National Arbitration Forum
DECISION
Key Bank N.A.
d/b/a Champion Mortgage Co., Inc. v. James Griffin
Claim Number:
FA0509000562478
PARTIES
Complainant is Key Bank
N.A. d/b/a Champion Mortgage Co., Inc. (“Complainant”),
represented by John Oleske, 437 Madison Avenue, New York, NY 10022.
Respondent is James Griffin (“Respondent”), 8 Frances Ave., Norwalk,
CT 06854.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is
<championmortgageclassaction.com>, registered with Register.com.
PANEL
The undersigned certifies
that she has acted independently and impartially and that to the best of her
knowledge she has no known conflict in serving as Panelist in this
proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum electronically September 15,
2005; the National Arbitration Forum received a hard copy of the Complaint
September 19, 2005.
On September 15, 2005,
Register.com confirmed by e-mail to the National Arbitration Forum that the
<championmortgageclassaction.com> domain name is registered with
Register.com and that the Respondent is the current registrant of the name.
Register.com verified that Respondent is bound by the Register.com
registration agreement and thereby has agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On September 22, 2005, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 12, 2005, by
which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@championmortgageclassaction.com by e-mail.
A timely Response was
received and determined to be complete October 12, 2005.
On October 18, 2005, pursuant to
Complainant’s request to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Hon. Carolyn Marks Johnson as
Panelist.
RELIEF SOUGHT
Complainant requests that
the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant makes the following allegations in this proceeding:
1.
The domain name Respondent registered, <championmortgageclassaction.com>
is confusingly similar to Complainant’s famous CHAMPION MORTGAGE mark.
2.
That Respondent has no right to or legitimate interest in the mark
contained within the disputed domain name and therefore has no rights to or
legitimate interest in the domain name containing Complainant’s protected
mark.
3.
That Respondent acted in bad faith in registering and using a domain
name containing Complainant’s protected mark.
B.
Respondent makes the following contentions in response:
1.
Respondent does not address the issue of confusing similarity but
instead sets out an account of the situation leading up to a lawsuit against
the Complainant.
2.
Respondent does not address any right granted by Complainant for use
of Complainant’s mark; but urges that such rights arise from the need to
give notice to customers of Complainant that they must either join or opt
out of the litigation against Complainant.
3.
Respondent then sets out by general statements four particulars to
show its lack of bad faith under the policy.
FINDINGS
Complainant is
Champion Mortgage Co., Inc., and holds two registrations for the mark from
the appropriate authorities to protect its mark CHAMPION MORTGAGE.
Respondent is James Griffin,
who has an interest in a lawsuit against the Complainant.
Complainant protected its
rights in the mark in 2001 and has a first use in commerce that dates to
1998.
Respondent registered the
disputed domain name in March 2005.
Respondent has not addressed
the specific elements of this ICANN claim. Respondent has produced no
authority for his position that because he needs to give notice of a lawsuit
against this Complainant that he acquires some right to use the
Complainant’s mark to give that notice.
DISCUSSION
Paragraph 15(a) of the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this
Panel to “decide a complaint on the basis of the statements and documents
submitted in accordance with the Policy, these Rules and any rules and
principles of law that it deems applicable.”
Paragraph 4(a) of the Policy
requires Complainant to prove each of the following three elements to obtain
an order that a domain name should be cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant
has rights;
(2)
Respondent has no rights or legitimate interests in respect of the
domain name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical to and/or Confusingly Similar
Complainant contends that it
has established rights in the CHAMPION MORTGAGE mark through registration of
the mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,490,025 issued September 18, 2001). Registration of the mark with the
USPTO is sufficient to establish that Complainant has rights in the mark.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept.
16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”);
see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar.
5, 2002) (finding that panel decisions have held that registration of a mark
is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive.).
Complainant asserts that the
<championmortgageclassaction.com> domain name registered by
Respondent is confusingly similar to Complainant’s CHAMPION MORTGAGE mark
because the domain name incorporates Complainant’s mark in its entirety, and
merely adds the term “class action.” The Panel finds that the addition of
the generic top-level domain “.com” is irrelevant in determining the element
of confusing similarity. Therefore, the Panel concludes that the additions
of the term “class action” and the generic top-level domain “.com” to
Complainant’s mark are insufficient to negate the confusingly similar
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO
Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the complainant combined with a
generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’ detract from the
overall impression of the dominant part of the name in each case, namely the
trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding
that the top level of the domain name such as “.net” or “.com” does not
affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after
the name POMELLATO is not relevant); see also Busy Body, Inc. v.
Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of
the generic top-level domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants.").
Rights to or Legitimate Interests
Complainant argues that
Respondent is not commonly known by the <championmortgageclassaction.com>
domain name and that Respondent has not been licensed or otherwise
authorized by Complainant to use the CHAMPION MORTGAGE mark. The Panel
finds that Complainant met the required showing and that Respondent has not
established rights or legitimate interests in the <championmortgageclassaction.com>
domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy
¶ 4(c)(ii) “to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail”); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name).
The Panel finds that Complainant
satisfied the requirements of ICANN Policy ¶ 4(a)(ii) by showing that it has
rights to and legitimate interests in the mark contained in its entirety
within the disputed domain name that Respondent has no such rights to or
legitimate interests in the mark.
Registration and Use in Bad Faith
Complainant claims that
Respondent is using the <championmortgageclassaction.com> domain name
for Respondent’s commercial gain by redirecting Internet users interested in
Complainant’s goods or services to Respondent’s commercial website. The
Panel finds that Respondent’s use of a domain name that is confusingly
similar to Complainant’s mark to attract Internet users to Respondent’s
website for commercial gain by creating a liklihood of confusion with
Complainant’s mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent linked <drmath.com>, which contains the complainant’s
Dr. Math mark, to a website run by the respondent, creating confusion for
Internet users regarding the endorsement, sponsorship, of affiliation of the
website); see also eBay, Inc v. Progressive Life Awareness Network,
D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is
taking advantage of the recognition that eBay has created for its mark and
therefore profiting by diverting users seeking the eBay website to
Respondent’s site); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent
attracted users to a website sponsored by the respondent and created
confusion with the complainant’s mark as to the source, sponsorship, or
affiliation of that website).
It is clear from the face of
the Respondent’s submission that Respondent had actual notice of
Complainant’s rights in the CHAMPION MORTGAGE mark when it registered
the disputed <championmortgageclassaction.com> domain name and that
Respondent specifically attempts to gain opportunistically by such use. In
addition, as Complainant asserts, its USPTO registration demonstrates that
its mark is distinctive and Respondent’s registration and use of the mark in
the disputed domain name, <championmortgageclassaction.com> evidences
bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence
of bad faith includes actual or constructive knowledge of a commonly known
mark at the time of registration); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds that Complainant
satisfied ICANN Policy ¶ 4(a)(iii) showing “bad faith registration and use.”
DECISION
Having established all three
elements required under the ICANN Policy, the Panel concludes that relief
shall be GRANTED
Accordingly, it is Ordered
that the <championmortgageclassaction.com> domain name be
TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 1, 2005.
