DECISION

Sacramento Home Loans, Inc. v. MH Networks LLC and Alan Martin

Claim Number: FA0402000241937

PARTIES

Complainant is Sacramento Home Loans, Inc. (“Complainant”), represented by Stephen L. Davis, of Davis & Leonard, LLP, 451 Arden Way, Sacramento, CA 95815.  Respondent is MH Networks LLC and Alan Martin (“Respondent”), represented by James E. Starnes, of Starnes Law Firm, 22 W. Bryan Street, Suite 200, Savannah, GA 31401.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <sacramentohomeloans.com>, registered with Enom, Inc.

PANEL

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

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 24, 2004; the Forum received a hard copy of the Complaint on February 25, 2004.

On March 1, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <sacramentohomeloans.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 29, 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@sacramentohomeloans.com by e-mail.

A timely Response was received and determined to be complete on March 26, 2004.

On April 1, 2004 an Additional Submission was received from Complainant.  The Additional Submission did not comply with Supplemental Rule 7, as the Forum received payment after the deadline.  Nevertheless, the Panel has waived the noncompliance and shall consider the Additional Submission.

On April 5, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1.      Respondent’s <sacramentohomeloans.com> domain name is confusingly similar to Complainant’s Sacramento Home Loans mark.

2.      Respondent does not have rights or legitimate interests in the <sacramentohomeloans.com> domain name.

3.      Respondent registered and used the <sacramentohomeloans.com> domain name in bad faith.

B. Respondent

1.      Respondent does not contest that the subject domain name and Complainant’s name are facially identical.

2.      Respondent has rights and legitimate interests in the subject domain name.

3.      Respondent did not register and use the subject domain name in bad faith.

4.      Complainant is engaged in reverse domain name hijacking.

C. Additional Submissions

1.      Complainant rebutted Respondent’s Response, asserting that late registration of the mark is not dispositive, that it had used the mark continuously for over a decade proceeding Respondents registration of the subject domain name, and that under the circumstances the registration was in bad faith.

FINDINGS

The Panel finds in favor of Respondent and denies the relief requested by Complainant.

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 that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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

The Panel finds that Complainant lacks rights to the SACRAMENTO HOME LOANS mark merely because Complainant registered the name with the California Secretary of State’s Office. See Netro Corp. v. Koustas, FA 109723 (Nat. Arb. Forum June 12, 2002) (“Registration of a company name with a state's secretary of state does not create protectable rights under the Policy.”); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, without further evidence of common law trademark, the Complainant did not establish rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by registering its company name CYBERIMPRINTS.COM, INC. with the California Secretary of State).

Further, Respondent registered the disputed domain name on May 30, 2003. Complainant has stated that it registered the service mark SACRAMENTO HOME LOANS with the Secretary of State of California on June 10, 2003, which is after Respondent’s registration of the domain name.  See Abt Electronics, Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004) (finding that the "vast majority of decisions" under Policy ¶ 4(a)(i) require a complainant's rights to predate a respondent's registration of a domain name in order for a complainant to prevail.); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration. . .of the domain name”); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that Complainant may have in its common law mark did not predate Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).

Complainant cannot rely solely upon its registration and use of the <sacramentohomeloans.net> domain name. The Panel finds that without evidence to prove secondary meaning associated with Complainant’s SACRAMENTO HOME LOANS mark, Respondent must prevail under Policy ¶ 4(a)(i). See GLB Servicos Interativos S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002) (holding that Complainant’s mere possession of a domain name registration, without demonstrating any common-law or registered rights in a mark, was insufficient to grant standing to bring a claim under the UDRP); see also Sampatti.com Ltd. v. Rana, AF-0249 (eResolution July 31, 2000) (“[T]he mere fact of creating and operating a company having as a name a common word plus a dot and a TLD suffix does not give to the company itself the sole right to the word.”); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that simply operating under a business name does not, per se, constitute secondary source identification sufficient to warrant a finding of common law rights in a mark).

