Four Minute Warning, LLC v Judith Dominguez
WIPO Case No. D2024-2465
•22-10-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Four Minute Warning, LLC v. Judith Dominguez
Case No. D2024-2465
1. The Parties
Complainant is Four Minute Warning, LLC, United States of America (“United States”), represented by
The Law Office of Matthew M. Yospin, United States.
Respondent is Judith Dominguez, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <jdmortgageloans.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2024.
On June 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on June 26, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
On July 8, 2024, the proceeding was suspended upon the Complainant’s request and reinstituted on
August 29, 2024. The Complainant filed an amendment to the Complaint on September 9, 2024.
The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint,
and the proceedings commenced on September 10, 2024. In accordance with the Rules, paragraph 5, the
due date for Response was September 30, 2024. Respondent sent several informal communications to the
Center, as did Complainant. Respondent did not submit a formal response to the allegations in the
Complaint.
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The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 10, 2024. 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
Complainant is a company based in Austin, Texas. Since at least 2020, and as early as 2017, Complainant has offered mortgage lender matching and related services under the mark JD MORTGAGE. Complainant owns United States Registration No. 6374973 (registered June 1, 2021) for JD MORTGAGE on the
Supplemental Register, and United States Registration No. 7275371 (registered January 16, 2024) on the
Principal Register. Both registrations disclaim the right to exclusive use of the term “MORTGAGE” apart
from the mark as shown, and the registration on the Principal Register is registered with a claim of acquired
distinctiveness in whole.
The disputed domain name was registered on April 21, 2020. The disputed domain name has been linked to an active website through which Respondent, Judith Dominguez, has advertised and communicated with consumers about her mortgage lending services in the state of California, marketed under the name JD MORTGAGE LOANS.
5. Parties’ Contentions
A. Supplemental Communications
Both Complainant and Respondent sent informal communications to the Center. The Panel exercises its discretion under Paragraph 10(d) of the Rules to consider these communications. Nevertheless, the Panel further notes that the outcome of the proceeding would be the same without considering the additional filings, since all of the evidence on which the Panel makes its ruling was included in the initial Complaint, the amendment to the Complaint, and the Annexes thereto.
B. Complainant
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s
trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns rights to the JD MORTGAGE mark, which Complainant uses in its own online communications with prospective clients. Complainant contends that Respondent has
incorporated in full Complainant’s JD MORTGAGE mark into the disputed domain name, with only the
addition of the term “loans”, which describes a service offered by both Complainant and by Respondent via
their respective websites. Complainant further contends that Respondent lacks rights or legitimate interest in
the disputed domain name, and that Respondent has no license from, or other affiliation with, Complainant.
Thus, Complainant contends that Respondent has registered and is using the disputed domain name in bad
faith, having simply acquired it for Respondent’s own commercial gain.
C. Respondent
As noted, Respondent did not file a formal reply to Complainant’s contentions in this proceeding.
Respondent did, nevertheless, indicate that she has used the disputed domain name to offer her services.
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6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has
shown rights in respect of a trademark or service mark, JD MORTGAGE, for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name.
WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, the dictionary term “loans”) may
bear on assessment of the second and third elements, the Panel finds the addition of such term does not
prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark for
purposes of the Policy. WIPO Overview 3.0, section 1.8.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which
Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate
interest”, as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples
that might show rights or legitimate interests in a domain name. These examples include:
use of the domain name “in connection with a bona fide offering of goods or services”;
demonstration that respondent has been “commonly known by the domain name”; or
“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”.
Complainant has alleged and submitted evidence, included as Annex 4 to the Complaint, that Respondent has used the disputed domain name in connection with mortgage lending services offered by Respondent, Judith Dominguez, under the name JD MORTGAGE LOANS. Nothing in the record suggests this choice of name was intended to specifically target or take advantage of Complainant, rather it seems likely this name
and the disputed domain name were elected due to Respondent’s personal name and business activities.
Therefore, although Respondent has no license from, or other affiliation with, Complainant, the Panel finds
that there is sufficient evidence of Respondent’s “rights or legitimate interests” in the disputed domain name
in accordance with paragraph 4(a)(ii) of the Policy. Complainant cannot prevail in this UDRP proceeding
without establishing Respondent’s lack of “rights or legitimate interests” in the disputed domain name.
Nevertheless, for completeness, the Panel proceeds with an analysis of the third element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides examples of evidence that may indicate “bad faith” registration and use
of a disputed domain name. These include:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name
primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration
to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for
valuable consideration in excess of its documented out of pocket costs directly related to the disputed
domain name; or
(ii) that Respondent has registered the disputed domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain name, provided that
Respondent has engaged in a pattern of such conduct; or
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(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of
confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of
Respondent’s website or location or of a product or service on Respondent’s website or location.
As noted above, Complainant has both alleged and submitted evidence, included as Annex 4 to the burden of proving that Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy. In this regard, the Panel notes that Respondent registered the disputed domain name
Complaint, that Respondent has used the disputed domain name in connection with mortgage lending
services offered by Respondent, Judith Dominguez, under the name JD MORTGAGE LOANS. Although, as
Complainant points out, the services offered by Respondent may compete with those offered by
Complainant, and although Complainant has established that it owns trademark registrations for the mark
before either of Complainant’s trademark registrations, and there is no evidence indicating Respondent knew
of the Complainant or sought to target Complainant’s mark when registering the disputed domain name.
Rather, the evidence submitted by Complainant indicates that Respondent has made a legitimate use of the
disputed domain name to market Respondent’s services under that name, suggesting the distinctive
component in both the disputed domain name and Complainant’s trademark, “jd”, was adopted for
independent reasons.
The Panel finds that Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith under paragraph (4)(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, the Complaint is denied.
/Lorelei Ritchie/
Lorelei Ritchie
Sole Panelist
Date: October 22, 2024
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