The First Complainant is Eagle Home Mortgage, LLC of Miami, Florida, United States of America (“US”); and the Second Complaint is Lennar Pacific Properties Management, Inc. of Miami, Florida, US, represented by Slates Harwell LLP, US.
The Respondent is Whois Privacy Protection Services, Yinsi Baohu Yi Kai Qi of Chengdu, Sichuan, China / Jiang Li of Chengdu, Sichuan, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2018 regarding the disputed domain name . On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On October 15, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on October 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on October 18, 2018.
On October 16, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants requested that English be the language of the proceeding on October 18, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
On October 19, 2018, the Complainants submitted an amended Complaint, adding a disputed domain name . On October 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On October 22, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 22, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants requested that English be the language of the proceeding on October 26, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to the Complaint and the amended 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceeding commenced on October 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 22, 2018. 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. 4. Factual Background A. Complainants
The Second Complainant is the owner and the First Complainant is the licensee of the following marks: EAGLE HOME MORTGAGE and design (US Registration No. 4,921,265, registered on March 22, 2016) and EAGLE HOME MORTGAGE plain word mark (US Registration No. 4,287,562, registered on February 12, 2013) for financial services, namely, mortgage brokerage and mortgage banking services in International Class 36 (“EAGLE HOME Marks”).
The First Complainant has been providing homebuyers with mortgage services for over thirty years. Since October 24, 2012, the First Complainant has owned and operated a website utilising the EAGLE HOME Marks in connection with the registered services, located at the domain name (the “Complainants’ Website"). B. Respondent
The Respondent is apparently an individual with an address in Chengdu, Sichuan, China. C. The Disputed Domain Names
The disputed domain name was registered on October 3, 2018.
The disputed domain name was registered on October 9, 2018. D. Website at the Disputed Domain Names
The disputed domain names have been used in respect of websites with sponsored links, in the case of the disputed domain name relating specifically to mortgage services (the “Respondent’s Websites”). 5. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain names are identical or confusingly similar to the EAGLE HOME Marks and its domain name in which the Complainants have rights, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 Consolidation of Complainants
Paragraph 10(e) of the Rules provides as follows:
“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
Previous UDRP decisions suggest that a complaint may be brought by more than one complainant where (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).
In the present proceeding, the Complainants have requested consolidation on the following grounds:
(i) The Complainants have a common legal and business interest in the EAGLE HOME Marks: the Second Complainant being the owner the EAGLE HOME Marks; and the First Complainant as the authorised licensee of the EAGLE HOME Marks and as well as operating the Complainants’ Website; and
(ii) The Complainants’ intellectual property rights are affected by the Respondent’s conduct in a similar fashion, and the Complainants therefore have a specific common grievance against the Respondent.
The Respondent has not made any submissions with regard to this issue.
The Panel finds that the Complainants have common grievances against the Respondent, and the Respondent has engaged in common conduct that as affected the Complainants’ rights in a similar fashion.
The Panel further finds that it would be procedurally efficient and equitable to all the Parties for the Complainants to be consolidated.
In all the circumstances, the Panel therefore determines under paragraph 10(e) of the Rules that there is consolidation of the Complainants in this proceeding. 6.2 Language of the Proceeding
Paragraph 11(a) of the Rules provides as follows:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.”
The language of the Registration Agreements for both of the disputed domain names is Chinese. However, it is established practice to take into account paragraphs 10(b) and 10(c) of the Rules into consideration whilst determining the language for the proceeding to ensure the fair, inexpensive, and expeditious resolution of domain name disputes between the parties. Language requirements should not create undue burdens on the parties and or unduly delay the proceeding.
The Complainants have requested that the language of the proceeding be English for the following reasons:
(i) The email address of the Respondent is written in the English alphabet in Latin characters, and the disputed domain names and reflect the Respondent’s use of the English alphabet in Latin characters;
(ii) The Complainants are from the United States and communicate in English. They are unable to communicate in Chinese;
(iii) The content of the Respondent’s Websites is entirely in English; and
(iv) Conducting the proceeding in Chinese would involve unnecessary additional expense and delay.
The Respondent has not made any submissions with regard to this issue.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel must act in accordance with the spirit of fairness and justice to both Parties. Hence, the Panel will take into account all relevant circumstances of the case, including but not limited to the Parties’ ability to understand and use proposed language, time, and costs.
The Panel accordingly finds that there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Panel also recognises the need to ensure that the proceeding be conducted without undue delay and costs.
In all the circumstances, the Panel therefore finds that it is not foreseeable that the Respondent would be prejudiced should the proceeding be conducted in English. Hence, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be in English. 6.3 Substantive Elements of the Policy
According to paragraph 4(a) of the Policy, the Complainant has the burden of proving that:
(i) The disputed domain names are identical or confusing similar to a trade mark or service mark which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Both the disputed domain names consist of a common, obvious, or intentional misspelling of the Complainants’ trademarks in which the Complainants have rights (see WIPO Overview 3.0, section 1.9).
The Panel finds that the disputed domain names are confusingly similar to the EAGLE HOME Marks. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the respondent can demonstrate its rights and legitimate interests in the domain name in the following non-exhaustive list of circumstances:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name, or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not acquired any trade mark or service mark rights in the EAGLE HOME Marks. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect to the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, both of the disputed domain names are resolved to the Respondent’s Websites which provide sponsored links, in the case of the disputed domain name relating mortgage services, for commercial gain.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel further notes that the disputed domain names consist of a common, obvious or intentional misspelling of the Complainant’s domain name .
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainants’ prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
In light of the manner of the use of the dispute domain names highlighted in Section B above, the Panel finds that the requisite element of bad faith has been made out in accordance with paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel concludes that the disputed domain names have been registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 7, 2018
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