WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

United Southwest Mortgage Corporation, Inc., d/b/a/ All Reverse Mortgage Company v. Alliance Reverse Mortgage

Case No. D2016-0497

1. The Parties

Complainant is United Southwest Mortgage Corporation, Inc., d/b/a/ All Reverse Mortgage Company of Orange, California, United States of America (“United States”) represented by Donahue Fitzgerald, United States.

Respondent is Alliance Reverse Mortgage of Santa Rosa, California, United States represented by Spaulding McCullough & Tansil LLP, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2016. On March 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2016 the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on March 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2016. On April 5, 2016 Respondent requested the extension of the Response due date and the Center extended it until April 11, 2016 in accordance with the Rules, paragraph 5(b). The Response was filed with the Center April 11, 2016.

The Center appointed Christopher S. Gibson, Dawn Osborne and Diane Cabell as panelists in this matter on May 2, 2016. The Panel finds that it was properly constituted. Each member of 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

Complainant has used its ALL REVERSE MORTGAGE COMPANY trademark since November 2007 in the United States in connection with offering financial services, including reverse mortgage, mortgage refinancing, and mortgage brokerage. Since Complainant began offering services, it has closed approximately 2,110 loans on behalf of lenders and clients.

Complainant has active social media accounts with Facebook, Twitter, and YouTube. Complainant’s Twitter updates have been live since July 2008; it has posted videos regarding its services on YouTube as early as 2007; and its Facebook posts date from as early as 2010. When searching for the terms “all reverse”, “all reverse mortgage”, and “all reverse mortgage company” on the Google and Bing search engines, Complainant is consistently the first search result listed that is not a paid-for advertisement. Over 405 unsolicited reviews have been written about Complainant’s services on websites such as “www.bbb.com”, “www.ekomi-us.com”, and “www.trustlink.org”, and approximately 379 clients submitted solicited reviews to Complainant since its beginning in 2007. Complainant has been a member of the Better Business Bureau (“BBB”) since January 15, 2008 and is rated A+ by that organization. In 2011, Complainant won the “Best Retail Brand” award from the Reverse Mortgage Daily, an independent source for news, commentary, and analysis covering the reverse mortgage industry with over 25,000 reverse mortgage professional subscribers. Complainant has over 13,000 subscribers to its reverse mortgage and mortgage brokerage newsletter, offers two mobile applications for its services on “www.itunes.com” and “play.google.com”, and has expended over USD 1.2 million on online marketing since 2014. Complainant has received media coverage linking its ALL REVERSE MORTGAGE COMPANY mark to Complainant by the Huffington Post, High Beam, and the Reverse Mortgage Daily. In addition, Complainant’s services are featured in articles published by Ezine.com, PR News Advisor, Reverse Mortgage Advisor, and the Senior Journal.

On June 8, 2010, Complainant was granted trademark registration number 3,801,409 by the United States Patent and Trademark Office (“USPTO”) on the Supplemental Register for the ALL REVERSE MORTGAGE COMPANY mark, covering financial services, namely, mortgage refinancing and mortgage brokerage services. On February 16, 2016, the USPTO granted Complainant trademark registration no. 4,900,947 on the Principal Register for the ALL REVERSE MORTGAGE COMPANY mark for financial services, namely, mortgage refinancing and mortgage brokerage. On that same date, the USPTO also granted Complainant trademark registration nos. 4,900,949 and 4,900,948 for the marks, ALL REVERSE MORTGAGE COMPANY (with logo design) and ALL REVERSE, both on the Principal Register for financial services including mortgage refinancing and mortgage brokerage.

Complainant has owned the <allrmc.com> domain name since 2007, and an Internet user accessing Complainant’s website via this domain name is routed to Complainant’s webpage at “https://reverse.mortgage/”, which Complainant uses to market and offer its reverse mortgage, mortgage and brokerage services under the ALL REVERSE MORTGAGE COMPANY and ALL REVERSE marks.

Respondent has been providing mortgage services, either directly or through its predecessor, since October 2001. Originally, Respondent conducted business under the name “California Mortgage Consultants”, and was a traditional mortgage lender. On October 30, 2006, Respondent began conducting business as “California Reverse Mortgage Consultants”, with a business model focused on assisting consumers with obtaining reverse mortgages. Respondent used the domain name <crmcares.com> to conduct its business, including for its website and email. After more than eight years of conducting business under this name, on April 16, 2015, Respondent launched its rebranded name as “Alliance Reverse Mortgage”, having registered that name with the California Bureau of Real Estate on January 20, 2015.

On October 13, 2015, Respondent filed an application to register “www.allreverse.com” as a trademark on the USPTO’s Principal Register. Respondent states that the application was a mistake and it subsequently filed an express abandonment of this application.

Complainant and Respondent are companies located in California, United States and both operate in the same industry, providing financial services related to mortgages and reverse mortgages. Complainant and Respondent are members of the National Reverse Mortgage Lenders Association (“NRMLA”), a source for consumers interested in reverse mortgages and lender information. On the NRMLA website, Respondent and Complainant are listed contiguously on the webpage that appears following a lender search by state.

Respondent acquired the Domain Name on November 19, 2014. As of May 23, 2016, the Domain Name resolves to a re-direct page directing users to Respondent’s website, as follows:

The URL for Alliance Reverse Mortgage has changed

The new URL is:

“www.AllianceReverse.com”

Please update your bookmarks.

