The Complainant is CompuCredit Holdings Corporation and CompuCredit Intellectual Property Holdings Corp. II of Atlanta, Georgia, United States of America represented by The GigaLaw Firm, United States of America.
The Respondent is LeadClick, a Division of First American of San Francisco, California, United States of America represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2010. On December 20, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 20, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2011. The Response was filed with the Center on January 11, 2011. The Complainant filed a Supplemental Filing on January 17, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on January 19, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In view of the Complainant’s unsolicited Supplemental Filing, the Panel afforded the Respondent an opportunity to submit a reply. As a result of transmission difficulties, the date for the Respondent’s reply was extended to February 17, 2011. The Respondent’s reply was timely received by the Center. The date for the Panel to forward its decision to the Center was extended to March 3, 2011. 4. Factual Background
The Complainant is a major provider of financial services to consumers largely underserved by traditional financial institutions. The Complainant is the owner of the federally registered mark FIRST AMERICAN CASH ADVANCE for use with check cashing services and short term loan financing.1 A certificate of registration was issued by the United States Patent and Trademark Office (USPTO) on December 25, 2007. One of the Complainant’s subsidiaries, Valued Services, LLC, is the owner of the corresponding domain name , registered on September 5, 2000.
The disputed domain name was registered on January 5, 2010. The disputed domain name resolves to a website offering payday and cash advance loans online. The Respondent at present is a subsidiary of CoreLogic, Inc., which operates certain business activities spun off by The First American Corporation through a merger concluded on June 1, 2010.
Prior to the Respondent’s registration of the disputed domain name, The First American Corporation had multiple federal registrations for the mark FIRSTAM.COM, including a registration issued by the USPTO on September 9, 1997 for use of this mark with various insurance, real estate, and financial services, and multiple registrations of the mark FIRST AMERICAN, including a registration issued by the USPTO on July 30, 1996 for use of this mark with, inter alia, financial services. The rights in these subsisting marks were not transferred to CoreLogic, Inc. following the merger, but according to USPTO records have been assigned to First American Financial Corporation. 5. Parties’ Contentions A. Complainant
The Complainant presents itself as a leading provider of financial services to consumers who are underserved by traditional financial institutions. According to the Complainant, it provides its financial services and products to a customer base of roughly 75 million Americans. The Complainant owns a federal registration in the United States for the mark FIRST AMERICAN CASH ADVANCE, and maintains that the disputed domain name is identical to the word elements of its mark, save for the abbreviation of “American” as “Am”.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. First, the Complainant asserts that is has not authorized the Respondent to use the Complainant’s FIRST AMERICAN CASH ADVANCE mark. Second, the Complaint maintains that the Respondent has not used or made preparations to use the disputed domain name with a bona fide offer of goods or services, but instead has adopted a domain name identical or confusingly similar to the Complainant’s mark for use with a commercial website where products and services that compete directly with the Complainant’s products and services are offered. The Complainant represents that to the best of its knowledge the Respondent is not commonly known by the disputed domain name, and further asserts that the Respondent is not making any legitimate noncommercial or other fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, intentionally seeking to attract Internet visitors to its website for financial gain, by creating a likelihood of confusion with the Complainant’s “renowned mark” as to source, affiliation or sponsorship. The Complainant asserts that it acquired trademark rights in FIRST AMERICAN CASH ADVANCE long before the Respondent registered the disputed domain name, and argues that the Respondent should at a minimum be deemed to have had notice of the Complainant’s rights at the time the disputed domain name was registered. In addition, the Complainant asserts that bad faith may be inferred from the Respondent’s failure to respond to a cease and desist letter sent by the Complainant’s counsel prior to the commencement of this proceeding. B. Respondent
The Respondent maintains that it was a subsidiary of The First American Corporation at the time it registered the disputed domain name. According to the Respondent, The First American Corporation has used the mark FIRST AMERICAN since as early as 1959, and has obtained multiple United States trademark registrations for FIRST AMERICAN and FIRSTAM.COM. In addition, the Respondent asserts that The First American Corporation is the owner of hundreds of “firstamerican” or “firstam”-formative domain names.
