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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Terwin Holdings LLC dba The Winter Group v. Philip Ancevski

Case No. D2006-1035

 

1. The Parties

The Complainant is Terwin Holdings LLC dba The Winter Group, New York, United States of America, represented by Pitney Hardin LLP, United States of America.

The Respondent is Philip Ancevski, California, United States of America, represented by Graham & Dunn, PC, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <wintergroup.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2006. On August 15, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 16, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2006. The Response was filed with the Center on September 5, 2006.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 18, 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.

Complainant has filed a “Request for leave to File Supplemental Brief and Supporting Materials.” Respondent has opposed this request. Complainant’s request is denied because the offered arguments and evidence could have been offered in the original filings.

 

4. Factual Background

Complainant, through various subsidiaries and affiliated companies, operates in the secondary mortgage market. Complainant, as well as some of its subsidiaries and/or affiliates, do business as The Winter Group.

The Winter Group’s services include the buying and selling of these residential mortgages as well as the bundling of these mortgages into marketable securities. The Winter Group was formed in 2002 and in four years has emerged as one of the leading companies in the secondary mortgage market. As a result of this success, the company has expanded from a single office in New York City to six offices around the country.

Complainant owns, by assignment, U.S. trademark registration No. 2,836,040, registered April 27, 2004, with a date of first use in commerce of July 18, 2003, for THE WINTER GROUP for “financial services, namely, the purchase of residential mortgages for others and the issuance of mortgage-backed securities.”

Respondent acquired the Domain Name in April 2006.

 

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, the Complainant alleges that:

THE WINTER GROUP is well-known and famous mark for secondary mortgage services.

The domain name <wintergroup.com> is identical to Complainant’s registered trademark THE WINTER GROUP except that it omits the word “the.”

With respect to paragraph 4(a)(ii) of the Policy, the Complainant alleges that:

Respondent is not commonly known by the Domain Name and has never conducted a legitimate offline business under the name “Winter Group.”

Respondent is not making legitimate non-commercial or fair use of the Domain Name, but rather is misleadingly using the Domain Name in order to attract consumers to its website for its own commercial gain.

Respondent cannot demonstrate any legitimate interest in the Domain Name.

Respondent registered the Domain Name only after Complainant had established rights in its THE WINTER GROUP Mark.

With respect to paragraph 4(a)(iii) of the Policy, the Complainant alleges that:

Respondent registered and is using the domain name in bad faith for the specific purpose of diverting users looking for Complainant’s website.

Respondent acquired the domain name on April 25, 2006.

Respondent began using the Domain Name on April 27, 2006, in connection with mortgage related services.

Respondent has no authorization from Complainant to use Complainant’s trademark.

Respondent has had years of constructive notice of Complainant’s registered trademark, under U.S. law 15 U.S.C. § 1072.

Respondent has no legitimate use of the mark THE WINTER GROUP and began using the domain name after the successful registration of the mark THE WINTER GROUP with the United States Patent and Trademark Office by Complainant.

Respondent began purposefully trading on the good will of THE WINTER GROUP mark by confusing consumers into thinking Respondent’s website was somehow associated with or owned by Complainant.

B. Respondent

With respect to paragraph 4(a)(i) of the Policy, the Respondent contends that:

"The Winter Group" is not used as a trademark that identifies a single source, and thus is not a trademark in which Complainant had rights at the time the challenged domain name was registered.

Nothing in Complainant's Complaint demonstrates that its trademark is recognized as a trademark, let alone that it is widely known.

The slight presence of Complainant on the Web supports two important arguments: first, that there is no reason Respondent should have been aware of Complainant's company and mark at the time he acquired the subject domain name; and second, that Complainant's company is not nearly so well known as Complainant wishes the Panel to believe.

Respondent does not dispute that the challenged domain name is similar to Complainant's alleged mark, but contends that Complainant has not borne its burden of showing that (a) the term "The Winter Group" is a legitimate trademark in which Complainant had rights at the time Respondent registered the domain name, and (b) the similarity of the domain name to Complainant's mark is sufficient to cause confusion.

With respect to paragraph 4(a)(ii) of the Policy, the Respondent contends that:

A domain name registrant has a legitimate interest in a domain name if before any notice to the domain name registrant of the dispute, the registrant made preparations to use the domain name in connection with a bona fide offering of goods or services.

When Respondent acquired the Domain Name, Respondent planned to use that Domain Name for a new business promoting opportunities for group winter recreation accommodations. Businesses of this kind are not uncommon and use the term "winter group" generically or descriptively for business activities related to group accommodations in the field of winter recreation.

Although Respondent did direct the domain name to his Lending Start Website, and later to his ValueLoan Website, which admittedly include links to mortgage information among their financial services, this temporary use of the domain name pending the development of Respondent's winter recreation accommodation business does not demonstrate a lack of legitimate interest.

With respect to paragraph 4(a)(iii) of the Policy, the Respondent contends that:

Respondent was not aware of Complainant, Complainant's trademark, or its registration when he acquired the challenged domain name.

Notice of another party's prior rights in a mark-constructive or actual-is not per se evidence of the bad faith registration and use necessary to a showing of cybersquatting.

Legitimate descriptive uses of words and phrases may be made even by people who have notice of other parties' trademark rights in the same or similar words and phrases.

“Winter Group” is widely used descriptively or generically to refer to group activities and accommodations in the field of winter recreation.

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has trademark rights in the mark THE WINTER GROUP due to its United States registration for the mark.

The Panel also finds that the domain name <wintergroup.com> is likely to be confused with Complainant’s THE WINTER GROUP trademark.

The challenged Domain Name is confusingly similar to Complainant’s registered mark because it incorporates Complainant’s entire mark WINTER GROUP with only the omission of the generic term ‘the’.

The Panel notes that gTLDs shall be disregarded in the analysis as to whether a domain name and a trademark are identical or confusingly similar. Thus the “.com” in the domain name should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

Thus, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In order for the Respondent to demonstrate rights or legitimate interests in the Domain Name, it must show

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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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.

Respondent does not attempt to defend the legitimacy of its present use of his domain name in conjunction with mortgage banking services. Instead, he declares that this is just “temporary” and that he intends to make a bona fide use of the domain name as the URL for a “business promoting group rates for winter recreation accommodations.” Respondent points to a sample web page attached as an exhibit. This is not sufficient to satisfy the requirements of Policy 4(c)(i) that the Respondent show “demonstrable preparations” to make a legitimate use. Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252 (affidavit without corroborating evidence is not enough to satisfy “demonstrable preparations”); Eurail Group GIE v. DOTrader, WIPO Case No. D2003-0422 (“demonstrable preparation” not supported because “Respondent…has presented no evidence of any business or marketing plan or of advertising or promotional materials …”). Respondent’s declaration is particularly unpersuasive because the “temporary” site is still actively promoting mortgage banking services. The Panel finds that Complainant has carried its burden to show that Respondent has no legitimate rights in the domain name.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s use of the domain name in conjunction with mortgage banking services evidences bad faith use and registration. Specifically, Respondent’s conduct is covered by paragraph 4(b)(iv) of the Policy: “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.”

 

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 <wintergroup.com> be transferred to the Complainant.

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Lawrence K. Nodine
Sole Panelist

Dated: October 9, 2006.