You will be automatically redirected in 5 seconds, or just click on the link.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states that its trademarks, ALL REVERSE MORTGAGE COMPANY, ALL REVERSE MORTGAGE and ALL REVERSE, have strong recognition for consumers in the field of reverse mortgages. Complainant has used these marks in commerce since November 2007. Complainant, its employees, officers, and consumers commonly refer to Complainant’s services as “All Reverse”. Complainant claims that in addition to registered rights, it also owns common law rights in these marks. According to Complainant, the record demonstrates that it has cultivated sufficient secondary meaning in them as unique source identifiers of its services. Secondary meaning can be established by a variety of factors, including advertising expenditures, consumer linking of the mark to the source, unsolicited media coverage of the product, sales success, and length and exclusivity of the mark usage. Complainant asserts its common law rights were established prior to Respondent’s registration of the Domain Name.

Complainant further states that the generic Top-Level Domain (“gTLD”) “.com” is irrelevant to the analysis of identicalness or confusing similarity under paragraph 4(a)(i) of the Policy. Thus, the inquiry concerns only whether the Domain Name (without the “.com” gTLD) is identical or confusingly similar to Complainant’s marks. Complainant asserts that the Domain Name is identical and confusingly similar to its common law rights and trademark registrations for ALL REVERSE and ALL REVERSE MORTGAGE COMPANY, as the Domain Name incorporates the entire dominant term “all reverse”. In addition, the Domain Name is confusingly similar to the marks, notwithstanding Respondent’s omission of the descriptive term “mortgage company”, because the Domain Name and marks look, feel, and sound alike.

Complainant also maintains that its logo mark, further supports confusing similarity. In this mark Complainant displays the term, “All Reverse” in capitalized and large font when compared to the descriptive “mortgage company” portion of the mark. Consumers will focus on the term “All Reverse” and as a result ignore the “mortgage company” term or afford it less significance. Visually and phonetically, the Domain Name is substantially similar to this mark because of the emphasis on the term “All Reverse”. Thus, consumers will associate Complainant’s services with the ALL REVERSE mark rather than the composite “ALL REVERSE mortgage company” phrase.

Moreover, Complainant argues that Respondent’s omission of the descriptive term “mortgage company” in the Domain Name is analogous of a misspelling of a trademark, a practice referred to as typosquatting, where such conduct wrongfully seeks to take advantage of errors by Internet users in typing domain names into web browsers. Domain names that constitute typosquatting are confusingly similar by definition; it is this similarity that makes them attractive. Because consumers will view Complainant’s mark as ALL REVERSE, the present dispute is analogous to a classic typosquatting case, where the omission of the descriptive and generic term “mortgage company” from the Domain Name is parallel to a misspelling of the mark; Complainant thus claims the Domain Name was registered by Respondent for the purpose of misleadingly diverting consumers, who are looking for Complainant and its services.

(ii.) Rights or legitimate interests

Complainant asserts that it is the exclusive owner of all rights in its marks in connection with mortgage brokerage and reverse mortgage services in all jurisdictions around the United States. Complainant has never authorized Respondent to incorporate Complainant’s marks in the Domain Name or to use them in any capacity. Complainant is not affiliated with, and has never endorsed or sponsored, Respondent. Accordingly, Complainant contends that Respondent has no basis to argue that it has any right or legitimate interest in the Domain Name.

Complainant states that in November 2015, it was informed that Respondent had purchased the Domain Name and had also applied to register “www.allreverse.com” as a trademark with the USPTO for financial services, including mortgage planning, mortgage brokerage, mortgage lending, and mortgage refinancing. On December 14, 2015, Complainant’s counsel sent a cease and desist letter to Respondent requesting that Respondent: (a) immediately cease all use of the WWW.ALLREVERSE.COM mark, (b) abandon trademark application No. 86/786,230 for this mark, (c) discontinue use of the Domain Name, and (d) transfer the Domain Name to Complainant. On January 11, 2016, Respondent’s attorney in response to Complainant’s letter acknowledged that “[Complainant] is a respected company in the reverse mortgage business” and because Respondent “has been using the [Domain Name] for less than a year, it believes it can make a controlled transition at this point without having a material effect on its business.” In its letter, Respondent admitted that “the <allreverse.com> domain name was put into use on April 2015 as [Respondent] rolled out its use of Alliance Reverse Mortgage. The domain name is used for both an Internet website address as well as for email addresses.” Respondent also asserted that “although any claim for trademark infringement and violation of the UDRP / ACAP are without merit, Respondent will select a new domain name for its business, which it expects to be introduced within two months.” Respondent’s attorney expressed that as part of the transition to Respondent’s new domain name, Respondent would set up a jump page at “www.allreverse.com” to alert consumers that Respondent is now using a new domain name and then automatically re-direct the consumers to Respondent’s new address. In subsequent communications, Respondent refused to give an approximate date when it expected to shut down the re-direct page, and informed Complainant that “timing is indefinite.” The Domain Name resolves to a re-direct page as indicated in the Factual Background section above. Once consumers are re-directed to Respondent’s site, Complainant states that site offers services competing directly with Complainant’s services. Complainant tried to negotiate an amicable resolution with Respondent that did not include an indefinite “www.allreverse.com” re-direct page. However, as current as March 11, 2016, Respondent continued to confuse consumers by using the Domain Name as a re-direct page to its site offering directly competing reverse mortgage services.

