maimortgage.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Appraisal Institute, Inc. v. David Aldredge

Case No. D2005-0123

1. The Parties

The Complainant is Appraisal Institute, Inc., Chicago, Illinois, United States of America, represented by Manelli Denison & Selter PLLC, United States of America.

The Respondent is David Aldredge, Mortgage Associates, Inc, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <maimortgage.com> (the “Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2005. On February 3, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On February 4, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2005.

On March 15, 2005, a Response to the Complaint was faxed to the Center from “Mortgage Associates Inc.” Complainant submitted a Reply to this response on March 24, 2005.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 23, 2005. 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

The following uncontested facts are supported by declarations and documentary evidence submitted by Complainant, the verification response submitted by registrar Network Solutions, LLC, and an examination of the website at the address represented by the Domain Name.

Complainant Appraisal Institute, Inc., an Illinois nonprofit corporation, is an international membership association of professional real estate appraisers. It provides education, research, and promotion for trained real estate appraisers in the United States, Canada, and several other countries. Complainant offers a training program for persons who wish to become Designated Members of the Appraisal Institute. Aspirants who successfully complete the training and examinations and satisfy other criteria are thereafter entitled to display a logo indicating that they are “MAI Designated Members.” Over 10,000 persons have become MAI Designated Members, and over 5000 are currently “Associate Members” pursuing the MAI designation.

Complainant and its predecessor in interest have been using MAI as a mark since 1932. Complainant owns several registered trademarks consisting in whole or in part of the letters MAI (collectively, the “MAI mark”), as follows:

Complainant asserts, without contradiction, that it has spent over $1 million in the past five years promoting the MAI mark, and that the mark has appeared in advertising in The Wall Street Journal and in trade publications such as National Mortgage News, Realtor Magazine, and Real Estate Forum.

Complainant operates a website at <appraisalinstitute.org>.

Respondent David Aldredge registered the Domain Name in October 1999 and renewed the registration in August 2003. According to registrar Network Solutions, LLC, the “Registrant” of record is: David Aldredge, Mortgage Associates, Inc, Kenilworth, New Jersey, United States of America.

From this listing, it appears that the registration was on behalf of a company, Mortgage Associates, Inc., and indeed the Domain Name resolves to the website of a company by that name, with exactly the same address and telephone number. The website includes information about residential mortgages and advertises the services of Mortgage Associates, Inc. in assisting customers to obtain mortgages from a variety of lenders. The site features an online application and “prequalification wizard.” The site does not appear to offer appraisal services or mention Complainant.

Complainant’s counsel wrote to David Aldredge at Mortgage Associates, Inc. on May 21, 2004, asserting that the Domain Name was confusingly similar to the MAI mark and seeking a transfer of the Domain Name. On or about June 1, 2004, counsel for Mortgage Associates, Inc. responded by telephone, reportedly arguing that the Domain Name had been chosen because MAI are the initials for Mortgage Associates, Inc. and seeking a “co-existence” agreement rather than a transfer of the Domain Name. Complainant’s counsel rejected this suggestion in a letter dated June 24, 2004.

5. Parties’ Contentions

A. Complainant

Complainant argues that the Domain Name is confusingly similar to the famous and registered MAI mark, and that the addition of the word “mortgage” to the mark merely increases the likelihood of confusion because appraisers are typically involved in the process of mortgaging real property.

Complainant asserts that Respondent has no rights or legitimate interests in the MAI mark and that the MAI mark does not describe Respondent’s goods or services.

Complainant urges a finding of bad faith in Respondent’s registration and use of the Domain Name because the MAI mark was both registered and famous and was likely chosen in order to attract Internet users who confused the Domain Name with Complainant’s mark.

B. Respondent

The Panel has examined the one-page Response faxed to the Center on March 15, 2005 and the Complainant’s Reply thereto. Complainant asks the Panel to disregard the Response because it does not mention the individual listed as the registered owner of the Domain Name and because the Response was sent after the deadline for responding to the Complaint.

As discussed above, the Panel concludes that the Domain Name was registered on behalf of Mortgage Associates, Inc. The Panel takes note of the several communications between Complainant and Mortgage Associates, Inc. concerning the Domain Name, which include the same explanation for Respondent’s use of the Domain Name as is made in the Response, i.e., that the Domain Name was formed of Respondent company’s initials along with a descriptive word. The Panel accordingly accepts that the Response represents the views of Respondent.

However, the Response was faxed a week late. It was due on March 8, 2005, as plainly indicated in the Center’s Notification of Complaint and Commencement of Administrative Proceeding, and the Center notified Respondent of its default by email on March 9, 2005. The president of Mortgage Associates, Inc., Tom Hedden, faxed a “response to the complaint” to the Center with a fax cover sheet dated by hand on “3/9/05” (which is still after the deadline). But the machine stamp at the top of the fax reads “March 15, 2005, 10:52AM American Mortgage Co.,” and the Center affirms that it received the fax on March 15, not March 9.

