the Center further informed the parties

that, absent exceptional circumstances, the Panel would forward a decision to

the Center by June 6, 2003.

On May 23, 2003, the Center transmitted the case file to the Panel.

4. Factual Background; Parties’ Contentions

a. The Trademark

The Complaint is based on Complainant’s alleged ownership of rights in marks

either identical or confusingly similar to the domain name, including the marks

AMERIQUEST and AMERIQUEST MORTGAGE, which Complainant claims to have used for

mortgage banking, lending, and brokerage services since at least January 1995.

Complainant owns several United States federal registrations for such marks.

Complainant provided the Panel with registration certificates for several of

these marks, including U.S. Trademark Registration No. 2,620,964.

U.S. Reg. No. 2,620,964 is for the word mark AMERIQUEST MORTGAGE in block letters.

A block-letter registration is the broadest claim to a word mark, in that it

is "not … restricted to any particular form or type." Exxon Corp.

v. National Foodline Corp., 579 F.2d 1244, 1247 (C.C.P.A. 1978). This

registration issued in 2002 for a list of services including mortgage banking

services, and claims a date of first use in 1995.

b. Jurisdictional Basis

The dispute is within the scope of the Policy, and the Panel has jurisdiction

to decide the dispute. The Registrar’s registration agreement incorporates the

Policy by reference.

On Page 6 of its Complaint, Complainant avers that each of the three requirements

of Paragraph 4(a) of the Policy have been satisfied.

c. The Complaint

Complainant asserts as follows:

- That Complainant owns the marks AMERIQUEST and AMERIQUEST MORTGAGE, as well

as other related marks, and possesses numerous federal trademark registrations

for these marks.

- That Complainant owns the registrations for numerous websites incorporating

the mark AMERIQUEST, including <ameriquestmortgage.com>.

- That Complainant has invested heavily in advertising and promotion of its

marks, and that the marks have become famous.

- That Respondent registered the domain name on February 8, 2003, and caused

it to resolve to a page on Complainant’s own website which includes a request

for a loan online.

- That Complainant’s counsel twice mailed cease-and-desist letters to Respondent,

but received no response.

- That the domain name is identical or confusingly similar to Complainant’s

trademark(s).

- That Respondent has no rights or legitimate interest in respect of the domain

name because (1) Respondent is not affiliated with Complainant; and (2) Respondent

has never been commonly known by the domain name.

- That Respondent registered and is using the domain name in bad faith.

d. The Response

As noted above, Respondent is in default pursuant to Rule 5(e), Rule 14 and

Supplemental Rule 7(c) because no Response was received from Respondent by the

applicable deadline.

Unlike in a U.S. court proceeding, however, a default does not automatically

result in a finding for the Complainant. Rather, under Paragraph 4(a) of the

Policy, it remains the Complainant’s burden to establish that all three of the

required criteria for a transfer of the domain name or other remedy have been

met.

Under Rule 5(e) and Rule 14(a), the effect of a default by Respondent is that

the Panel shall proceed to a decision on the Complaint. Under Rule 14(b), the

Panel is empowered to draw such inferences from Respondent’s default as it considers

appropriate.

5. Discussion and Findings

a. Regulations Applicable to Consideration of the Merits

The Panel now proceeds to consider this matter on the merits in light of the

Complaint, the Response (or lack thereof), the Policy, the Rules, the Supplemental

Rules, and other applicable legal authority, pursuant to Rule 15(a). In the

Panel’s view, given that both parties to this dispute appear to be based in

the United States, applicable authority shall include relevant principles of

United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect

to the domain name, each of the following:

(i) The domain name is identical or confusingly similar to a trademark in which

Complainant has rights; and

(ii) 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.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative,

circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be

evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any

one of which, if proved by Respondent, would demonstrate Respondent’s rights

or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii).

b. Effect of the Default

In this case, the Panel finds that as a result of the default, Respondent has

failed to rebut any of the factual assertions that are made and supported by

evidence submitted by Complainant. The Panel does not, however, draw any inferences

from the default other than those that have been established or can fairly be

inferred from the facts presented by Complainant and that, as a result of the

default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, 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 conclude that Respondent has any rights

or legitimate interest in the domain name, such as use or preparation to use

the domain name prior to notice of the dispute, being commonly known by the

domain name, or making legitimate noncommercial or fair use of the domain name.

c. Complainant’s Proof

(i) Domain Name Identical or Confusingly Similar to Trademark

Complainant has proven that it is the owner of trademark rights in the marks

AMERIQUEST and AMERIQUEST MORTGAGE. Complainant’s registrations of its marks

on the Principal Register of the USPTO establish a presumption of validity of

the marks under United States law. See 15 U.S.C. § 1057(b); Avery Dennison

v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations

constitute constructive notice to all other parties of Complainant’s ownership

of the marks. See 15 U.S.C. § 1072.

