The Complainant is Caliber Home Loans, Inc., United States of America (“United States”), represented by Dykema Gossett PLLC, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Michal Restl, Czech Republic.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On September 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2021, 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. 1 The Center sent an email communication to the Complainant on October 4, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same day.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 3, 2021. 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.
On December 2, 2021, the Panel issued the Panel Order No. 1 requesting the Complainant to submit addition filing regarding its ownership of the United States trademark registration No. 5,984,588 for CALIBER HOME LOANS and device, and allowing the Respondent to comment on the Complainant’s submission to the Panel Order No.1. On December 3, 2021, the Complainant submitted a Response to the Panel Order No. 1 submitting evidence, which also includes another trademark registration in the United States. The Respondent did not reply or comment to the Complainant’s submission.
4. Factual BackgroundThe Complainant offers mortgage banking services throughout the United States and Puerto Rico, United States.
The Complainant is the owner of the United States trademark registration No. 4,835,986 for CALIBER CARES FOUNDATION and device, registered on October 20, 2015, claiming first use in commerce on March 9, 2015 in classes 35 and 36.
The Complainant also appears as registrant of the United States trademark registration No. 5,984,588 for CALIBER HOME LOANS and device, registered on February 11, 2020, claiming first use in commerce in July 2013, in class 36. This trademark registration appears to have been the subject of a fraudulent ownership transfer to among others “Corpe, Anthony G., II AKA Anthony G. Corpe II”, who submitted to the United States Patent and Trademark Office (USPTO) a “Nunc Pro Tunc” Assignment which is in the process of being challenged by the Complainant as well as other companies that are facing similar fraudulent submissions.
The disputed domain name
The Complainant asserts to have been using the well-known CALIBER HOME LOANS trademark since at least as early as 2013 in connection with mortgage banking services throughout the United States and Puerto Rico, United States, operating over 200 physical locations in addition to its online webpage available at the domain name
According to the Complainant, the disputed domain name is confusingly similar to its CALIBER HOME LOANS trademark, merely having transposed the words “caliber” and “home”, what characterizes a clear case of typosquatting.
As to the absence of rights or legitimate interests, the Complainant argues that the Respondent:
(i) is in no way affiliated with the Complainant, not having sought or obtained a license from the Complainant;
(ii) is simply trading off of the goodwill created by the Complainant in its mark to generate traffic to the website available at the disputed domain name for commercial gain;
(iii) is not commonly known by the disputed domain name; and
(iv) is not using the disputed domain name in connection with a bona fide offering of goods or services.
Furthermore, the Complainant asserts that the Respondent registered the disputed domain name seeking to create a likelihood of confusion with the Complainant’s CALIBER HOME LOANS trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name, and to generate traffic to webpage that resolves from it for commercial gain. In addition to that, given the mortgage banking services provided by the Complainant, the Respondent could easily create spoof email addresses associated with the disputed domain name in order to fraudulently contact the Complainant’s employees and consumers and/or to obtain sensitive personal data and financial information.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly SimilarThe Complainant has established its rights in the CALIBER CARES FOUNDATION and device trademark.
The Panel finds that the disputed domain name contains the dominant feature of the Complainant’s mark, “Caliber”, in its entirety. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. […] [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Further, the addition of the terms “home” and “loans” does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice 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 organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which has not been commonly known by the disputed domain name and neither is affiliated with the Complainant, nor has sought or obtained a license from the Complainant.
In the present case, the Respondent’s use of the disputed domain name comprising the Complainant’s trademark in connection with a parked webpage displaying PPC links, some of which provide services that compete with the Complainant, cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the use of the disputed domain name in connection with a parked page displaying PPC links, some of which provide services that compete with the Complainant.
Other factors that corroborate the Panel’s finding of bad faith of the Respondent are:
(a) the absence of a formal Response by the Respondent;
(b) the choice to retain a privacy protection service so as to conceal the Respondent’s identity; and
(c) the indication of what appears to be false or incomplete contact details provided in the WhoIs information relating to the disputed domain name, resulting in the Written Notice not being delivered to the Respondent by courier.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Wilson Pinheiro Jabur
Sole Panelist
Date: December 11, 2021
1 On December 1, 2021, the Registrar sent a further clarification regarding the discrepancy related to the registrant name provided in its initial Verification Reply, and confirmed that “michal restl” is the registrant for the disputed domain name.