The Mortgage Link is a real estate company that asserts common law trademark rights in THE MORTGAGE LINK mark, based upon use of that mark since 2002. They operate from the domain TheMtgLink.com.
They filed a UDRP against the domain TheMortageLink.com that was registered in 2009, seven years after the alleged first use of their mark. That domain is mostly used as a forwarder to similar services but currently resolves to a web design services company.
The sole panelist at the Forum (formerly NAF) did not find the common law mark to be publicly recognized:
This material does not show public recognition of THE MORTGAGE LINK as a common law trademark, still less a reputation in that descriptive expression. Beyond this, the Complaint merely carries unsupported assertions of a common law rights. In the circumstances, the Panel finds that Complainant has failed to show unregistered trademark rights in THE MORTGAGE LINK. Accordingly the Panel finds that Complainant has not established the first element of the Policy.
In doing so, the panelist ordered the domain to be remain with the Respondent. The case shows how important it is to own and operate the matching .com of your brand and at the very least, register the mark with the USPTO or other trademark office.
The domain transfer was denied.
The Mortgage Link, Inc. v. Maurice Hicks
Claim Number: FA2108001961916
PARTIES
Complainant is The Mortgage Link, Inc. (“Complainant”), represented by Rachel M. Wolf of Shumaker Williams, P.C., Maryland, USA. Respondent is Maurice Hicks (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <themortgagelink.com>, registered with eNom, LLC.
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.
Debrett G Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on August 31, 2021; the Forum received payment on August 31, 2021.
On August 31, 2021, eNom, LLC confirmed by e-mail to the Forum that the <themortgagelink.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@themortgagelink.com. Also on September 1, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts common law trademark rights in THE MORTGAGE LINK based upon asserted use of that mark since 2002. Complainant submits that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
For reasons which follow, the Complaint fails on the first limb of the Policy which requires proof of trademark rights. The only factual finding pertinent to the decision in this case is that Complainant is a mortgage lender, a matter of relevance to the assessment of the asserted common law trademark rights.
DISCUSSION
Paragraph 15(a) of 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.”
Albeit that no Response has been filed, paragraph 4(a) of the Policy nonetheless requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Identical and/or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) does not distinguish between registered and unregistered trademark rights. A governmental registration is not required if a complainant can establish common law rights (see, for example, Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018)). Complainant states that it relies on its unregistered or common law rights in THE MORTGAGE LINK based upon use of that mark since 2002.
Common law trademark rights may be established through use and public recognition of a putative mark such that it has come to acquire secondary meaning (see, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) holding that complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”; Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”; Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum Apr. 4, 2015) finding complainant failed to establish secondary meaning where no evidence was provided with respect to sales under the mark and money spent promoting the mark; CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) finding complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”).
These and many other similar decisions under the Policy are reflected by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”), which asks at paragraph 1.3: What does a complainant need to show to successfully assert unregistered or common law trademark rights? In answer, the consensus opinion of UDRP panelists is that:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) 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.
…
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
Complainant is a mortgage lender. The phrase “the mortgage link” is wholly descriptive of Complainant’s business. As such, Complainant bears a greater onus to present evidence of acquired distinctiveness/secondary meaning. The evidence in support of the claim to common law trademark rights in this case comprises:
(i) a document showing that Complainant was incorporated in the State of Maryland in 2001; and
(ii) screenshots of Complainant’s current webpages resolving from the domain names <themtglink.com> and <mymortgagelink.com>.
This material does not show public recognition of THE MORTGAGE LINK as a common law trademark, still less a reputation in that descriptive expression. Beyond this, the Complaint merely carries unsupported assertions of a common law rights. In the circumstances, the Panel finds that Complainant has failed to show unregistered trademark rights in THE MORTGAGE LINK. Accordingly the Panel finds that Complainant has not established the first element of the Policy.
Rights or Legitimate Interests
No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Registered and Used in Bad Faith
No findings required.
DECISION
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <themortgagelink.com> domain name REMAIN WITH Respondent.
Debrett G Lyons, Panelist
Dated: September 27, 2021