In comparing Complainant’s marks to the domain name, it is well established

that the generic top-level domain, in this case ".com," must be excluded

from consideration as being a generic or functional component of the domain

name. See Sporty’s Farm v. Sportsman’s Market, 202 F.3d 489, 498, (2d

Cir. 2000). The same is true of the prefix "www." See Reuters Ltd.

v. Global Net 2000, Inc., WIPO Case No.

D2000-0441 (July 13, 2000), (<wwwreuters.com> held confusingly

similar to mark REUTERS).

The remaining term, ameriquestmortgage, is identical to Complainant’s registered

trademark AMERIQUEST MORTGAGE.

(ii) Whether Respondent Has Rights or Legitimate Interest in the domain name

There is no evidence in the record that Respondent has any legitimate interest

in the domain name. Complainant states in the Complaint that Respondent has

no rights or legitimate interest in the domain name. This contention is unrebutted,

and the Panel finds it credible. The federal registration of Complainant’s AMERIQUEST

MORTGAGE mark, coupled with the fact that the domain name is identical (excluding

the prefix and suffix) to this mark, and Respondent’s failure to advance any

of the defenses provided in Paragraph 4(c) of the Policy, lead this Panel to

conclude that Respondent has no rights or legitimate interest in the domain

name.

(iii) Registration and Use in Bad Faith

Complainant’s third hurdle is to establish that Respondent has registered and

used the domain name in bad faith.

Numerous UDRP cases have held that "typosquatting," or registering

a domain name that differs only by a common or likely typographical error from

a Complainant’s trademark, for Respondent’s business advantage (or to Complainant’s

disadvantage), can constitute "bad faith" under paragraph 4(b) of

the Policy. A common such typographical variation is the addition of "www"

to the beginning of the mark, so that Internet users who type the initials "www"

followed by the mark, but who fail to type a dot in between, will access the

Respondent’s domain name. Numerous panels have found bad faith in such cases.

See, e.g., Reuters, supra; Microsoft v. Stoneybrook, WIPO

Case No. D2000-1274 (November 28, 2000), (finding bad faith

in registration of <wwwmicrosoft.com>); Royal Bank of Canada v. Personal,

WIPO Case No. D2001-0761 (July 24, 2001),

(<wwwroyalbank.com>); Bayer Aktiengesellschaft v. Yongho Ko, WIPO

Case No. D2001-0205 (April 6, 2001) (<wwwbayer.com>).

In this case as well, the domain name differs from Complainant’s domain name

only by the common typographical error whereby the user fails to include a dot

after the "www" designator and before the remaining portion of the

name. Unlike the above-cited cases, however, it is somewhat more difficult to

see wherein lies the commercial benefit to Respondent (or harm to Complainant),

since the domain name directs users to a portion of Complainant’s own website.

Although this is therefore a closer case than those cited above, the Panel

nonetheless finds bad faith registration and use of the domain name here as

well. According to Complainant’s unrebutted assertion, supported by evidence

at Annex 6 to the Complaint, Respondent caused the domain name to resolve to

a selected portion of Complainant’s website pertaining to online loans. This

prevented Complainant from choosing whether to have the domain name resolve

to that particular portion of the site, or indeed to that particular site at

all. While Respondent may not have obtained any commercial advantage or inflicted

any readily measurable harm, it has nonetheless interfered with Complainant’s

use of its own federally registered trademark in its own advertising strategy,

and deprived the Complainant of the ability to control how its trademark (or

confusingly similar variants) are being used.

Respondent’s choice to cause the domain name to resolve to a portion of Complainant’s

own website is admittedly an unusual fact pattern. It is not without precedent,

however, and at least one prior panel concluded that such conduct constitutes

bad faith. That panel reasoned as follows:

In the absence of any denial, it is hard to find any legitimate basis for registering

and using the domain name, as the Respondent has. The Complainant contends that

redirection of visitors from <altavistasoftware.com> to the Complainant’s

website is deceptive and clearly intended to build a mistaken link in the mind

of those who type "altavistasoftware" into their web browsers between

the URL "www.altavistasoftware.com" and the Complainant’s URL. This

redirection seems to be a seamless one and it is hard to see how the Respondent

presently benefits from the situation. It is contended by the Complainant that

such redirection will allow the Respondent to divert future users to competing

websites after having built up mistaken confidence in the source of the content

at "www.altavistasoftware.com" on the part of consumers.

