Lenox Financial Mortgage, LLC, JMH Financial Mortgage, Corp d/b/a Lenox Financial Mortgage, Corp v. Digi Real Estate Foundation
Case No. D2006-1047
1. The Parties
The Complainant is Lenox Financial Mortgage, LLC and JMH Financial Mortgage, Corp d/b/a Lenox Financial Mortgage, Corp, Atlanta, United States of America, represented by Ramses Frangie, United States of America.
The Respondent is Digi Real Estate Foundation, Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <lenoxfinancialmortgage.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2006. On August 18, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 18, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 August 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2006.
The Center appointed Keita Sato as the Sole Panelist in this matter on September 28, 2006. 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 Complainant is Lenox Financial Mortgage, LLC and JMH FINANCIAL MORTGAGE, CORP. d/b/a lenox Financial Mortgage, Corp, both American Corporations. Their office location, telephone and other contact details are the same, so they have common interest in the domain name. lenox Financial Mortgage Corp. has a registered US trademark for LENOX FINANCIAL MORTGAGE CORP for mortgage services namely, mortgage banking, mortgage brokerage and mortgage lending.
The domain name was registered on May 8, 2005.
The Respondent is Digi Real Estate Foundation , located in Panama City, Panama.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the Domain Name at issue, which was registered by the Respondent, is literally identical to the US trademark LENOX FINANCIAL MORTGAGE CORP. This trademark was filed on March 30, 2004 with USPTO, the goods or services provided are Mortgage Banking, Mortgage Brokerage and Mortgage Lending. Second, in accordance with Rules, paragraph 3(b)(ix)(2), the Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint, since it is a blunt violation of US trademark law as well as paragraph 4(b)(iv) of the Policy. The Respondent registered the Domain Name at issue one year after the Complainant filed the trademark with principal register and 12 years after the first use of the name “Lenox Financial Mortgage”. Thirdly, the Domain Name at issue is being used in bad faith by the Respondent pursuant to paragraph 4(b)(iv) of the Policy, due to the fact that the Respondent is using a trademarked name in its Domain Name to mislead internet users to its website and promote similar products offered by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed, the Panel must, under paragraph 4(a) of the Policy, be satisfied:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complaint has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has a US trademark registration (principal registration) for the name“ LENOX FINANCIAL MORTGAGE CORP and has used the name “Lenox Financial Mortgage” for over a decade. The Domain Name at issue is almost identical with its trademark without doubt. The addition of “.com” is commonplace when the owner of a mark reflects it in a corresponding domain name. As such, the addition of “.com” accomplishes little if anything toward the avoidance of confusing similarity. It should be disregarded for the purpose of the first element of the Policy concerned. See, e.g. Gateway, Inc. v. James Cadieux, WIPO Case No. D2000-0198. Therefore, the Panel finds that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Panel understands that under paragraph 4(a)(ii) of the Policy the overall burden of proof is on Complainant. However, once the Complainant presents prima facie evidence that the Respondent lacks rights or legitimate interests the burden shifts to the Respondent. See Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121 and Belupo d.d. v. Wachem d.o.o.,WIPO Case No. D2004-0110.
Complainant’s use of the trademark pre-dates the Respondent’s registration of the Domain Name at issue. The Panel agrees that it was indeed likely that the Respondent was aware of the Complainant’s trademark at the time of registration and subsequent use of the Domain Name at issue. In addition, it has been shown that Respondent appears not to run any legitimate business associated with the Domain Name at issue but only uses it in a web site for the purpose of redirecting Internet users to the website of other insurance companies which may compete with Complainant. Accordingly, the use of the Domain Name at issue is not considered legitimate use in connection with a bona fide offering of goods and services. Further, since the Respondent has not filed any response and thus has not provided any other evidence or elements to justify any rights or legitimate interest in connection with the Domain Name at issue, the Panel has found no indication in the evidence it received that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Given the circumstances the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant alleges that the use of the Domain Name at issue is in bad faith. Indeed, the website linked with “www.lenoxfinancialmortgage.com” has many links including several links to competitor’s websites. This kind of conduct falls into paragraph 4(b)(iv) of the Policy. The paragraph 4(b)(iv) reads, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location” shall be evidence of registration and use of a domain name in bad faith. In the present case, the Complainant has established trademark rights. The Respondent in all likelihood knew of Complainant’s trademark rights. The Panel also notes that the Respondent has previously been involved in other UDRP proceedings e.g., Adidas-Salomon AG v. Digi Real Estate Foundation, WIPO Case No. D2004-1079, Asurion Corporation v. Digi Real Estate Foundation, WIPO Case No. D2006-0765, Medco Health Solutions, Inc v. Digi Real Estate Foundation, WIPO Case No. D2005-0216, Toyota Motor Credit Corporation v. Digi Real Estate Foundation, WIPO Case No. D2005-1111, Wilmington Trust Company v. Digi Real Estate Foundation, WIPO Case No. D2006-0667, and that, in all these cases, the panel found that the domain names should be transferred. This pattern of conduct by the Respondent is a strong indication that the Respondent probably registers domain names for the purpose of commercial gain.
Given the circumstances the Panel finds that the Respondent registered and used the Domain Name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <lenoxfinancialmortgage.com> be transferred to the Complainant.
Keita Sato Sole Panelist
Dated: November 28, 2006
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