Complainant contends that Respondent had actual or constructive knowledge of Complainant’s marks when Respondent registered the Domain Name. Consequently, Respondent “had notice of this dispute” at the time of registration of the Domain Name and cannot use the Policy, paragraph 4(a)(i), to establish any rights or legitimate interests. According to Complainant, Respondent “knew or should have known” of Complainant’s trademark rights at the time of registration of the Domain Name and is precluded from demonstrating it put the mark to a legitimate (i.e., bona fide) use. This dispute concerns marks used by Complainant across the United States for nearly a decade. Respondent has admitted that Complainant is a respected company in the reverse mortgage industry. Respondent and Complainant are both members of the NRMLA, where they are displayed one after the other on the NRMLA’s webpage that opens following a lender search by state. Respondent registered the Domain Name approximately seven years after Complainant began using its marks in commerce throughout the United States and nearly five years after Complainant obtained its first trademark registration. In addition, Respondent filed an application with the USPTO for the “AllReverse.com” trademark after Complainant had registered its ALL REVERSE MORTGAGE COMPANY mark and filed for three additional substantially similar marks for identical services.

Complainant maintains that Respondent knowingly registered the Domain Name consisting of nothing more than the dominant and distinctive element of Complainant’s marks, with the omission of the descriptive element (i.e. “mortgage company”), in an attempt to divert traffic away from Complainant’s website and towards Respondent’s site for commercial gain. Further, Complainant emphasizes that Respondent uses the Domain Name to market services that directly compete with Complainant’s services. This evidences Respondent’s knowledge at all relevant times of Complainant’s rights in its marks.

In addition, Complainant states there is no evidence that Respondent has ever been commonly known by Complainant’s marks or the Domain Name. This is demonstrated by the contact information Respondent specified in the Domain Name’s WhoIs record, which does not mention the marks. In addition, Respondent has admitted that its trade name is “KRS Capital Partners” and that it has conducted business under either “California Reverse Mortgage Consultants” or “Alliance Reverse Mortgage” since its inception in 2006. Further, Respondent’s website under the Domain Name, and its redirect page at “www.alliancereverse.com”, do not have any references to “All Reverse” as a brand, trademark, or d/b/a/ for Respondent. Finally, there is no indication of Respondent ever having been known as “AllReverse” online nor otherwise.

Complainant argues that Respondent’s commercial use of Complainant’s marks does not afford Respondent any right or legitimate interest in the Domain Name. The Policy, paragraph 4(c)(iii), allows a respondent to claim a right or legitimate interest in a domain name if the respondent can demonstrate it has been “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Here, Complainant urges that Respondent cannot satisfy this test because Respondent’s use of the Domain Name has always been commercial, and Respondent’s intent has been to misleadingly divert consumers looking for Complainant to Respondent’s website offering directly competing services. Furthermore, the intentional omission of the descriptive or generic portions of another’s trademark, which were described above is analogous to typosquatting, should not constitute fair use and is the obverse of a legitimate noncommercial or fair use of a domain name.

In sum, Complainant contends that Respondent’s incorporation of Complainant’s marks in the Domain Name was with the intent to misleadingly divert consumers. There is no other explanation as to why Respondent chose the Domain Name as the vehicle by which Internet users are routed to Respondent’s site. Respondent has no connection to Complainant; the content and services offered on Respondent’s site are directly competing with Complainant’s services; and the Domain Name blatantly seeks to take advantage of and to misdirect users looking for Complainant’s webpage and services. Respondent’s actions and omissions in connection with the Domain Name are deceptive advertising tactics.

(iii) Registered and used in bad faith

Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, contending that in this case it is not possible to conceive any plausible actual or contemplated active use of the Domain Name by Respondent that would be legitimate. In addition, because Respondent’s use of only the dominant and distinctive term in Complainant’s marks is analogous to typosquatting, this should be recognized as evidence supporting Respondent’s bad faith registration.

Complainant states that a finding of bad faith may be made where Respondent knew or should have known of the registration and use of Complainant’s trademark prior to registering the Domain Name. Respondent’s registration of the Domain Name occurred nearly one decade after Complainant began obtaining common law rights in its marks and approximately five years after Complainant had registered the ALL REVERSE MORTGAGE COMPANY mark with the USPTO. In addition, Respondent admitted that it was aware that “[Complainant] is a respected company in the reverse mortgage business”. Both parties are members of the NRLMA, where as described above, they are displayed back to back on the NRLMA’s webpage for California reverse mortgage lenders. In addition, Complainant’s trademark application, extensive use of its marks in commerce, social network presence, consistent advertising, consumer recognition, and the fact that Complainant is the number one search result when searching for “All Reverse”, “All Reverse Mortgage”, and “All Reverse Mortgage Company” on search engines such as Google and Bing, further supports Complainant’s position that Respondent had knowledge of Complainant and its marks. Complainant states that on the record presented, it would thus be implausible for Respondent to assert that it registered the Domain Name in good faith and without knowledge of Complainant’s rights where: (a) Complainant’s marks are used all over the United States; (b) the Domain Name consists of the dominant and most distinctive portion of the marks and omits the descriptive or generic term “mortgage company”; (c) Respondent registered the Domain Name nearly one decade after Complainant first began obtaining rights in its marks; and (d) Respondent’s website directly competes with Complainant’s services. Thus, registration of the Domain Name is an indication of bad faith in itself, without considering other elements.

Complainant asserts that Respondent’s bad faith is also established because Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant and its marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or location or of a product or service on Respondent’s website. By using the Domain Name containing Complainant’s marks, or as here, the dominant and most distinctive portion of those marks, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This is in light of the fact that Respondent’s site, to which the Domain Name diverts, markets services that directly compete with Complainant’s services. Complainant contends there is no doubt that Internet users attempting to visit Complainant’s website have ended up on Respondent’s site, and thus Internet traffic has been diverted.