Furthermore, Respondent has merely registered a geographic term alongside terms that describe the services it is providing at the disputed domain name.  Since geographic terms are not afforded protection under the Policy, the Panel finds that Complainant cannot prevail under Policy ¶ 4(a)(i). See Port of Helsinki v. Paragon Int’l Projects, Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding that ICANN Policy does not provide protection for geographic names); see also Neusiedler Aktiengesellschaft v. Kulkarni, D2000-1769 (WIPO Feb. 5, 2001) (“Geographic names can not be monopolized by registering a trademark or company name. The use of geographic terms as such in domain names or otherwise by third parties is generally possible despite a trade-mark registration.”); see also 15 U.S.C. § 1052(e)-(f); Lanham Act § 2(f) (A term is generally not viable for registration if it is “merely descriptive” when applied to the goods of the applicant.); see also General Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding that the term "craftwork" is in widespread use in a descriptive sense and therefore Respondent has successfully rebutted Complainant’s arguments and has proven that it is in the business of selling generic and descriptive domain names such as craftwork.com).

Rights or Legitimate Interests

The Panel finds that the domain name is nothing more than a geographic term combined with a description of Respondent’s services, which evidences rights and legitimate interests in the disputed domain name. See Pocatello Idaho Auditorium Dist. v. CES Mkt’g Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (“[G]eographic terms are rarely, if ever, protected by trademark law because to do so would preclude others from using such words in a descriptive manner. . . . To hold otherwise would preempt the nominative or descriptive use necessary to refer to the location in question”); see also Sorel Corp. v. Domaine Sales Ltd., FA 96674 (Nat. Arb. Forum Mar. 28, 2001) (finding that Respondent showed that the SOREL name is used as a geographic term; thus, the complainant cannot claim an exclusive right to use the name as it is not exclusively associated with Complainant’s business).

Respondent asserts that it “owns or controls the ‘loans’ and ‘home loans’ Internet domains for almost every major city and state in the United States, and several others worldwide.” Response at 4.  The disputed domain name is one such geographically oriented name as it incorporates the term “Sacramento,” which describes the city that Respondent is marketing its loan services to.  The Panel finds that Respondent is using the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a fair use under Policy ¶ 4(c)(iii) by using the name to further Respondent’s own business plan and to provide an Internet tool whereby consumers can logically and easily locate lenders within their own immediate geographical area. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Coming Attractions, Ltd. v. Comingattractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000) (finding Respondent had the right to register the subject domain name, <comingattractions.com>, based upon the generic usage of the term "coming attractions").

Registration and Use in Bad Faith

The Panel finds under Policy ¶ 4(b)(iii) that Complainant has furnished no evidence to show that Complainant’s business has been disrupted. See PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO Apr. 29, 2002) (finding that because Complainant failed to provide any factual allegations as to the nature of use of the disputed domain name, Complainant failed to prove that Respondent’s domain names were being used in bad faith); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent successfully rebutted Complainant’s averments that it registered and used the domain name at issue in bad faith and that Complainant produced no credible evidence of bad faith on the part of Respondent); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that Respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”).

The Panel finds that the disputed domain name registration preceded any rights Complainant may now have in the SACRAMENTO HOME LOANS mark; thus, Respondent could not have registered the disputed domain name in bad faith. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name.”); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is impossible for Respondent to register a disputed domain name in bad faith if Complainant's company did not exist at the time of registration); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent registered the domain name in question before application and commencement of use of the trademark by Complainant).

Respondent argues under Policy ¶ 4(b)(iv), “no reasonable consumer could possible (sic) confuse the two entities or their websites, which contain accurate contact information.  If anything, Respondent’s lending services network has driven consumers to Complainant’s website, or other websites, which have chosen domain names connecting geographical regions with valuable products and services”. The Panel finds this argument to be persuasive.  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).

The Panel specifically finds that Respondent registered the disputed domain name in good faith, which destroys any allegation of bad faith on the part of Respondent. See Eddy’s (Nottingham) Ltd. v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the domain name where Respondent registered the domain name in good faith in the interest of promoting Respondent’s business); see also MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (Panelist David Sorkin, dissenting) (finding that Respondent’s reasonable belief in its legitimate right to register the disputed domain name precluded a finding of bad faith registration).

Reverse Domain Hijacking

Respondent alleges that Complainant is engaged in reverse domain name hijacking.  The Panel declines to make such a finding.  See Credit Suisse Group v. Leu Enters. Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23, 2002) (finding no Reverse Domain Name Hijacking where “the Panel consider[ed] the Complaint to have been misconceived rather than brought in bad faith”).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <sacramentohomeloans.com> domain name remain with Respondent.

John J. Upchurch, Panelist
Dated: April 20, 2004

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