argentwholesalemortgagelending.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ACC Capital Holdings Corporation (ACCH) v. Spiral Matrix

Case No. D2006-1442

1. The Parties

The Complainant is ACC Capital Holdings Corporation (ACCH), United States of America, represented by Buchalter Nemer, LLP, United States of America.

The Respondent is Spiral Matrix, Eldoret, Kenya.

2. The Domain Name and Registrar

The disputed domain name <argentwholesalemortgagelending.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2006. On November 14, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 15, 2006, Intercosmos Media Group d/b/a directNIC.com 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 November 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2006.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on December 22, 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 holds a number of service trade marks in the United States in relation to the word mark ARGENT and associated marks incorporating that term, such as ‘argent mortgage’ and ‘argent mortgage company’. The Complainant provides evidence of trade mark registrations dating back to approximately 2002, inter alia for the terms ‘argent’, ‘argent mortgage’, ‘argent mortgage company’ and other marks incorporating the term ‘argent’. The Complainant provides evidence of substantial use of its distinctive trademarks in the mortgage lending, wholesale lending and brokerage areas of the banking business. It causes extensive advertising in various formats to be published in relation to its marks, as well as sponsoring high-exposure public events including football and horse racing. It asserts that it is one of the United States’ largest wholesale mortgage lenders. Its turnover is considerable. In the relevant business sector the Complainant asserts its marks to be amongst the most widely recognized. It has maintained a website since 2001 (“www.argentmortgage.com”).

The Respondent registered its domain name in December 2005. The Complainant’s counsel sent a cease and desist letter to the Respondent on March 20, 2006, but received no response.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the Respondent’s domain name is substantially identical and confusingly similar to its mark. The ‘fanciful and non-descriptive’ part of the domain name is identical to the Complainant’s relevant service mark. Its inclusion will cause confusion amongst Internet users. The Complainant further contends that the Respondent has no legitimate interest or rights in the domain name since it was not licensed or authorized to use the relevant mark. Because the Complainant’s mark was well known at the time of registration of the domain name, no legitimate use of the domain name could be conceived of, and it was thus registered in bad faith. The Respondent has also registered such a large number of domain names (5000 or so), some including famous marks, as to found an inference of bad faith. The Respondent is also alleged to have posted an active website that leads to alternative mortgage lenders, evidencing bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name at issue wholly incorporates the Complainant’s mark. The terms ‘wholesalemorgagelending’ have been added as an extended suffix consisting of generic words of a descriptive nature. These terms describe the nature of the Complainant’s business. They effectively read as one word, so their composite nature and length do not detract from the potentially confusing nature of the domain name. The Complainant in its supporting documentation clarifies that wholesale lending is an important aspect of its operations.

The Respondent’s domain name is clearly not identical to its service mark ARGENT. The question therefore is whether it is confusingly similar. This depends on an assessment of the likely impact on Internet users of the appearance of the Complainant’s mark as incorporated into the domain name. Given the distinctive nature of the Complainant’s mark (it has no descriptive meaning in English) it is likely that the domain name will evoke the Complainant’s mark, and consumers will be confused into believing that there is a connection between the domain name and such mark. That conclusion is strengthened by the fact that the additional generic words incorporated into the domain name do nothing to dispel such a conclusion; rather, since they are descriptive of the Complainant’s business, they are likely to enhance the confusing and misleading effect of the domain name.

The Panel therefore holds that the domain name is confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

The Respondent has no association with the Complainant, nor any license, nor is there any other basis on which the Respondent might be seen to have rights or legitimate interests in the domain name. It does not reflect in any way the Respondent’s own name nor the name or nature of its business, about which there is no evidence. There is no evidence of any legitimate non-commercial or fair use of the domain name. The Complainant having made a prima facie case establishing the Respondent’s lack of rights or legitimate interest the burden of proof in this regard shifts to the Respondent and the Respondent has not made a response of any kind.

The Panel therefore holds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Complainant establishes that it had developed substantial goodwill in its trade mark ARGENT by the time the Respondent came to register its domain name. The public exposure of the mark was considerable by that time. It can be inferred that the Respondent was aware of the Complainant’s mark, which is inherently distinctive. The inclusion of terms descriptive of the Complainant’s business further strengthens the inference that the Respondent was aware of the goodwill and reputation in the Complainant’s relevant service marks at the time of registration of the domain name. There is no legitimate use that could be conceived of at that time given the reputation attaching to the Complainant’s mark in the relevant business segment. Thus the domain name was registered in bad faith, and it may be inferred that it was acquired primarily for the purpose of selling it for more than out of pocket expenses (see Paragraph 4(b) of the Policy). The Complainant also provides evidence that the Respondent has registered some 5000 domain names some of which on the evidence provided incorporate famous or well-known marks to which the Respondent purportedly has no rights.

It appears that the domain name resolved to a page containing sponsored links. This is indicative of the intentional attempt by the Respondent to attract users to its website address for commercial gain by creating a likelihood of confusion as to source or affiliation with the Complainant’s mark.

The Panel therefore holds that the Respondent has 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, <argentwholesalemortgagelending.com> be transferred to the Complainant.

WiIliam A. Van Caenegem
Sole Panelist

Dated: January 5, 2007