Moreover, Complainant claims that Respondent’s website is an imitation of Complainant’s site: (a) Respondent uses photos of elderly people, just as Complainant does, (b) Respondent features a “reverse mortgage calculator”, just as Complainant does, (c) Respondent utilizes a contact’s page where consumers could request a quote, just as Complainant does, and (d) Respondent features a link where consumers can learn about reverse mortgages, just as Complainant does. Respondent thus tries to imitate the business model of Complainant. Consequently, Respondent’s activities interfere with Complainant’s business, and Internet users are likely to be confused and deceived into mistakenly believing that Respondent’s services are offered, authorized, licensed, or sponsored by Complainant or are otherwise connected or affiliated with Complainant. This constitutes bad faith.

Complainant also argues that Respondent’s registration of the Domain Name represents opportunistic bad faith, because Respondent has sought to trade on the Complainant’s goodwill in its marks for the purpose of attracting Internet users to Respondent’s website. Such is the case for Respondent’s registration of the Domain Name, which is so obviously connected with Complainant’s mortgage brokerage and reverse mortgage services, given the over two thousand closed mortgage deals and the enormous efforts and expense Complainant has undertaken and incurred to promote its marks as unique source identifiers of its services.

B. Respondent

Respondent states that Complainant has not established all of the required elements under the Policy and the Complaint must be denied. First, Respondent states that it has a legitimate interest in the Domain Name, as it consists of two dictionary words that accurately describe Respondent’s business. Moreover, the Domain Name is also a compact presentation of the name of Respondent’s business. Second, because Respondent has used the Domain Name consistent with its legitimate interests, Complainant has not, and cannot, establish that Respondent has registered and used the Domain Name in bad faith. Last, Respondent asserts that Complainant’s evidence fails to establish that Complainant acquired rights in its trademarks prior to Respondent acquiring rights in the Domain Name. While paragraph 4(a)(i) of the Policy does not require that Complainant establish such rights prior to Respondent’s acquisition of the Domain Name, it does further support a finding of lack of bad faith.

Respondent states that its business model focuses solely on assisting consumers to obtain reverse mortgages. Having rebranded in April 2015 to the “Alliance Reverse Mortgage” brand, Respondent states that this brand reflects its philosophy of partnering with credit unions for the betterment of their members; Respondent is an “alliance” for its credit union partners and their members.

Respondent states that while searching for a domain name to use in connection with its launch of the “Alliance Reverse Mortgage” brand, it found that the Domain Name was not in use by its former owner. Respondent claims the Domain Name was an ideal choice for its new brand because it provided two features. First, it accurately described Respondent’s business model of focusing exclusively on reverse mortgages. Second, the Domain Name was a compact presentation of “Alliance Reverse”, and presented fewer letter for consumers to type and eliminated the concern that consumers might misspell “alliance.” Respondent acquired the Domain Name on November 19, 2014. When Respondent launched as Alliance Reverse Mortgage in April 2015, it switched to the Domain Name. Since acquiring the Domain Name, it has been used as the Internet address for the “Alliance Reverse Mortgage” website and for email addresses for employees of Respondent.

Respondent states that on December 14, 2015, it received correspondence from Complainant’s counsel, setting forth Complainant’s claimed rights in the ALL REVERSE MORTGAGE COMPANY mark and making a series of demands, including that Respondent cease use of the Domain Name and transfer it to Complainant. On January 11, 2016, Respondent’s counsel replied, raising a number of points including the following:

- Respondent adopted the Domain Name as part of its rebranding to “Alliance Reverse Mortgage” and never has, or intended to, trade on the goodwill or reputation of Complainant’s mortgage services.

- Respondent does not believe that Complainant has established trademark rights in “All Reverse” and, even if it had, there was no evidence it had done so prior to Respondent obtaining ownership of the Domain Name.

- Respondent was not, and had not been, using “All Reverse” as a service mark for its services. Rather, the Domain Name is used simply as an Internet address for Respondent’s website and email addresses. Its marketing materials, including its website, refer solely to “Alliance Reverse Mortgage”.

- In the spirit of cooperation, Respondent would select a new domain name for its business, and Respondent expected the new domain name to be introduced within a couple of months and Respondent would set up a jump page at the Domain Name, where it would alert consumers that Respondent is using a new domain name and then automatically re-direct consumers to Respondent’s new domain name address.

On January 25, 2016, Respondent’s counsel sent another email to Complainant’s counsel advising that:

- Respondent had selected <alliancereverse.com> as its new domain name.

- Respondent provided the content of the notification page (i.e., jump page) that it would maintain at the Domain Name and provided an estimated time frame of 2 weeks to launch the new domain name. Timing for how long it intended to maintain the jump page was indefinite.

- Respondent declined Complainant’s demand to transfer the Domain Name to Complainant.

The transition to the <alliancereverse.com> domain name and establishing the jump page took place on February 9, 2016. Respondent states that Complainant continued to assert that it was unacceptable to have an indefinite time frame for maintaining the jump page to notify Respondent’s customers of the move from the Domain Name to Respondent’s new domain name. On February 3, 2016, Respondent’s counsel sent an email to Complainant’s counsel advising of the following:

- Complainant had not responded to the earlier analysis showing Complainant did not have trademark rights to support its claims against Respondent.

- If Complainant did have trademark rights, any claim of infringement is undermined by the doctrine of fair use, as the phrase “all reverse” is descriptive of a company that provides all reverse mortgages.

- The decision by Respondent to transition to a different domain name was done in the spirit of cooperation, not because the claims asserted by Complainant have legal merit.

- If Complainant wants Respondent to provide a specific end date to its use of a jump page, Complainant needs to explain why there is merit to Complainant’s claims.

No further communication was received from Complainant prior to the commencement of this case against Respondent.

