The Complainant is Caliber Home Loans, Inc. of Coppell, Texas, United States of America (“USA” or “US”), represented by Dykema Cox Smith, USA.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, USA / Patrick Scott of Flowery Branch, Georgia, USA, self-represented.
The disputed domain name <caliberfinancial.net> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2018. On March 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2018 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 22, 2018.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on March 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2018. On April 3, 2018 and April 6, 2018, the Center received two informal email communications from the Respondent.
Upon request of the Complainant, the proceeding was suspended on April 10, 2018. At the Complainant’s request, the proceeding was then reinstituted on May 11, 2018. The Center informed the Parties of the commencement of the Panel appointment process on May 18, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 4, 2018. 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.
The Complainant is a business corporation organized under the laws of the US State of Delaware and headquartered in Coppell, Texas, USA. Since April 2009, according to the Complaint, the Complainant has provided mortgage banking services in the USA under the CALIBER brand, currently serving more than 590,000 customers across the USA with USD 129 billion in mortgage loans.
The Complainant offers financial services using unregistered service marks for which the Complainant claims common law protection: CALIBER, CALIBER FUNDING, CALIBER HOME LOANS, CALIBER MILITARY LENDING, CALIBER PORTFOLIO LENDING, CALIBER WHOLESALE, CALIBER HOME LOANS CORRESPONDENT LENDING, and a design mark prominently featuring the CALIBER name. The record shows that these marks have appeared on signage at the Complainant’s offices, in its promotional brochures and print and media advertising, and online on the Complainant’s websites at “www.caliberhomeloans.com”, “www.caliberwholesale.com”, “www.calibercl.com”, and “www.calibermilitarylending.com”. The record also demonstrates media recognition and awards for the Complainant in home financing, and a substantial level of advertising expenditure to support its brand recognition.
The Domain Name was created on April 3, 2017 and registered in the name of a domain privacy service. After the Complaint in this proceeding was filed, the privacy service identified Mr. Scott of Flowery Branch, Georgia, USA, as the registrant, and he is referred to as the Respondent hereafter. The Respondent communicated with the Center and the Complainant about transferring the Domain Name, but the Respondent has neither transferred the Domain Name nor submitted a Response.
The Complaint attaches a screenshot of the website to which the Domain Name formerly resolved, a “RateMarketplace” portal at http://cbr.caliberfinancial.net. The portal allowed users to complete a form requesting quotes from mortgage companies (including the Complainant’s competitors) for home loan refinancing, or alternatively from a variety of other firms offering other services such as debt consolidation, home equity loans, and home improvements. In addition, it appears that the Domain Name was used to send emails giving the false impression of an association with the Complainant. One customer forwarded such an email (included in the record) to one of the Complainant’s agents. The email offered home refinancing services and included a banner logo that was strikingly similar to the Complainant’s design mark, with the words “CALIBER FINANCIAL” beside a stylized triangle superimposed over a square, mimicking the Complainant’s “CALIBER HOME LOANS” next to a stylized triangle superimposed over a square.
At the time of this Decision, the Domain Name resolves to a pay-per-click (“PPC”) advertising portal “parked for free” by the Registrar.
The Complainant asserts common law rights in the unregistered CALIBER service marks listed above and contends that the Domain Name is confusingly similar to those marks (collectively, the “CALIBER mark”). The Complainant argues that it has not given the Respondent permission to use the CALIBER mark and that the Respondent has no other evident rights or legitimate interests in the Domain Name.
The Complainant contends that the Respondent has registered and used the Domain Name in bad faith, to misdirect Internet users for commercial gain and to disrupt the business of a competitor.
The Respondent did not respond substantively to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The first element of the Policy requires the Complainant to demonstrate rights in a trademark or service mark. Where the mark is not registered, the Complainant must show that the mark has nevertheless become a “distinctive identifier” (also referred to as “secondary meaning”), which consumers in a relevant market associate with the Complainant’s goods or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. Relevant evidence demonstrating such acquired distinctiveness includes “a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”, taking into account the nature of the Complainant’s services. The Panel finds such evidentiary support for acquired distinctiveness of the unregistered CALIBER mark, as recounted in the Factual Background section above.
As in most cases, the generic Top-Level Domain “.net” is not a distinguishing feature in this instance. See WIPO Overview 3.0, section 1.11. The Domain Name incorporates the Complainant’s common law CALIBER mark in its entirety and adds the generic word “financial”. This does not avoid confusion, especially since the Complainant itself is in the business of offering financial services.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.3. The Panel concludes under this test that the Domain Name is confusingly similar to the Complainant’s CALIBER mark for purposes of the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has established a prima facie case with a demonstration of confusing similarity, a denial that the Respondent had permission to use the Complainant’s mark, and evidence of the Respondent’s conduct in using the Domain Name for a competing website and at least one “spoofing” email. This shifts the burden to the Respondent. The Respondent has not come forward to claim any rights or legitimate interests, and none are apparent. The portal and email cannot be considered bona fide commercial offerings of the Respondent, and there is no evidence that the Respondent established a legitimate business entity under a corresponding name. Hence, the Panel concludes that the Complainant has established the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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 record furnishes relatively little insight into the business of the elusive Respondent, but the “spoofing” email suggests that the Respondent might have been competing with the Complainant for home refinancing business. It is questionable whether it can be inferred that the Respondent’s “primary” motivation for registering and using the Domain Name was to “disrupt” the business of a multi-billion-dollar competitor. What is clear is that the Respondent (a) was well aware of the Complainant’s mark, which the Respondent emulated in the email as well as in the Domain Name itself, and (b) traded on the Complainant’s reputation to attract Internet users to a portal that offered both competing and related financial services, presumably for commercial gain. This is very like the example cited in the Policy, paragraph 4((b)(iv), and certainly amounts to bad faith for Policy purposes, as does allowing the current use of the Domain Name for a PPC advertising portal.
The Panel concludes that the third element of the Complaint, bad faith, has been established.
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 <caliberfinancial.net> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: June 15, 2018