"There is some merit in this contention. In the absence of explanation

in this case, it is found that an unconnected party has no right or legitimate

interest to use an otherwise deceptive trademark, name or indicia to redirect

Internet traffic, even if it is directed to the legitimate owner of the trademark,

name or indicia and provider of the services. Generally, such an owner of rights

should be able to control how such trademarks, names and indicia are used in

the course of trade and when so used to control who is directed to its website

and by whom.

As noted above, the domain name is now being used to attract hits, even though

rather unusually users are immediately redirected to the Complainant’s own website.

It is hard to see what purpose the registration and use of the domain name might

have other than to function as an instrument of commerce. That is, to attract

hits and presumably ultimately business, as a result. The suggestion that such

redirection will allow the Respondent to divert future users to competing websites

after having built up mistaken confidence in the source of the content is a

reasonable one. Absent any other explanation, the Panel is prepared to infer

it is a likely objective, even if not necessarily the only one.

The Respondent may have wished to argue that its registration and use was not

in bad faith. However, having chosen not to avail itself of its right to do

so, the Panel has to base its finding on the evidence and submissions as they

stand..

Altavista Co. v. Brunosousa, WIPO

Case No. D2002-0109 (April 3, 2002), (emphasis added).

Similarly, in this case, the Panel concludes that it is bad faith for Respondent

to register and utilize a domain name that incorporates Complainant’s trademarks

to re-direct Internet traffic, even if to a portion of Complainant’s own website.

This registration and use interferes with Complainant’s ability to control the

use of its own trademarks on the Internet, including choosing whether and how

domain names incorporating those trademarks resolve to particular web pages,

and raises the specter that Respondent could at some future time cause the domain

name to resolve to Respondent’s own website or to a competing website. It also

creates a risk that Respondent could collect and use data about Internet users

intending to access Complainant’s website.

The Panel also finds instructive prior panel decisions holding that registration

of a domain name confusingly similar to a Complainant’s trademark, followed

by inaction (i.e., failure to make any use of the domain name) can constitute

bad faith. E.g., Telstra Corp. v. Nuclear Marshmallows, WIPO

Case No. D2000-0003 (February 18, 2000), (registration together

with "inaction" can constitute bad faith). There is a parallel between

such "passive holding" cases and this case, in which Respondent is

not using the domain name for any business or non-business use of its own (the

sole "use" being one created by Complainant). Registrants who have

no use of their own for a domain name stand in a position similar to other passive

users of domain names containing famous or highly distinctive marks, as to which,

in appropriate cases, bad faith may be found.

In sum, the Panel concludes that Respondent has registered and used the domain

name in bad faith.

6. Decision

In light of the findings and analysis by the Panel, the Panel decides that

Complainant has met its burden of proving: (1) the domain name is confusingly

similar to Complainant’s trademark(s) and/or service mark(s); (2) Respondent

has no rights and no legitimate interest in respect of the domain name; and

(3) the domain name has been registered and is being used by Respondent in bad

faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel

requires that the domain name be transferred to Complainant.

Michael A. Albert

Sole Panelist

Dated: June 6, 2003

Footnote

1. On April 29, 2003, Respondent sent an

e-mail message to the Center contending that he had not yet received a copy

of the "formal Complaint." Apparently, although Respondent received

an electronic copy of the Complaint by e-mail, he did not receive the hard copy

sent to him by courier because the address that he provided to the Registrar

(see ¶ 1, supra), and upon which the Center relied, was incorrect.

Domain name registrants are responsible for providing their correct contact

information to the Registrar. The Panel finds that the Center fully complied

with the requirements of Paragraph 2(a) of the Rules when it transmitted the

Complaint to Respondent in electronic form by e-mail (which the Respondent received)

and in hard copy by courier to the mailing address provided by Respondent to

the Registrar. The Center informed Respondent of this by e-mail on May 1, 2003.

Respondent did not respond, and declined to provide an accurate mailing address

for himself. Although there is some indication that Respondent provided false

contact information to the Registrar, the Panel need not and does not rely on

an inference that this was done in bad faith. Cf. World Wrestling Federation

Entertainment, Inc. v. Bessette, Case

No. D2000-0256 (WIPO June 7, 2000), ("The Panel further

finds that Respondent acted in bad faith by providing clearly fictitious address

information to NSI.")

More cases by this complainant

• Ameriquest Mortgage Company v. Elbert Kim — D2004-0381 · amcloan.com · Complaint denied · 11 Aug 2004
• Ameriquest Mortgage Company v. Ling Shun Shing — D2003-0294 · amerquest.com · Transfer · 06 Jun 2003
• Ameriquest Mortgage Company v. Phayze Inc. — D2002-0861 · ameriquestmortage.com · Transfer · 07 Nov 2002