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WIPO Arbitration and
First Tennessee National Corporation v. Henry Tsung
Case No. D2004-0103
1. The Parties
The Complainant is First Tennessee National Corporation, Memphis, United States of America, represented by Butler, Snow, O'Mara, Stevens and Cannada PLLC, United States of America.
The Respondent is Henry Tsung, Taipei, Taiwan, Province of China.
2. The Domain Names and Registrars
The disputed domain names <firsthorizonmorgage.com> and <firsthorizonmortage.com>
are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2004. On February 10, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On February 11, 2004, iHoldings.com Inc. d/b/a DotRegistrar.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"). The Administrative Panel ("the Panel") is satisfied that this is the case.
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 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 15, 2004.
The Center appointed David Taylor as the sole panelist in this matter on April 8, 2004.
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, First Tennessee National Corporation, is a corporation registered in Tennessee with its principal place of business in Memphis, Tennessee, United States of America. According to the information provided by the Complainant it is a nationwide financial institution and is one of the fifty largest bank holding companies in the United States. One of the Complainant's largest affiliates is First Horizon Home Loans Corporation ("FHHLC"), a national home mortgage lending institution that provides services in 46 states in the USA. This latter company operates a website at "www.fhhlc.com" which is entitled "About First Horizon Home Loans."
The Complainant is the proprietor of several United States trademark and service mark registrations for FIRST HORIZON and FIRST HORIZON HOME LOANS, copies of which were provided to the Panel.
The trademark and service marks in question are:
(1) FIRST HORIZON, registration number 2686633 registered on February 11, 2003, covering the following services: Banking services, mortgage services, namely, mortgage lending, brokerage, banking and processing services; credit card services; bill payment services; insurance underwriting in the fields of property and casualty insurance, life insurance, long term care insurance, disability insurance, and business insurance; securities investment advice and trading; financial and estate planning, all offered via the Internet.
(2) FIRST HORIZON, registration number 2297048 registered on November 30, 1999, covering the following services: Banking services and a house mark for a full line of mortgage services.
(3) FIRST HORIZON HOME LOANS, registration number 2747508 registered on August 5, 2003, covering the following services: Mortgage lending services.
(4) FIRST HORIZON (and design), registration number 2517808 registered on December 11, 2001, covering the following services: Banking services and a house mark for a full line of mortgage services, securities, brokerage services, investment banking services, financial services and insurance services except for annuity underwriting services.
(5) FIRST HORIZON (and design), registration number 2451390 registered on May 15, 2001, covering the following services: Banking services and a house mark for a full line of mortgage services, securities, brokerage services, investment banking services, financial services and insurance services except for annuity underwriting services.
(6) FIRST HORIZON registration number 2,459,962 registered on June 12, 2001, covering the following services: Credit card services.
(7) FIRST HORIZON registration number 2,482,662 registered on August 28, 2001, covering the following services: Securities brokerage services, investment banking services, financial services and insurance services, except for annuity underwriting services.
The Complainant and its affiliate FHHLC have used the trademark FIRST HORIZON since 1998 in connection with a full line of mortgage and banking services.
The Complainant and FHHLC have registered a number of domain names that incorporate the trademark FIRST HORIZON.
The Complainant's affiliate FHHLC (or one of its unincorporated divisions) have registered the following domain names also incorporating the trademark FIRST HORIZON.
The registration dates of the above domain names are all prior to the Respondent's registration of the two disputed domain names below registered on November 15, 2003:
In any event the Respondent has not provided any response or evidence to bring
the factual background provided by the Complainant into question.
5. Parties' Contentions
The Complainant contends that it has prior registered trademark rights in the name FIRST HORIZON as well as a number of prior registered domain names which include the term FIRST HORIZON including the domain name <firsthorizonmortgage.com>.
