WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IndyMac, Inc. v. Financial Insurance Associates
Case No. D2000-0535
1. The Parties
Complainant is IndyMac, Inc. ("IndyMac"), a Delaware corporation with its principal place of business at 155 North Lake Avenue, Pasadena, California, 91101, United States of America.
Respondent is Financial Insurance Associates ("FIA"). Registrant�s address is 5996-I Steubenville Pike, Suite 205, Mckees Rocks, Pennsylvania, 15136, United States of America. The Administrative Contact listed is M. Cinti, at the same address, Suite 204.
2. The Domain Name and Registrar
The Domain Name at issue is INDYMACLOANS.COM ("Domain Name"), registered with Network Solutions, Inc. ("NSI").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received IndyMac�s Complaint by e-mail on June 1, 2000 and in hard copy on June 6, 2000. The Complainant made the required fee payment. On June 5, 2000, the Center acknowledged the receipt of the Complaint to IndyMac and assigned this matter Case No. D2000-0535.
On June 6, 2000, the Center requested NSI to verify the registration data. On June 12, 2000, NSI confirmed that it is the Registrar of the Domain Name Registration and, inter alia, that FIA is the current Registrant of the INDYMACLOANS.COM domain name registration.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules, and the Supplemental Rules for the Policy (the "Supplemental Rules"), the Center on June 13, 2000 sent to Respondent, with a copy to the Complainant, a notification of the commencement of the administrative proceeding, together with a copy of the Complaint. The formal date of the commencement of this administrative proceeding is June 13, 2000.
The Center has not received Respondent�s Response. On July 6, 2000, the Center provided notification of Respondent�s Default. Pursuant to the Rules, Paragraph 14, when a Respondent is in default, "the Panel shall draw such inferences [from the Complaint] as it considers appropriate." Pursuant to Complainant�s request, the Center appointed a single panelist to resolve this dispute. After receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Thomas L. Creel as the single panelist.
4. Factual Background
Complainant is in the financial services industry, specializing in mortgage and construction banking/lending through the purchase of real estate loans. Complainant owns the following United States Service Mark Registrations:
- U.S. Registration No. 2,212,512 for the INDYMAC mark, in Class 36, for "financial services, namely, mortgage banking services," which issued December 12, 1998, stating a date of first use anywhere and in interstate commerce of June 26, 1997;
- U.S. Registration No. 2,241,499 for the INDYMAC CONSTRUCTION LENDING CORPORATION OF AMERICA mark, in Class 36, for "financial services, namely, construction lending services," which issued April 27, 1999, stating a date of first use anywhere and in interstate commerce of June 5, 1997;
Complainant also owns the domain name INDYMAC.COM, which Complainant registered with NSI on March 25, 1996. This has been used to identify Complainant�s website since on or about that date.
The record indicates nothing as to the business of Financial Insurance Associates, save that FIA is the registrant of the domain name. On November 8, 1999, Complainant received an e-mail from Tim Foden, Sr., Webmaster of PA, apparently responding to Complainant�s cease and desist letter of November 2, 1999, directed to FIA (see infra). Mr. Foden referred to the "purchaser" of the Domain Name as his "employer." In addition, the registrant of PALOAN.COM, Pennsylvania Home Loan, Inc., maintains the same address as the Registrant of the domain name. Thus an appropriate inference is that Respondent-FIA is, in fact, Pa, Pennsylvania Home Loan, Inc., or an alter ego thereto.
According to its website, PA is a "one-stop mortgage lending source for all consumers." Unlike Complainant, Respondent does not itself provide financial services; rather, it is a "portal," providing information and services consumers use to make decisions regarding mortgages. Nevertheless, Complainant asserts that Respondent "is a mortgage broker, offering products and services in direct competition with Complainant�s products and services." Complaint � 33 (emphasis added).
There are 269 domain names registered to Respondent. These domain names generally are descriptive of the financial service industry, e.g., WORLDBANKLOANS.COM, PNCLOAN.COM, NORWESTLOAN.COM, MARINEMIDLANDLOANS.COM, HOMESIDELOANS.COM, and CITICORPLOANS.COM. Deleting the generic words "loan" or "loans" from these domain names yields duly registered U.S. trademarks for the World Bank, PNC Financial Corporation, Northwest Bancorporation, Marine Midland Banks, Inc., Homeside Lending, Inc., and First National City Corporation, a.k.a., Citicorp. None of these institutions is related to or affiliated with Respondent; Respondent is not authorized to use any of these institutions� trademarks; and none of the websites corresponding to these domain names, including INDYMACLOANS.COM, currently links to websites for the above-named financial services institutions.
On November 2, 1999, Complainant sent a letter to Respondent asking Respondent to cease and desist Respondent�s use of the Domain Name INDYMACLOANS.COM and to transfer the Domain Name to Complainant. Complainant�s Exhibit 5. Respondent had registered the Domain Name with NSI on September 15, 1999, several months after Complainant�s registration of its INDYMAC trademarks.
As noted, Respondent�s Webmaster replied to Complainant�s cease and desist letter via e-mail. This e-mail asserted that the domain name "was completely thought of and was and is not intended to infringe on any copyrights your company has concerning this . . . there was (sic) alot of funds spent to receive this domain and to register it . . . [and] we will give up the rights to it to you but would only ask that the funds we spent be refunded to us."
