Ace Mortgage Funding, Inc. v.
[Registrant]
Claim Number: FA0509000551177
PARTIES
Complainant
is Ace Mortgage Funding, Inc. (“Complainant”),
represented by Julia Spoor Gard, of Barnes & Thornburg LLP,
11 South Meridian Street, Indianapolis, IN 46204-3535. Respondent is [Registrant] (“Respondent”), 3850 Priority Way South, Suite 200,
Indianapolis, IN 46240.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <acemortgage.com>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
31, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 1, 2005.
On
September 1, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <acemortgage.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
September 9, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 29, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@acemortgage.com by
e-mail.
A
timely Response was received and determined to be complete on September 29,
2005.
A
timely additional submission was received from Complainant on October 3, 2005.
A
timely additional submission was received from Respondent on October 7, 2005.
On October 11, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant,
Ace Mortgage Funding, Inc., requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant, Ace Mortgage Funding, Inc., makes the following assertions:
1. Respondent’s <acemortgage.com> domain name is identical or confusingly
similar to Complainant’s ACE MORTGAGE FUNDING, INC. mark.
2. Respondent does not have any rights or
legitimate interests in the disputed domain name.
3. Respondent registered and used the disputed
domain name in bad faith.
Complainant
claims that it acquired the rights to the domain name on or about
August 20, 2003, while Respondent was employed by Complainant.
GoDaddy.com,
Inc., the Registrar for the <acemortgage.com> domain name,
states
that Brian Bradford is the only listed Registrant for the domain name. Bradford was employed by Complainant from
January 20, 2003 until December 2, 2004.
Bradford, while employed by Complainant, was named Administrative
Contact for the domain name and given access to the username and password that
allow control of the domain name.
Bradford, upon his termination of employment with Complainant, seized
control
of the domain name by denying Complainant access to the username and
password. Bradford has refused to
release control of the domain name back to Complainant despite several requests
made by Complainant. For these reasons,
Bradford is the Respondent in this case.
Although
the WHOIS Report shows the Registrant as 3850 Priority Way South, Suite 200
Indianapolis, Indiana 46240 United States, the Registrar GoDaddy.com, has
stated that according to its records, Brian Bradford is the only registrant
listed on the domain name.
The
WHOIS Report shows that Complainant is the true owner of the domain
name.
The Report shows that 3850 Priority Way South, Suite 200 Indianapolis, Indiana
46240 United States is the Registrant. Complainant does business at, and is the
sole occupier of, this address.
Respondent,
after his employment had terminated with Complainant, has started
offering
services identical to and in direct competition with the services offered by
Complainant. As evidence of
Respondent’s bad faith, Respondent
entered into a Covenant Not to Compete on January 20, 2003 with Complainant and
is obligated not to offer such services.
Respondent
is now using the <acemortgage.com> domain name to
prevent
Complainant
from reflecting its mark in a corresponding domain name and a pattern of
conduct has been demonstrated by Respondent to interfere with Complainant’s
business.
Respondent
has acquired and is using the domain name primarily for the purpose
of
disrupting the business of Complainant who is now a competitor of Respondent.
Respondent
is using the domain name to intentionally attempt to attract Internet
users
to its web site for commercial gain, thereby creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation and endorsement
of Respondent’s web site and services on its web site.
B.
Respondent
Brian
Bradford, the Administrative Contact for the <acemortgage.com> domain name,
responded to the Complaint, claiming to own the domain name.
Respondent
had sole ownership and possession of the domain name before he became an
employee of Complainant on January 20, 2003.
At no time did Complainant or any person employed by Complainant own,
acquire, or possess the right to the domain name.
The
fact that Respondent owned the domain name may have been a factor in the hiring
decision.
While
employed by Complainant, Respondent was never asked to surrender the domain
name or the rights to the domain name.
While employed by Complainant, Respondent only gave the username and passwords
to a person who was not employed by Complainant and who was with an internet
marketing firm.
The
<acemortgage.com> domain name
is different enough from Complainant’s registered service mark, ACE MORTGAGE
FUNDING, INC., so as not to be confused with the mark.
Respondent
does no marketing or advertising for the domain name. The domain name is targeted to a different market than the
service mark of Complainant, which identifies mortgage lending and loan
origination. The domain name is used
for a site that offers educational information about purchasing homes, credit
repair and the mortgage process. It
also allows a consumer to obtain a copy of his/her credit report.
Any
information acquired from the website has not been used for Respondent’s
financial gain. The site has generated
no income since December 2, 2004.
No renting, selling or leasing of this site has or is being done.
Respondent
is commonly known by the <acemortgage.com>
domain name. In July 2005, Respondent
incorporated a company called Acemortgage.com Inc.
The
domain name was registered on November 15, 1997, three years prior to the
registration of Complainant’s service mark.
C.