(i) Identical or confusingly similar

Respondent contends that in its Complaint, Complainant seeks to establish trademark rights by referencing its registration of the ALL REVERSE MORTGAGE COMPANY mark with the USPTO, which issued on June 8, 2010. However, Respondent emphasizes that this registration is on the Supplemental Register and not the Principal Register. Respondent contends that rather than supporting its claim of trademark rights, this registration on the Supplemental Register is an admission by Complainant that ALL REVERSE MORTGAGE COMPANY is descriptive and Complainant had not acquired any trademark rights as of that registration date. In particular, marks that are merely descriptive and lacking a showing of acquired distinctiveness may only be registered on the Supplemental Register. Unlike registration on the USPTO Principal Register, registration on the Supplemental Register creates neither a presumption of the registrant’s exclusive right to use the mark, nor a presumption of validity. Respondent argues that here, in connection with prosecuting its trademark application in 2010, Complainant admitted that ALL REVERSE MORTGAGE COMPANY described a company that provides all reverse mortgages. Specifically, the USPTO issued an office action stating:

“In this case the mark is merely descriptive because Reverse Mortgage is the type of mortgage provided, Company and Mortgage Company refer to the type of entity and ALL in front of Reverse Mortgage simply tells the consumer, ALL the applicant does is the reverse mortgages and likely all of the ones one can choose from. Either grammatical form is merely descriptive and by the webpages submitted, both are accurate to what the applicant is doing. There is no imagination or mental gymnastics required to glean the nature of the services.”

Respondent states that in response to this office action, Complainant did not object to the USPTO’s characterization of “all reverse mortgage company” as being descriptive of a company that provides all reverse mortgages.

Respondent refers to Complainant’s three other trademark registrations issued by the USPTO, observing that both the filing and registration dates for each of them is after November 19, 2014, the date Respondent acquired the Domain Name: ALL REVERSE MORTGAGE COMPANY, registration no. 4,900,947; ALL REVERSE MORTGAGE COMPANY (design mark), registration no. 4,900,949; and ALL REVERSE, registration no. 4,900,948. The applications to register each of these marks were filed on June 2, 2015, and the registrations for all three issued on February 16, 2016. Both of these dates are after November 19, 2014. Respondent argues that because the filing dates are subsequent to Respondent obtaining rights in the Domain Name, the registrations themselves also issued well after Respondent obtained rights. Accordingly, these registrations cannot be used to establish trademark rights that have priority over the registration and use of the Domain Name by Respondent.

Respondent states that when a mark is descriptive of Complainant’s services, to establish common law rights, Complainant must prove secondary meaning, also known as acquired distinctiveness. Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The evidence is insufficient if it just shows that Complainant’s services are popular or successful. Rather, the evidence of secondary meaning must show that consumers associate the asserted trademark as a single source for the services provided by Complainant. Respondent argues that the evidence of use by Complainant is insufficient to establish that Complainant had acquired secondary meaning and common law rights in its claimed trademarks prior to November 19, 2014 when Respondent acquired the Domain Name. Respondent asserts that the evidence is either not date-specific or was collected after Respondent purchased the Domain Name and therefore does not demonstrate that Complainant created rights before Respondent obtained rights in the Domain Name. Most of the evidence demonstrates that Complainant’s business is successful but does not show consumers associated the claimed trademarks as a source for Complainant’s goods. For example, Complainant asserts it has closed approximately 2,110 loans since its beginning in November 2007, but does not advise how many of these loans were closed prior to the date Respondent acquired the Domain Name. Moreover, closing a loan by itself does not show that the consumer has made an association between Complainant’s services and the claimed trademark.

(ii) Rights or legitimate interests

Respondent states that where a respondent registers a domain name consisting of dictionary terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest; however, the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark. Moreover, using the shortened version of a dictionary word in the Internet context is to be expected. Further, Respondent contends that under the United States doctrine of fair use, competitors are entitled to use a descriptive trademark in its descriptive sense.

Here, the Domain Name consists of the dictionary terms “all reverse”. The terms are highly descriptive of a business that provides all reverse mortgages. As discussed above, Complainant previously conceded in its application to the USPTO that “all reverse mortgage company” is descriptive of a company that provides all reverse mortgages. Further, as discussed above, Respondent purchased and has used the Domain Name for two reasons: it accurately describes the Alliance Reverse Mortgage business model of all reverse mortgages, and it is a compact or shortened presentation of “Alliance Reverse Mortgage.” Respondent claims there is no evidence that Respondent has used the Domain Name in manner that is inconsistent with these two legitimate goals. The sole use has been as an address for the “Alliance Reverse Mortgage” website which is focused on providing reverse mortgages to consumers as well as for email addresses for those who work for Respondent.

Respondent contends this registration and use of the Domain Name establishes the legitimate interest of Respondent to use the Domain Name under paragraph 4(c)(iii) of the Policy: Respondent is making a legitimate use of the Domain Name and without intent for commercial gain to misleadingly divert consumers or to tarnish the rights in Complainant’s claimed trademarks. For all the above reasons, Respondent has established a legitimate interest in the Domain Name under paragraph 4(c)(iii) of the Policy.

Respondent also maintains that as a matter of public policy, the decision by Respondent to change the domain name for Alliance Reverse Mortgage from the Domain Name to <alliancereverse.com> should not affect the finding that Respondent has a legitimate interest in the Domain Name. Respondent states the decision to change domain names was a simple cost / benefit analysis. Although Respondent is willing to defend its legitimate right to use the Domain Name (as it is doing here), it preferred to avoid the cost of a legal dispute with a larger company such as Complainant. Respondent had used the Domain Name for less than a year so that its existing commercial footprint was somewhat small, but not insignificant. Investing in a new domain name seemed like a better use of resources than investing in legal proceedings with Complainant, even though Respondent was confident it would prevail.