According to the Respondent, in June 2010, the business operations of The First American Corporation were divided between two separate companies: First American Financial Corporation and CoreLogic, Inc. As a result, the Respondent represents that it is now a subsidiary of CoreLogic, Inc., which operates the website with which the disputed domain name is associated. The Respondent also indicates that the FIRST AMERICAN and FIRSTAM.COM marks have been assigned to First American Financial Corporation.
The Respondent argues that the disputed domain name is neither identical nor confusingly similar to the Complainant’s mark. First, the Respondent asserts that the Complainant was required to disclaim as descriptive the “CASH ADVANCE” element of the mark in order to obtain federal registration. Thus, the Respondent argues that the Complainant’s mark is more nearly identical to the FIRST AMERICAN marks formerly owned by The First American Corporation than the disputed domain name is to the Complainant’s mark. The Respondent maintains that any confusion is due to the similarity between the Complainant’s mark and the FIRST AMERICAN marks.
The Respondent maintains that it has established rights or legitimate interests in the disputed domain name by virtue of the use of the domain name in connection with the Respondent’s online offering of payday and cash advance loans, initially operated as a subsidiary of The First American Corporation, and now as a subsidiary of CoreLogic, Inc. The Respondent denies having knowledge of the Complainant’s mark at the time the disputed domain name was registered.
The Respondent contends that the disputed domain name was registered for legitimate business purposes, and not for any bad faith purpose, such as selling or transferring the disputed domain name to the Complainant. The Respondent argues that the UDRP cannot be used as a means of restraining competition; the UDRP was designed for straightforward cases of bad faith registration, and not disputes involving legitimate marketplace competition. C. Complainant’s Supplemental Filing
The Complaintant’s Supplemental Filing addresses two issues. First, the Complainant argues that as the Respondent has provided no evidence that it was a subsidiary of The First American Corporation at the time the disputed domain name was registered. Thus, the Complainant argues that this statement should be disregarded by the Panel. Second, the Complainant observes that the Respondent has altered the website to which the disputed domain name resolves since the filing of the Complaint to remove references to “First American” and “FirstAm”. The Complainant argues that this “can only be interpreted as an admission by the Respondent that is does not have rights to the ‘First Am’ and ‘First American’ trademarks”, and is a transparent attempt by the Respondent to avoid an adverse decision in this proceeding. D. Respondent’s Reply
The Respondent submitted documents reflecting that it is currently a subsidiary of CoreLogic, Inc., together with corporate records indicating that CoreLogic, Inc. was formed in connection with a spin-off of some of The First American Corporation’s business operations. According to these records, CoreLogic, Inc. was the surviving entity in a related merger with The First American Corporation, which occurred on or about June 1, 2010. The Respondent asserts that the changes made to its website subsequent to the filing of the Complaint were made to reflect that the Respondent is now a subsidiary of CoreLogic, Inc. rather than The First American Corporation. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s FIRST AMERICAN CASH ADVANCE mark, in which the Complainant has established rights. The critical inquiry under the first element of the Policy is whether the mark and disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. For purposes of this comparison, it is well settled that the generic top-level domain suffix is not considered. See, e.g., A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.,WIPO Case No. D2010-0800. Applying this standard, the disputed domain name is confusingly similar to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
In light of the Panel’s findings under the following heading, it is unnecessary for the Panel to address this element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. However, it is paramount that panels decide cases based on the very limited scope of the Policy. M, LP v. Bill Zag and NWLAWS.ORG, supra. The Policy provides a remedy only in cases where a complainant proves that the disputed domain name “has been registered and is being used in bad faith”.
After careful consideration of the facts and circumstances reflected in the record, the Panel is persuaded that the Respondent most likely registered the disputed domain name with reference to the FIRSTAM.COM and FIRST AMERICAN marks of The First American Corporation, which the Respondent was a subsidiary of at the time of the domain name’s registration and its initial use. The record before this Panel does not reflect on balance that the Respondent at the time of registration was acting with the intent to exploit or profit from the Complainant’s trademark rights. The Panel therefore concludes that the Complainant has failed in these Policy proceedings to meet its burden of demonstrating that the Respondent registered the disputed domain name in bad faith.
Accordingly, the Panel finds in the specific circumstances of this case that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Dated: March 3, 2011
1 The Complainant’s registered mark contains both word and design elements, including the substitution of the dollar sign symbol ($) for the “S” in the word CASH (“CA$H”).
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