Complainant then sent another letter addressed to Mr. Foden at Pennsylvania Home Loan, Inc. accusing cyberpiracy and noting that the out-of-pocket domain name registration costs amounted to a mere $70. The letter also called attention to the 269 famous domain names that had been registered.
The response apologized for the previous webmaster�s acquisition of so many domain names and offered to have the domain name "deleted from the record" in order to facilitate Complainant�s acquisition thereof. The response expressed concern over the previous webmaster�s potential infringement of the intellectual property rights of others. To date, Respondent has neither deleted nor transferred to Complainant the domain name INDYMACLOANS.COM.
5. Parties� Contentions
Complainant requests that the Domain Name be transferred to Complainant because:
(1) Respondent�s use creates a likelihood of confusion with Complainant, its INDYMAC mark, and its INDYMAC.COM domain name.
(2) Respondent has no rights or legitimate interest in the INDYMACLOANS.COM domain name.
(3) Respondent registered and uses the Domain Name INDYMACLOANS.COM in bad faith.
6. Discussion and Findings
Paragraph 4 of the Policy states that the Complainant must prove each of three elements:
(i) that the domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Each of these three elements will be considered separately below.
The Domain Name and Service Marks
Complainant owns the registered service marks for INDYMAC and INDYMAC CONSTRUCTION LENDING CORPORATION OF AMERICA. Complainant also claims common law rights in the mark INDYMAC and notes that it owns the domain name INDYMAC.com which is used to identify Complainant�s website.
The domain name INDYMACLOANS is identical to the Complainant�s trademarks and domain name when the generic word "loans" is removed. In addition, the words "loans" and "lending" are not distinguishing. Furthermore, it is undisputed that both parties are in the financial services industry. More specifically, both parties are involved in providing real estate loans.
Based on the evidence presented, the requirement of Paragraph 4.a.(i) is met. The domain name is identical or confusingly similar to Complainant�s service marks.
Rights or Legitimate Interests in Respect of the Domain Name
The undisputed evidence presented by Complainant also demonstrates that FIA has no rights or legitimate interests in respect of INDYMACLOANS.COM. There is no indication of any legitimate use of the Domain Name by Respondent, let alone legitimate noncommercial use. Respondent�s offer to have the Domain Name "deleted from the record" in order to facilitate its acquisition by Complainant is confirmatory of this lack of legitimate rights.
The website corresponding to the domain name neither contains any information relating to FIA/PA�s business, nor provides any services. There is no evidence of legitimate use of the Domain Name in any business. The site merely provides a link to V, an Internet service provider. This link bears no relation to the provision of loans, which the Domain Name INDYMACLOANS.COM implies.
FIA has not demonstrated preparations to legitimately use the Domain Name. The website for INDYMACLOANS.COM states only that the website will exist in the future. Complainant�s Exhibit 14. The site does not indicate what services or information it will offer.
Respondent is known as PA, FIA or Pennsylvania Home Loan, Inc., not INDYMACLOANS.COM.
Therefore, the requirement of Paragraph 4.a.(ii) is met.
Bad Faith
The undisputed evidence presented by Complainant demonstrates that FIA registered the Domain Name in bad faith and is using the domain name INDYMACLOANS.COM in bad faith.
FIA�s registration of 269 domain names, all of which use well-known financial services industry marks, evinces a pattern of conduct for the purpose of "prevent[ing] the owner of the trademark or service mark from reflecting the mark in a corresponding domain name . . . and disrupting the business of a competitor." Policy Paragraph 4.b.(iii-iv). Respondent�s December 3, 1999, letter to Complainant all but admits bad faith:
I�m sorry about this . . . I had no idea this many was registered, I have only recently took over as webmaster and I have been slowly trying to clean things up. I have spoken to my employer on this matter and he has assured me that this caught him also by unnotice, he had allowed the old webmaster the business of acquiring the domain names . . . I believe that the domain name aspect needs to look at certain things to prevent this from happening and to stop the incursance on someones copy right.
Respondent�s website at domain name INDYMACLOANS.COM is a single page with minimal content � an advertisement for Verio. Internet users are likely to mistakenly believe that Complainant does not have a web presence, and therefore, interferes with Complainant�s business. Furthermore, Internet users are likely to be confused and deceived into mistakenly believing that Respondent and/or Verio and their activities are offered, authorized, licensed, or sponsored by Complainant or are otherwise connected, associated, or affiliated with Complainant. Diversion of prospective customers through the use of a minimalist or "tombstone" website constitutes bad faith. See S.S.S.G. de Surveillance S.A. v. Inspectorate (WIPO Case No. D2000-0025).
Furthermore, because the INDYMACLOANS.COM domain name has no value apart from Complainant�s INDYMAC mark and INDYMAC.COM domain name, no excuse exists for Respondent�s registration of the domain name. See Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028) (inferring respondent�s bad faith intent to sell domain name where name would not otherwise be commercially useful).
The requirement of Paragraph 4.a.(iii) is met.
7. Decision
Complainant has proven each requirement of Paragraph 4 of the Policy. Therefore, the remedy requested by Complainant is GRANTED and Financial Insurance Associates is required to TRANSFER the Domain Name INDYMACLOANS.COM to IndyMac, Inc.
Thomas L. Creel
Presiding Panelist
Dated: August 4, 2000
Full & Egal Universal Law Academy