Respondent contends that it would be terrible public policy to penalize Respondent, or any domain name owner, for its legitimate efforts to avoid the costs of a legal proceeding. Indeed, Respondent thought it was sufficient to change to a new domain name and to use the Domain Name solely for notification purposes. At the time Complainant filed its Complaint, the Domain Name was being used by Respondent in two limited ways but both are necessary for the continued health of its business: to notify consumers familiar with the prior use of the Domain Name that Respondent can now be found at “www.alliancereverse.com”, and to continue to receive emails from consumers who are still using the Domain Name as an email address for those who work for Respondent. This use continues Respondent’s legitimate use of the Domain Name.

(iii) Registered and used in bad faith

Respondent advises it is paramount that UDRP panels decide cases based on the very limited scope of the Policy. The primary rule in relation to domain name registrations is “first come, first served”, and the UDRP provides a narrow exception. It is not a per se breach of the UDRP to register the trademark of another as a domain name where the trademark is a generic word.

Here, Respondent contends that Complainant claims trademark rights in a phrase that Complainant acknowledges is descriptive of a company that provide all reverse mortgages. Complainant concedes in its Complaint that Respondent is using the Domain Name in connection with a business that focuses on all reverse mortgages, and it has not identified any other use of the Domain Name other than this descriptive use. Respondent argues that Complainant has not, and cannot, establish any use of the Domain Name by Respondent that is intended to capitalize on any goodwill Complainant may have acquired in Complainant’s marks.

Although both Respondent and Complainant offer reverse mortgages to consumers, their respective trade channels are different. Complainant offers its services to the general public. In contrast, Respondent states that it offers its services through relationships it has formed with credit unions and typically does not advertise directly to consumers, but does so based on its relationship with the credit union. Respondent contends that because Complainant has not established that it had service mark rights prior to Respondent acquiring the Domain Name, Complainant has not established that Respondent had actual or constructive knowledge of any rights in Complainant’s marks prior to acquiring the Domain Name.

Respondent states that Complainant tries to manufacture an example where Respondent intentionally creates a likelihood of confusion with Complainant’s designations: Complainant describes a feature on the NRMLA website where a search for California members produces a list with Complainant and Respondent listed contiguously and where the user could mouse-over some portion of the display to reveal a website URL. Even assuming this mouse-over feature is capable of creating confusion (a supposition that Respondent disputes), Respondent states it has nothing to do with this website other than being a member of NRMLA. Respondent did not create the search tool, nor did it decide the order in which the search results are presented. Moreover, other lenders may get added to this list and inserted between the listings for Complainant and Respondent. Presumably, that is what would happen when the search strategy includes members in addition to those based in California.

Respondent states that contrary to Complainant’s assertion in the Complaint, Respondent is not aware of any consumer who has ended up on Respondent’s website when attempting to visit Complainant’s website. Respondent also states that Complainant incorrectly asserts that Respondent’s website is an imitation of Complainant’s site. Specifically, Complainant mentioned the following common elements: photos of elderly people; a reverse mortgage calculator; a link to request a quote; and a link to obtain information about reverse mortgages. Respondent states these features are common to any website that offers mortgages, especially reverse mortgages. Moreover, the typical consumers of reverse mortgages are elderly people and it makes sense to have a photo of your typical consumer on the website. There is nothing unique or special about the features cited by Complainant. Respondent observes that samples of these common features can be found at the websites of other reverse mortgage providers.

Respondent states that until Complainant filed this proceeding, no claim had been previously asserted that Respondent registered or used the Domain Name in bad faith. For all the above reasons, Respondent maintains that Complainant has not established that Respondent registered and has used the Domain Name in bad faith.

(iv) Reverse domain name hijacking (“RDNH”)

Respondent claims that Complainant has used the Policy in bad faith to attempt to deprive Respondent of the Domain Name, thus engaging in RDNH. To establish RDNH, a respondent typically must show that the complainant knew of its own lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name.

Here, Respondent urges that the attorney who handled Complainant’s USPTO office action whereby Complainant conceded that “all reverse mortgage company” is descriptive of a company that provides all reverse mortgages is the same attorney currently representing Complainant. In its Complaint, Complainant asserts that it “is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate”. However, prior to the start of this action, Respondent’s counsel sent an email to Complainant attorneys advising that Respondent has a legitimate interest in using the Domain Name, including that the Domain Name describes the services of a company that provides all reverse mortgages. Complainant elected to file this UDRP proceeding rather than responding to Respondent’s legal analysis challenging Complainant’s trademarks rights or explaining why the use of the descriptive term “all reverse” for a business that provides all reverse mortgages is not a legitimate use of a domain name that incorporates dictionary terms. Respondent asserts that Complainant adopted a highly descriptive name for its business, was not able to force Respondent to transfer the Domain Name to Complainant, and is using this proceeding to try to accomplish that to which it is not entitled. It was fully aware of Respondent’s legitimate interest in using the Domain Name but filed this proceeding anyway. This is reverse domain name hijacking.

6. Discussion and Findings

As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied, as follows:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.

In this case, there is no dispute that Complainant has established rights in its registered trademarks, ALL REVERSE MORTGAGE COMPANY and ALL REVERSE. The only dispute concerning trademark rights, as raised by Respondent and discussed below, is whether Complainant acquired common law rights corresponding to these marks and to the ALL REVERSE MORTGAGE mark prior to Respondent’s registration of the Domain Name. However, for purposes of the first element under paragraph 4(a) of the Policy, the “UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights”. See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (noting also that in circumstances where the complainant acquired trademark rights after registration of a domain name, it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP).