The Panel finds that the Response was transmitted a week after the deadline, and the Response offers no explanation for this delay. The Panel also finds that the Response does not offer material evidence or arguments beyond what is otherwise to be found in the record and from an examination of Respondent’s website. Therefore, the Panel has determined to disregard Respondent’s untimely Response.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest Respondent of the Domain Name, Complainant must demonstrate each of the following:

- The Domain Name is identical or confusingly similar to Complainant’s mark; and

- Respondent has no rights or legitimate interests in the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

Even without a timely Response from Respondent, the Panel must still satisfy itself that Complainants have met their overall burden of proof under Paragraph 4 of the Policy. Thus, the uncontested facts must provide a sufficient prima facie basis for finding confusing similarity to a protected mark and for inferring that, more probably than not, the respondent has no right or legitimate interest in the domain name at issue and has registered and used it in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (August 21, 2003) <croatiaairlines.com>.

A. Identical or Confusingly Similar

Complainant unquestionably owns registered trademarks based on the letters MAI, alone or in combination with other words and design. The Domain Name uses the same three letters, followed by the descriptive English word “mortgage.”

Confusing similarity is a close issue in this case, since the word “mortgage” is not descriptive of Complainant’s appraisal organization or activities and might well serve to distinguish Respondent from Complainant even on first sight of the Domain Name. However, as the Complaint does not meet the third element of the Policy (bad faith, as discussed below), it is not necessary for the Panel to reach a conclusion under this first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the following as an example of evidence demonstrating a right or legitimate interest in a domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services . . . .”

According to Complainant, the Domain Name was first registered in 1999 and renewed in 2003, and the verification response from Network Solutions, LLC includes the company name Mortgage Associates, Inc. in the address of the registrant. Respondent’s website clearly advertises mortgage services offered by Mortgage Associates, Inc. Thus, it appears that the Domain Name was registered and used by a company with the initials M.A.I. (a name “corresponding” to the Domain Name) that was in fact offering mortgage services before the current dispute arose in 2004.

Complainant argues that its MAI mark is not an acronym and that it does not represent any goods or services offered by Respondent. This begs the question of whether Respondent is using MAI in reference to the Complainant’s MAI mark or to its own initials, as Respondent asserted in response to communications from Complainant’s counsel.

The answer to this question is not only decisive for the second element, but also decisive for the question of bad faith under the third element of the Policy. The Panel will address this factual question in the discussion of bad faith below, since the aim of the UDRP Policy is to stop bad-faith registration of domain names and that is the heart of most UDRP proceedings, including the present one. Because Complainant cannot meet its burden of persuasion on the issue of bad faith, it is not necessary for the Panel to draw a conclusion as to Respondent’s rights or legitimate interests under the second element of the Policy.

C. Registered and Used in Bad Faith

Complainant infers bad faith by assuming that Respondent had knowledge of Complainant and its MAI mark prior to the Domain Name registration and hoped to benefit in one way or another from the fame of Complainant and its trademarks.

In weighing that assumption, the Panel notes first that Complainant is of course not the only entity in the world entitled to use those three letters in connection with an offering of goods or services. None of Complainant’s registered trademark descriptions concern mortgage brokering or other mortgage services, so it is entirely feasible for Respondent to make a bona fide offering of mortgage services, as it appears to be doing, with a domain name based on its own initials and a word describing its business.

The MAI mark is doubtless well known in certain professional circles, but there is no evidence that Respondent knew of the mark when registering the Domain Name. Complainant cites its trademark registrations and argues that because the MAI designation “is the premier designation that a commercial appraiser can hold in the United States” it is “virtually impossible that Respondent was unaware of the MAI trademark” when registering the Domain Name. But Respondent appears to offer services to consumers seeking help in obtaining residential mortgage loans, not to appraisers or persons seeking appraisal services, so its “awareness” of the mark of the appraiser’s professional association, even if it were assumed, would not prove bad faith in choosing the Domain Name.

Even if Respondent knew of Complainant and its mark – because, for example, appraisers and mortgage brokers are both involved with real property transactions -- there is no evidence that Respondent was motivated by this knowledge when registering the Domain Name. On the contrary, and based on the case file, it seems to the Panel more likely that Respondent chose the domain name to reflect its own initials and the business it is in, which appears to be quite different from Complainant’s business.

Finally, Complainant argues that Respondent’s failure to transfer the Domain Name after learning that it was “objectionable” to Complainant is evidence of bad faith. This would be true only if Respondent had no credible legitimate reason for registering the Domain Name, which is not the case here. It is normally not proof of bad faith to assert, as Respondent did to Complainant’s counsel, a plausible claim to a right or legitimate interest in the Domain Name, along with an offer to negotiate a “co-existence agreement.”

In sum, none of Complainant’s arguments for inferring bad faith registration and use of the Domain Name is persuasive.

Complainant may, of course, choose to pursue its claims in the courts, and this decision does not prejudice Complainant’s case in any other relevant jurisdiction. As for this UDRP proceeding, however, Complainant has not met its burden under the Policy to demonstrate that the Domain Name should be transferred.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist

Date: April 5, 2005