The Complainant contends that the two domain names registered by the Respondent are confusingly similar to the Complainant's registered trademark rights and to the various domain names owned by the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has absolutely no association or affiliation with the Respondent and has never granted any license or consent, express or implied, to use the mark FIRST HORIZON or any variant thereof as a trademark or domain name.
The Complainant contends that there is no evidence, pursuant to paragraph 4(c) of the Policy, that the Respondent has made demonstrable preparations to use the disputed domain names in connection with any bona fide services. Indeed the Complainant stresses that any Internet user that accesses the disputed domain names will discover that, far from using the disputed domain names in connection with any bona fide services, the Respondent's disputed domain names link to third-party websites offering competing mortgage and home loan services to those of the Complainant and that none of the linked websites make any reference to Complainant or the FHHLC.
The Complainant further contends that the Respondent is not commonly known by either of the domain names being an individual named Henry Tsung, domiciled in Taiwan.
The Complainant contends that the Respondent has registered and is using the domain name in bad faith within the meaning of paragraph 4(b)(iii) because the Respondent diverts Internet users who are seeking the Complainant's mortgage services to the websites of the Complainant's competitors. The Complainant contends that the Respondent has clearly sought to do this since he has deliberately chosen the two disputed domain names combining the Complainant's distinctive trademark FIRST HORIZON with a misspelling of the term "mortgage."
Finally, the Complainant also argues that the activities of the Respondent also fall within paragraph 4(b)(iv) of the Policy because the Respondent has brazenly used the disputed domain names to send Internet users to websites offering mortgage services that directly compete with the Complainant's services thereby intentionally attempting to attract Internet users to its website and the websites of unrelated third parties for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the services offered at Respondent's site and at the linked sites. The Complainant thereby contends that the Respondent is thus attempting to capitalize on the Complainant's trademark rights for his own commercial gain.
The Respondent did not reply to the Complainant's
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances or acts that would be evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) above.
Paragraph 4(c) of the Policy sets out three non-exhaustive circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondent's rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii).
In this case, the Panel finds that as a result of the Respondent failing to respond to the Complaint notified to him, he has thereby failed to rebut any of the factual assertions made by the Complainant and supported by the evidence submitted. The Panel does not, however, draw any inferences from the default in responding other than those that have been established or can fairly be inferred from the facts presented by the Complainant.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might have concluded that the Respondent has any rights or legitimate interests in the domain names.
The default of the Respondent does not remove the burden on the Complainant to establish the three criteria in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has clearly demonstrated that it has prior registered trademark and/or service mark rights in the name FIRST HORIZON by the registrations of its service marks on the Principal Register of the USPTO as such establishing a presumption of validity of the marks under United States law. The registrations also constitute constructive notice to all other parties of the Complainant's ownership of the marks.
The disputed domain names comprise the Complainant's trademark and/or service mark in their entirety with the addition of a generic term "mortgage" and the generic `.com' suffix which is purely functional. In this case the generic term "mortgage" has been deliberately misspelled as demonstrated by both disputed domain name registrations; "morgage" in <firsthorizonmorgage.com> and "mortage" in <firsthorizonmortage.com>.
It has been well established by previous UDRP panel decisions that when a domain
name consisting of a trademark or service mark is combined with a generic term
the generic term has a limited effect in distinguishing the domain name from
the trademark or service mark. Nokia Corporation v. Nokiagirls.com aka IBCC,
WIPO Case No. D2000-0102, where the
noun "girls" was added to the registered trademark NOKIA.
The Panel finds that the inclusion of a generic term, in this case the misspelled
noun, "mortgage" in the disputed domain names describes one of the
primary services offered by the Complainant and as such can only lead to further
confusion over and above a generic term of no relevance. The Panel also finds
that the fact that the generic term is misspelled is of no consequence. In the
case of Frederick's of Hollywood, Inc. v. Bob L. Reichenberg, WIPO
Case No. D2002-0667, the trademarks FREDERICKS had the generic term "lingerie"
incorporated in the domain name to give <frederickslingerie.com>. The
Panel in the above case found that the combination of the trademark with a term
that describes the primary product associated with the Complainant's trademark
led to a finding of confusing similarity.