Respondent has also not attempted to dispute Complainant’s contention that the Domain Name is identical or confusingly similar to Complainant’s ALL REVERSE and ALL REVERSE MORTGAGE COMPANY marks, respectively.

For purposes of this first element of paragraph 4(a) of the Policy, the Panel determines that Complainant has established rights in its registered ALL REVERSE and ALL REVERSE MORTGAGE COMPANY marks, and that the Domain Name is identical to the former and confusingly similar to the latter, especially as the Domain Name is identical to the dominant element ALL REVERSE in the latter mark despite the Domain Name’s omission of the descriptive phrase “mortgage company”.

Accordingly, Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Regarding the second element pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent has the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel finds that Complainant made out a prima facie case in the Complaint that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has never authorized or licensed Respondent to incorporate Complainant’s trademarks in the Domain Name or to use them in any capacity. Complainant is not affiliated with, and has never endorsed or sponsored, Respondent. Respondent has not been commonly known as “All Reverse”. Instead, Respondent is known as “KRS Capital Partners” and previously conducted business as “California Reverse Mortgage Consultants” until April 2015, when Respondent rebranded to “Alliance Reverse Mortgage”.

Complainant further contends in the Complaint that Respondent’s use of the Domain Name was not bona fide and could not give rise to any right or legitimate interest in the Domain Name because Respondent knew or should have known of Complainant’s trademark rights at the time of registration of the Domain Name, that Respondent therefore had actual or constructive knowledge of Complainant’s marks at that time, and engaged in a form of typosquatting, using the Domain Name to divert Internet users to Respondent’s website. These allegations raise a central issue in this case – whether Complainant had already established common law rights in its ALL REVERSE MORTGAGE COMPANY, ALL REVERSE MORTGAGE and ALL REVERSE marks before Respondent registered the Domain Name.

Complainant asserts in the Complaint that its common law rights were established prior to Respondent’s registration of the Domain Name, and Complainant provides ample evidence in support of this assertion. As discussed above, Respondent acquired the Domain Name approximately seven years after Complainant had been continuously using its marks (from 2007) in commerce throughout the United States, and more than four years and five months after Complainant obtained its first trademark registration on the USPTO’s Supplemental Register for ALL REVERSE MORTGAGE COMPANY. In addition, Complainant provided evidence that it was a very prominent player and possibly market leader in the reverse mortgage industry. Complainant has over 13,000 subscribers to its reverse mortgage and mortgage brokerage newsletter, and offers two mobile applications for its services on iTunes and “play.google.com”. While a number of references provided by Complainant are undated, in 2011 Complainant did win the “Best Retail Brand” award from the Reverse Mortgage Daily, an independent source covering the reverse mortgage industry with over 25,000 reverse mortgage professional subscribers. The Panel observes that the specific focus of this award was on “best brand”, which supports Complainant’s claim of acquiring distinctiveness and secondary meaning in its marks. Complainant’s social media accounts with YouTube, Twitter and Facebook date from 2007, 2008 and 2010, respectively. When searching for the terms “all reverse”, “all reverse mortgage”, and “all reverse mortgage company” on the Google and Bing search engines, Complainant is consistently the first search result listed that is not a paid-for advertisement. As noted above, many unsolicited reviews were written about Complainant and its services on websites such as “www.bbb.com”, “www.ekomi-us.com”, and “www.trustlink.org”, with Complainant receiving an A+ rating by the BBB.

Further, Complainant received media coverage in the Huffington Post, High Beam, Reverse Mortgage Daily, Ezine.com, PR News Advisor, Reverse Mortgage Advisor and the Senior Journal. A Huffington Post article submitted by Complainant is dated November 11, 2014, just a few days before Respondent registered the Domain Name on November 19, 2014. Another article in the industry’s Reverse Mortgage Daily focusing specifically on Complainant is dated in November 2012, again before registration of the Domain Name. Complainant has closed approximately 2,110 loans on behalf of lenders and clients. While Complainant has not provided information on how many of these loans were closed prior to November 2014 when the Domain Name was registered, Complainant has provided numerous copies of survey questionnaires from its clients, many of which are dated prior to the date when Respondent acquired the Domain Name, in which the clients report that are very satisfied with the services provided by Complainant. Moreover, this same survey evidence and other evidence in the record establishes that Complainant has consistently used its ALL REVERSE MORTGAGE COMPANY mark in its communications with clients and the public in the following design format, so that the words “All Reverse” are in a large, prominent and capitalized font, when compared to the descriptive “mortgage company” portion of the mark:

This consistent usage of the ALL REVERSE MORTGAGE COMPANY mark supports Complainant’s claim that ALL REVERSE, in particular, was the dominant element and focal point in its branding and usage of its marks, and had acquired distinctiveness and secondary meaning for the purposes of the Policy.

Thus, although Respondent (i) indicates that Complainant had initially registered its ALL REVERSE MORTGAGE COMPANY mark on the USPTO’s Supplemental Register in June 2010, and (ii) argues that the evidence of use by Complainant, while demonstrating that Complainant’s business is successful, is nonetheless insufficient to establish that Complainant had acquired secondary meaning and common law rights in its trademarks prior to November 2014 when Respondent acquired the Domain Name, the Panel disagrees. The Panel determines, on the balance of the probabilities, that by the time the Domain Name was acquired by Respondent in November 2014, Complainant’s marks had acquired sufficient distinctiveness and secondary meaning, as well as reputation and goodwill, within the reverse mortgage industry in the United States where both Complainant and Respondent operated and continue to operate. Based on the assessment of the evidence in this case, the Panel observes that in other cases less evidence has been held to be sufficient by prior UDRP panels to demonstrate common law rights.

