DECISION

IndyMac Bank F.S.B. v. Jim Hogan

Claim Number:  FA0312000220042

PARTIES

Complainant is IndyMac Bank F.S.B. (“Complainant”), represented by B. Brett Heavner, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 1300 I Street NW, Washington, DC 20005-3315.  Respondent is Jim Hogan  (“Respondent”), 93879 Shady Dr. NW, Lilburn, GA 30047.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <atlantaloanworks.com>, <atlantaloanworks.net>,   <i-loanworks.com> and <i-loanworks.net>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 17, 2003; the Forum received a hard copy of the Complaint on December 18, 2003.

On December 19, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <atlantaloanworks.com>, <atlantaloanworks.net>,                        <i-loanworks.com> and <i-loanworks.net> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 2004 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@atlantaloanworks.com, postmaster@atlantaloanworks.net,         postmaster@i-loanworks.com and postmaster@i-loanworks.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 14, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <atlantaloanworks.com>, <atlantaloanworks.net>,                        <i-loanworks.com> and <i-loanworks.net> domain names are confusingly similar to Complainant’s LOANWORKS mark.

2. Respondent does not have any rights or legitimate interests in the <atlantaloanworks.com>, <atlantaloanworks.net>, <i-loanworks.com> and <i-loanworks.net> domain names.

3. Respondent registered and used the <atlantaloanworks.com>, <atlantaloanworks.net>, <i-loanworks.com> and <i-loanworks.net> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is one of the leading mortgage lenders in the U.S. and has achieved earnings of $143 million in 2002.  Complainant is a wholly owned subsidiary of IndyMac Bancorp, Inc., a publicly traded company on the New York Stock Exchange with a market capitalization of approximately $1.6 billion.  Complainant has used the LOANWORKS mark in conjunction with its mortgage business since 1997.  Complainant holds several registrations with the U.S. Patent and Trademark Office (“USPTO”) for the LOANWORKS mark including, Reg. Nos. 2,238,058 and 2,238,162 (both registered on April 13, 1999).  Complainant uses the <loanworks.com> domain name in conjunction with its business.

Respondent registered the four (4) domain names between the period July 3, 2000 and July 12, 2000.  The domain names resolve to “under construction” websites.  Respondent is a mortgage broker who operates a website located at the domain name <loansource.com>.  Respondent via a letter requested Complainant to make a bid for the purchase of the <i-loanworks.com> and <i-loanworks.net> domain names.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(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 and/or Confusingly Similar

Complainant has established rights in the LOANWORKS mark by registering the mark with the USPTO and using the mark in commerce since 1997.  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 Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982).

Respondent’s domain names are confusingly similar to Complainant’s LOANWORKS mark because the domain names fully incorporate the mark and merely add the geographic term “Atlanta” or the prefix “i-.”  The addition of the geographic term and prefix are insufficient to circumvent the Panel from finding the domain names confusingly similar to the LOANWORKS mark.  Furthermore, the addition of the generic top-level domains “.com” and “.net” are insufficient to distinguish the domain names from Complainant’s mark.  See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity); 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel may infer that Respondent lacks rights and legitimate interests in the domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent’s attempt to sell the <i-loanworks.com> and <i-loanworks.net> domain names is evidence that Respondent lacks rights and legitimate interests in the two (2) domain names.  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Furthermore, Respondent has failed to develop websites for the four (4) domain names for over three (3) years, which constitutes passive holding and is evidence that Respondent lacks rights and legitimate interests in the domain names.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Also, the record fails to establish that Respondent is commonly known by any of the domain names.  The WHOIS information for the domain names does not establish that Respondent is commonly known by the domain names.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

It may be inferred that Respondent had actual or constructive knowledge of Complainant’s mark because the mark was registered with the USPTO, the mark has been used in commerce since 1997 and Respondent is a mortgage broker that owns and operates a mortgage website.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration 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”).

Furthermore, it may be inferred that Respondent registered the domain names to disrupt Complainant’s business because Respondent is a mortgage broker and operates a mortgage website, which competes with Complainant.  Internet users who attempt to contact Complainant online via Respondent’s domain names may mistakenly assume that Complainant does not have an online presence which would result in lost business for Complainant.  Respondent’s use of the domain names is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).

In addition, Respondent has failed to develop a website for any of the domain names.  The domain names have sat undeveloped for over 3 years, which constitutes passive holding and is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  The Panel will not wait until the domain names have actually been used before finding bad faith because it is inconceivable that Respondent could use the domain names in a manner that would not infringe upon Complainant’s mark and given Respondent’s prior attempt to sell two (2) of the domain names.  See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <atlantaloanworks.com>, <atlantaloanworks.net>, <i-loanworks.com> and <i-loanworks.net> domain names be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  January 28, 2004

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