DECISION

1-800-East West Mortgage Company, Inc. v. Domain Asia Ventures

Claim Number:  FA0403000245922

PARTIES

Complainant is 1-800-East West Mortgage Company, Inc. (“Complainant”), represented by Sean F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176.  Respondent is Domain Asia Ventures (“Respondent”), 255 Xiaoxue Road, Xiamen, Fujian 361001, China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwisoldmyhouse.com>, registered with Moniker Online Services.

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 March 12, 2004; the Forum received a hard copy of the Complaint on March 15, 2004.

On March 16, 2004, Moniker Online Services confirmed by e-mail to the Forum that the domain name <wwwisoldmyhouse.com> is registered with Moniker Online Services and that Respondent is the current registrant of the name. Moniker Online Services has verified that Respondent is bound by the Moniker Online Services 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 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 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@wwwisoldmyhouse.com 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 April 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwwisoldmyhouse.com> domain name is confusingly similar to Complainant’s ISOLDMYHOUSE.COM mark.

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

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

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

FINDINGS

Complainant, 1-800-East West Mortgage Company, Inc., operates it business under the moniker ISOLDMYHOUSE.COM.  It claims common-law rights under this name, and offers a previous case (1-800-East West Mortgage Co., Inc. v. Shing, FA 175288 (Nat. Arb. Forum Sep. 17, 2003)) as evidence of its rights in this mark.  Complainant has used the ISOLDMYHOUSE.COM mark since as early as 2000.  On May 2, 2003, Complainant sent a cease and desist letter to Respondent.

Respondent registered the disputed domain name, <wwwisoldmyhouse.com>, on December 6, 2002.  Respondent is using the domain name to lead Internet users to a pay-per-click search engine service that features third-party real estate services.

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 claims it has common-law rights in the ISOLDMYHOUSE.COM mark.  To establish evidence of secondary meaning it does not present any direct evidence.  Rather, Complainant refers to 1-800-East West Mortgage Co., Inc. v. Shing, FA 175288 (Nat. Arb. Forum Sep. 17, 2003), where a previous Panel found that Complainant has rights in the ISOLDMYHOUSE.COM mark.  Although previous Panel decisions are not binding, the Panel finds the decision involving Complainant persuasive.  Complainant has demonstrated secondary meaning in the ISOLDMYHOUSE.COM mark, establishing common-law rights.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

The Panel finds the <wwwisoldmyhouse.com> domain name is confusingly dimilar to the ISOLDMYHOUSE.COM mark, the only difference is the addition of the letters “www,” which does not significantly distinguish the domain name from Complainant’s mark.  See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark); see also Marie Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to produce a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the disputed domain name.  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). Furthermore, because Respondent failed to submit a Response, the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Internet users who omit the first period when typing Complainant’s mark in an Internet browser bar will arrive at Respondent’s domain name.  Attracting Internet traffic by relying on a third-party’s customers’ typographic errors is known at “typosquatting.”  Typosquatting is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where Respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the Complaint).

There is nothing in the record, including Respondent’s WHOIS domain name registration information, which indicates that Respondent is commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii).  See 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is appropriating Complainant’s mark to lead Internet users, seeking Complainant’s site, to a search engine.  Because Respondent is profiting from this redirecting, it is creating a likelihood of confusion to attract Internet users for commercial gain.  This is bad faith registration and use, pursuant to Policy ¶ 4(b)(iv).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website). 

Additionally, Respondent is typosquatting on Complainant’s mark to siphon off customers familiar with the goodwill associated on or about the mark.  This is bad faith registration and use, pursuant to Policy ¶ 4(a)(iii).  See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that “[t]he absence of a dot between the “www” and “canadiantire.com” [in the <wwwcanadiantire.com> domain name is] likely to confuse Internet users, encourage them to access Respondent’s site” and evidenced bad faith registration and use of the domain name); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <wwwisoldmyhouse.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  May 4, 2004

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