In support of claiming a legitimate interest, Respondent also contends that the Domain Name merely “consists of two dictionary words that accurately describe Respondent’s business”, and Respondent is making fair use of these terms, even if Complainant does have trademark rights. However, the Panel does not agree with Respondent’s characterization. The Panel considers that the terms “all reverse” alone, without mention of mortgage or financial services, would not seem to be a natural adoption for a descriptive domain name for a company providing such services. Further, Respondent sought to register the Domain Name as a trademark on the USPTO’s Principal Register. Although Respondent’s application was subsequently abandoned, this application shows that Respondent thought the Domain Name was not merely descriptive. Further and importantly, Respondent is silent about any actual knowledge of Complainant and its marks, although Respondent’s counsel acknowledged in correspondence that “[Complainant] is a respected company in the reverse mortgage business”. In response to Complainant’s allegations that Respondent knew or should have known of Complainant and its trademarks and that Respondent had actual or constructive notice of Complainant’s marks, Respondent did not specifically deny these allegations. Instead, Respondent appears to be relying on a technical view – in its Response, Respondent provided a carefully qualified statement:

“Because [Complainant] has not established that it had service mark rights prior to [Respondent] acquiring the Disputed Domain Name, it has not established that [Respondent] had actual or constructive knowledge of any rights in the [Complainant’s] Designations prior to acquiring rights in the Disputed Domain Name.”

According to Respondent’s line of thinking, even if Respondent was aware of Complainant and its “designations” prior to acquiring the Domain Name, because Complainant had not established trademark rights, Respondent did not have actual or constructive knowledge.

The Panel has concluded, however, as noted above, that given Complainant’s position in the industry and its consistent efforts to use and promote its marks since 2007, Complainant has established reputation and goodwill, and consequently common law rights for the purposes of the Policy, in its marks prior to the date on which Respondent acquired the Domain Name. The Panel further concludes, on the balance of the probabilities, that Respondent had knowledge of Complainant and its marks when it registered the Domain Name in November 2014. The Panel finds that Complainant and Respondent are both located in California, operate in the same reverse mortgage market where Complainant is a prominent player and possibly market leader, provide competing services, and are members of the same association, the “National Reverse Mortgage Lenders Association”. This conclusion is also supported by Respondent’s statement that it has been operating in the reverse mortgage field since 2001, meaning as an industry insider, Respondent would more likely have had knowledge of Complainant as a prominent company and competitor.

In addition, the Panel takes into consideration paragraph 2 of the Policy, providing: “By applying to register a domain name,…, you hereby represent and warrant to us that…(d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. Respondent has acknowledged that the Domain Name was intended to be used in relation to reverse mortgages, a field where both Complainant and its common law trademarks were already established. Based on all of the circumstances, the Panel determines that it is difficult to believe Respondent could honestly and fairly adopt the trade name and trademarks of a prominent market participant and competitor as a domain name to offer competing services. At best, Respondent took a calculated risk when registering the Domain Name, but not a wise one. Further, although Respondent claims the Domain Name serves merely as an address for a webpage and certain employee emails, the Panel finds that Respondent uses the Domain Name to attract consumers to a webpage that re-directs to Respondent’s own website at “www.alliancereverse.com”, where it offers financial products in competition with Complainant’s products and services. Respondent implicitly acknowledges this function of the Domain Name, which is one of the reasons it has sought to continue to link the re-direct webpage to the Domain Name. This does not constitute a bona fide or fair use of the Domain Name, nor does it give rise to any right or legitimate interest on the part of Respondent in the Domain Name.

Accordingly, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name, and Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In view of the discussion above, the Panel also determines, on the balance of the probabilities, that Respondent has opportunistically registered and used the Domain Name in bad faith. While Respondent is free to compete fairly and to adopt a similar business model to that of Complainant, the Panel finds that it is bad faith to adopt a key market participant’s trade name and trademarks as a domain name and use the domain name to offer competing services. As mentioned above, Respondent acquired the Domain Name in November 2014, approximately seven years after Complainant, a prominent industry player, commenced using its ALL REVERSE MORTGAGE COMPANY, ALL REVERSE MORTGAGE and ALL REVERSE trademarks, and more than four years after Complainant had obtained its first trademark registration. Unlike in the case cited several times by Respondent, San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., WIPO Case No. D2009-1545, Complainant’s trademarks here had achieved common law rights before Respondent registered the Domain Name. Respondent has been in the mortgage business since 2001, is located in the same state as Complainant, operates in the same industry and area of specialization as Complainant, and is a member of the same industry association as Complainant. Complainant and Respondent are competitors. In the Panel’s view, Respondent’s Domain Name creates a likelihood of confusion, is disruptive of the business of a competitor, and is being used for commercial advantage to attract Internet users to Respondent’s website, pursuant to paragraphs 4(b)(iii) and (iv) of the Policy.

Accordingly, the Panel finds, in view of all of the above circumstances and the allegations and evidence submitted in this case, that the Domain Name was registered and is being used in bad faith, satisfying the third element of the Policy.

Finally, the Panel also concludes there are no grounds for Respondent’s claim of RDNH.

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 Domain Name <allreverse.com> be transferred to Complainant.

Christopher S. Gibson
Presiding Panelist

Dawn Osborne
Panelist

Diane Cabell
Panelist
Date: May 24, 2016