The Panel finds that the disputed domain names are confusingly similar to the registered service marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if shown by the Respondent to be present, are considered as suitable evidence of the Respondent's rights or legitimate interests in respect of the disputed domain name. However, the primary burden is on the Complainant to show that the Respondent has no such rights or legitimate interests. Once the Complainant has made out a prima facie case, it is for the Respondent to demonstrate the contrary.
The Complainant states in the Complaint that the Respondent has no rights or legitimate interests in the domain names. This contention has not been contested and there is no evidence in the record that the Respondent has any legitimate interests in the domain names. The fact that the Complainant's registered service mark rights are included in the disputed domain names without any authorisation or license from the Complainant is such a prima facie case. The Panel finds that the disputed domain names are not the name of the Respondent nor do they appear to be associated with him in any way.
The Panel also finds that since the content of the websites associated with the disputed domain names offer competing services this cannot realistically constitute a bone fide offering of the services in question and therefore the Panel concludes that Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which for the purposes of paragraph 4(a)(iii) of the Policy would, if the Panel finds them to be present, constitute evidence of bad faith registration and use.
The Complainant contends that the Respondent has exhibited bad faith under paragraph 4(b)(iii) of the Policy which reads:
"you have registered the domain name primarily for the purpose of disrupting the business of a competitor."
The Panel is unable to find any other reason for the registration of the disputed domain names by the Respondent other than being for the primary purpose of disrupting the business of the Complainant. Whether the Respondent himself is or is not a direct competitor is not clear on the evidence. However, he is certainly directly assisting competitors with the disputed domain name registrations and is clearly diverting Internet users who are seeking the Complainant's services to websites of the Complainant's competitors. The Panel considers this to be a clear disruption of the Complainant's business.
The Complainant further contends that the Respondent has exhibited its clear bad faith under paragraph 4(b)(iv) of the Policy which reads:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location."
The disputed domain names have been used to link to websites offering mortgage services which directly compete with the Complainant's services and therefore the Panel finds that the Respondent has intentionally sought to confuse the Complainant's potential customers and that the Respondent is thereby seeking to trade upon the good will of the Complainant's registered service marks for his own commercial gain.
The fact that the Respondent has registered the two disputed domain names specifically
including the misspelling of "mortgage" is a further clear indication
of bad faith. The circumstances which would constitute evidence of bad faith
registration and use are not limited to those set out under paragraph 4(a)(iii)
of the Policy, which are by definition non-exhaustive. Numerous UDRP cases have
held that "typosquatting," the registration of a domain name that
differs only by a common or likely typographical error from the Complainant's
trade or service mark or existing domain name can constitute the necessary bad
faith if this is to the business advantage of the Respondent or the disadvantage
of the Complainant. See, e.g., Microsoft Corporation v. Stoneybrook,
WIPO Case No. D2000-1274, where there
was a finding of bad faith in the registration of <wwwmicrosoft.com>;
Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna,
WIPO Case No. D2000-0869, where the Panel
found that "intentionally registered domain names with a slight, but knowingly
confusing, spelling difference are pertinent to determining whether Respondent
has acted in good faith," and that "the intent to attract or divert
Internet users interested in the Complainant is also pertinent."
In this case the Panel finds that the misspelling of "mortgage" in both domain names is a deliberate attempt to divert Internet users interested in the mortgage activities of the Complainant and by doing so is further evidence of the bad faith registration and use by the Respondent.
The Panel therefore concludes that the Respondent has registered and used the
domain names in bad faith.
The Panel finds that the Complainant argued its case clearly and persuasively.
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 names, <firsthorizonmorgage.com>
and <firsthorizonmortage.com> be transferred to the Complainant.
Dated: April 22, 2004