DECISION

Ambank Co., Inc. v. American Lending Network

Claim Number: FA0406000289033

PARTIES

Complainant is Ambank Co., Inc. (“Complainant”), represented by Todd D. Epp, of Abourezk Law Offices, P.C., PO Box 1140, Sioux Falls, SD 57101-1140.  Respondent is American Lending Network (“Respondent”), represented by Daniel B. Garriott, of Nelson, Snuffer, Dahle & Poulsen, P.C., 10885 S. State St., Sandy, UT 84070.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <amlend.com>, registered with Tucows 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.

Judge Nelson A. Diaz (Retired) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 22, 2004; the Forum received a hard copy of the Complaint on June 25, 2004.

On June 23, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <amlend.com> is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 June 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 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@amlend.com by e-mail.

A timely Response was received and determined to be complete on July 20, 2004.

The Forum received a timely and complete Additional Submission from Complainant on July 26, 2004.

On July 28, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Nelson A. Diaz (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

(1)  Complainant contends that Respondent’s domain name <amlend.com> is identical to Complainant’s federally registered service mark;

(2)  Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name. 

(3)  Complainant contends that Respondent registered and is using the domain name in bad faith.

B. Respondent

(1)  Respondent does not deny that the domain name is identical to Complainant’s mark.  Respondent contends the services it offers differ from the services offered by Complainant. 

(2)  Respondent denies that it has no rights or legitimate interest in the disputed domain name, asserting it has made legitimate use of the domain name since 1997.

(3)  Respondent denies that it has acted in bad faith in registering and using the domain name.

FINDINGS

The Panel finds that: (a) <amlend.com> is identical or confusingly similar to Complainant’s registered service mark; (b) Respondent has a legitimate interest in the domain name; and (c) Respondent did not register the domain name in bad faith and is not using the domain name in bad faith.  For the reasons explained below, the Panel orders that the domain name NOT be transferred to 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.”  The Panel has read and considered all the submissions in reaching its decision.

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the domain name be 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

Complainant is the owner of U.S. Registration No. 2,160,327 for the mark AMLEND for “appraisal services for the purpose of obtaining a mortgage.”  As the owner of a federal registration, Complainant has rights in the service mark AMLEND.  Although U.S. Registration No. 2,160,327 issued after Respondent registered the domain name,  Complainant’s rights in the mark date back to the mark’s first use in commerce.  For the purposes of the instant proceeding, Complainant’s rights in its mark are given effect as of the April 11, 1997 filing date of its application with the U.S. Patent and Trademark Office.  FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Brief consideration is given to Respondent’s assertion, under “Registration and Use in Bad Faith,” that AMLEND is generic and is not entitled to protection.  It is the Panel’s opinion that the mark AMLEND is not generic in and of itself.  To the contrary, AMLEND is suggestive, as it is associated with the concept “American Lending.”  Consequently, it benefits from a limited ambit of protection.  Further, registration on the Principal Register is prima facie evidence of the validity of Complainant’s mark.  15 U.S.C. 1115.  Respondent offered no evidence that AMLEND is generic, nor any evidence that Complainant’s incontestable registration is not valid.

Complainant has met its burden, demonstrating it has rights in a protectable mark.

Regarding the similarity of the registered domain name to Complainant’s protectable mark, it is clear under paragraph 4(a) of the Policy that <amlend.com> is identical to Complainant’s mark AMLEND in both appearance and phonetically.  The mere addition of the “.com” generic top-level domain is not sufficient to distinguish the domain name from the mark.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark).

Respondent also alleges that its service is distinctly different than those offered by Complainant.  Respondent claims that it services mortgages and Complainant offers appraisal services.  As indicated,  some states prohibit real estate companies from providing both lending and appraisal services.  While additional factors beyond appearance, spelling and pronunciation are ordinarily considered in determining likelihood of confusion between trademarks (such as the goods or services with which the marks are used, the consumers involved, and the trade channels involved) neither Complainant nor Respondent articulates why the Panel should find one way or the other on this matter.  Respondent focuses solely on this issue in the later section “Registration and Use in Bad Faith.”  While the Panel could find that the scope of the parties’ respective services precludes confusion, the argument as proffered by Respondent merely supports a finding of no bad faith; it is not probative on the issue of confusion.  See Seagate Tech. v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002) (“No inference can be drawn . . . that the . . . Respondent could make commercial gain . . . by attracting Internet users seeking Complainant’s products and services” even though Respondent’s <seagate.biz> domain name was identical to Complainant’s SEAGATE mark.”)

 

In this proceeding, the evidence provided by the parties demonstrates there is some overlap in the respective services, and the marks are identical.  Accordingly, it is clear that <amlend.com> is confusingly similar to Complainant’s mark under the Policy. 

Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:

(1) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(2) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(3) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Complainant offers no evidence in support of its claim that Respondent has no legitimate interest in <amlend.com>.  In its Supplemental Response, Complainant again fails to articulate why Respondent has no legitimate interest in the domain name.  Indeed, Complainant states that “it has no opinion as to whether the services infringer proffers are legitimate or not.”  Complaint at 3.  Complainant’s statement that it “appears to be the infringer’s burden to prove” is incorrect.  Complainant most certainly bears the burden of proof.  See Paragraph 4(a) of the Policy.  Respondent, of course, can provide evidence to the contrary or argue otherwise, as it has in this instance.

In its Response, Respondent avers that it has made a legitimate use of the disputed domain name, i.e., that it registered the domain name in 1997 as an abbreviation of its name.  While hardly overwhelming evidence, the Panel has no reason to doubt the truthfulness of Respondent’s assertion that it registered the domain in 1997 as an abbreviation of its name American Lending Network.  Nonetheless, as stated, the burden was not Respondent’s to overcome. 

The Panel finds that under paragraph 4(c)(1) of the Policy, Respondent demonstrated preparations to use the domain name in connection with a bona fide offering of services prior to the dispute.  Respondent not only demonstrated preparations to use the domain, it did and continues to use the domain name in connection with bona fide services.

Complainant failed to meet its burden of proof with regard to the second prong under paragraph 4(a) of the Policy.  The Panel finds that the Respondent has rights or legitimate interests in respect of the domain name <amlend.com>. 

Registration and Use in Bad Faith

Under paragraph 4(b) of the Policy, evidence of a registrant’s bad faith registration and use includes:

(1) Circumstances indicating the domain name were registered for the purpose of resale to the trademark owner or competitor for profit;

(2) A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

(3) Registration of the domain name for the purpose of disrupting the business of competitor; or

(4) Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark.

Complainant offers no evidence that Respondent registered the domain name in bad faith.   Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence”).  Complainant’s argument instead focuses squarely on a likelihood of confusion analysis, applying ten factors to determine likelihood of confusion.  These factors, borrowed from in re E.I. DuPont DeNemours & Co., (476 F.2d 1357, 1361-2 (C.C.P.A. 1973)) and Polaroid Corp. v. Polarad Elecs., (287 F.2d 492, 495-6 (2d Cir. 1960), cert. denied, 368 U.S. 820 (1961)), are used by courts to determine trademark infringement.  Respondent also applies these factors. 

Complainant does not persuade the Panel that this is anything more than a misguided attempt to convert this proceeding into a full-blown trademark infringement matter. Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 24, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”); see also AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (finding that assertions of trademark infringement "are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else"). 

DECISION

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

Accordingly, it is Ordered that the <amlend.com> NOT be transferred to the Complainant, thereby remaining under the registration of Respondent.

Judge Nelson A. Diaz (Retired), Panelist

Dated: August 11, 2004

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