Complainant’s Additional Submissions
Complainant
contends that Respondent did not register the domain name prior to January 20,
2003, and that Respondent did not have sole ownership and possession of the
domain name before he became an employee of Complainant. On March 19, 2003, two months after Respondent’s
employment by Complainant, the WHOIS record for the domain name showed that the
Registrant for the domain name was Ace Mortgage of Cocoa Beach, FL and that the
Administrative and Technical Contact was Richard Bradley of Merritt Island,
Florida. The WHOWAS History Report also
reveals that Respondent was never listed as Registrant of the domain name prior
to his employment with Complainant.
Also, the cached report of the WHOIS status of the domain name captured,
on September 14, 2003, clearly demonstrates that Respondent was acting on behalf
of Complainant. The Registrant’s
address, 3850 Priority Way South, Suite 200 Indianapolis, IN 46240, is the
address of Complainant.
Respondent
attempts to mislead the Panel into believing that its website available at <acemortgage.com> is used only for
educational purposes. Respondent’s
website is littered with mechanisms to commercially gain from confused Internet
users.
Respondent
also attempts to argue that it has legitimate interests in the domain name
because it has now created a for-profit
domestic corporation under the name Acemortgage.com, Inc. Respondent, however, falsely claims that it
incorporated its business in July 2005.
The records of the Indiana Secretary of State’s Office show that the
application for incorporation was filed on September 2, 2005, the day after
this Complaint was officially filed.
D. Respondent’s Additional Submission
Respondent
purchased the <acemortgage.com>
domain name prior to January 20, 2003.
Respondent always maintained sole ownership of the domain name. Respondent was unaware what address was used
on the registration.
Respondent
has not earned any money from his website since leaving Complainant in December
2004. Respondent has not received any
commercial gain from this domain name.
There are no interest rates or loan programs listed (unlike on
Complainant’s webpage). At Respondent’s
website, one can check his credit, educate himself on the loan process and loan
terms, and prepare for home ownership.
Respondent
began the incorporation process for the company Acemortgage.com, Inc. on July
1, 2005. After completing the forms and
getting them to the Secretary of State’s office, it was officially accepted by
the State of Indiana on September 2, 2005.
The company was created as a for-profit company because the company is
planning on making money by conducting seminars for realtors.
Respondent
contends that Complainant is retaliating against Respondent for joining the
class action lawsuit against Complainant.
The
domain name is different and not confusingly similar to the ACE MORTGAGE
FUNDING, INC. service mark. The target markets are different, the advertising
and marketing is different.
Respondent
has a legitimate interest in the <acemortgage.com>
domain name. Respondent has been
known by the name ACEMORTGAGE.COM since January 2003. Respondent’s corporation has the same name as the website domain
name. Respondent’s website offers
information, and not competing mortgage services, to prospective home
buyers. Respondent has given seminars
to hundreds of realtors and potential home buyers where seminar participants
have been referred to the website at the domain name for help and education.
The
domain name was acquired by Respondent in good faith. It was used as a marketing personal website while Respondent was
an employee of Complaint. After
Respondent ceased employment with Complainant, Respondent continued to use the
domain name for business services that are distinguishably different from
Complainant’s.
FINDINGS
Complainant, Ace Mortgage Funding, Inc.,
is the owner of, and has rights to, a
U.S.
federal service mark registration (Registration No. 2,789,685) for the ACE
MORTGAGE FUNDING, INC. service mark filed November 11, 2000, for
"mortgage
lending and loan origination," claiming February 2, 1999 as the date of
first
use. Complainant has been using ACE
MORTGAGE FUNDING, INC. since at least
as
early as February 9, 1998 in connection with providing the above-noted
services.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Procedural Issues
Respondent was Complainant’s former employee. Complainant claims that Respondent
registered the <acemortgage.com> domain name while
employed by Complainant. Respondent
claims that he owns the disputed domain name, claiming that he registered the
domain name before he became an employee of Complainant and such previous
registration may have been a factor contributing to Respondent’s being
hired. Complainant further claims that
Respondent used its position as employee to “seize control” of the disputed
domain name. Respondent counters by
stating that the domain name registration was always Respondent’s and,
therefore, it did not “seize control” of it.
Additionally, Complainant references its non-compete agreement with
Respondent “as evidence of Respondent’s bad faith.” The Panel finds that this dispute raises issues of property,
contract, and tort (i.e. conversion) which are outside the scope of the
Policy. See Latent
Tech. Group, Inc. v. Fritchie,
FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s
registration of domain name in his own name and subsequent refusal to transfer
it to employer raises issues of breach of contract and breach of fiduciary duty
that are more appropriately decided in court, not before a UDRP panel); see also Discover New England
v. Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the
dispute outside the scope of the UDRP because the dispute centered on the
interpretation of contractual language and whether or not a breach occurred).
Respondent also alleges
that Complainant has filed this dispute in retaliation for Respondent joining a
class action against Complainant. This
claim also raises issues that are outside the scope of the Policy.
DECISION
As this proceeding raises issues outside
the scope of the Policy, the Complaint is dismissed without prejudice.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 25, 2005
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