TomoCredit, Inc. v Audrey Troutt, Tomo Networks, Inc

WIPO Case No. D2025-0568

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TomoCredit, Inc. v. Audrey Troutt, Tomo Networks, Inc

Case No. D2025-0568

1. The Parties

Complainant is TomoCredit, Inc., United States of America (hereinafter “United States”), represented by

Friedland Cianfrani LLP, United States.

Respondent is Audrey Troutt, Tomo Networks, Inc, United States, represented by Pillsbury Winthrop Shaw

Pittman LLP, United States

2. The Domain Name and Registrar

The disputed domain name <tomo.com> (hereinafter the “Disputed Domain Name”) 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 February 13, 2025. On February 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 13, 2025, 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 (Tomo Mortgage, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on February 17, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 22, 2025.

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 Respondent of the Complaint, and the proceedings commenced on February 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2025. Respondent sent an email communication to the Center on March 5, 2025, and later filed its Response with the Center on March 14, 2025.

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The Center appointed Sally Abel, Peter J. Dernbach, and Lawrence K. Nodine as panelists in this matter on April 24, 2025. The Panel finds that it was properly constituted. Each member of 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 has used TOMO as a service mark in connection with credit services since 2019. Complainant offers some of its services on the website associated with the domain name <tomocredit.com>. Complainant owns two United States Trademark Registrations:

- TOMO, Registration No. 7,638,272 (Registered January 7, 2025);

- TOMO, Registration. No. 7,160,088, (Registered September 12, 2023).

Respondent is a home buying services company and the parent company of two wholly owned operating subsidiaries: Tomo Mortgage, LLC (“Tomo Mortgage”) and Moto Real Estate, Inc. (dba Tomo Real Estate) (“Tomo Real Estate”). Respondent uses TOMO as a trademark in connection with a range of home buying services, including mortgage lending, real estate listings, and real estate lead generation services.

Respondent has been using TOMO as a trademark in connection with its business since 2020.

On May 8, 2020, Respondent incorporated under the name “Tomo Networks, Inc.” in Delaware, United
States.

In the Fall of 2020, Respondent investigated buying the Disputed Domain Name, which was owned by a Japanese entity. Respondent engaged two consultants [1] to contact the Japanese owner. In the interim, Respondent registered and used two substitute domain names that included TOMO as a component.

On October 31, 2020, Respondent started using the domain name <tomonetworks.com> and on June 30,
2021, Respondent started using the domain name <hellotomo.com>.

On October 2, 2020, Respondent applied for a United States Trademark Registration for TOMO, and subsequently secured Registration No. 6,647,787 (Registered February 15, 2022).

On August 5, 2022, Complainant sent Respondent a cease-and-desist letter advising Respondent of its trademark rights and demanding that Respondent stop using TOMO as a trademark. Respondent declined.

On July 17, 2023, Complainant petitioned to cancel Respondent’s United States Trademark Registration No. 6,647,787 for TOMO. Respondent did not respond to this petition and, consequently, the registration was cancelled on October 18, 2023.

On September 11, 2023, Respondent purchased the Disputed Domain Name and thereafter forwarded traffic from its <tomonetworks.com> and <hellotomo.com>.

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[1] Respondent submits as evidence two invoices - one dated September 14, 2020, and the other dated November 24, 2020 -

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Disputed Domain Name.

B. Respondent

Respondent contends that Complainant has not satisfied all three of the elements required under the Policy for a transfer of the Disputed Domain Name. In particular, Respondent contends that it began using business names that correspond to the Disputed Domain Name before notice of the dispute. Policy 4(c)(i).

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 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 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. Accordingly, the Disputed Domain
Name is identical to the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel acknowledges Respondent’s contention that its services are different and distinguishable from Complainant’s, but this contention is not relevant to this element of the Policy, WIPO Overview 3.0, section 1.1.2, although it would, of course, be relevant in the event of infringement litigation in court.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

The Panel finds that, before notice to Respondent of the dispute, Respondent used a name corresponding to the Disputed Domain Name in connection with a bona fide offering of services. Policy paragraph 4(c)(i) and WIPO Overview 3.0, section 2.2.

On August 4, 2022, Complainant sent a cease-and-desist letter to Respondent. There is no evidence that Complainant was well known before this date or any evidence that Respondent had actual knowledge of Complainant before it receiving this letter.

Respondent had been using TOMO for more than two years before it received Complainant’s letter in August 2022. Respondent incorporated in Delaware as “Tomo Networks, Inc.” in May 2020; secured United States Trademark Registration No. 6,647,787 (Registered February 15, 2022); began using <tomonetworks.com> on October 30, 2020; and began using <hellotomo.com> on June 30, 2021. Respondent conducted

substantial business under these domain names - both of which correspond to the Disputed Domain Name -

before receiving Complainant’s cease-and-desist letter.

The Panel finds the second element of the Policy has not been established.

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C. Registered and Used in Bad Faith

The evidence in the case file as presented does not indicate that Respondent’s aim in registering the
Disputed Domain Name was to profit from or exploit Complainant’s trademark.

Although Respondent had actual notice of Complainant’s claim of trademark rights before it purchased the Disputed Domain Name in September 2023, the evidence demonstrates that Respondent’s interest in the Disputed Domain Name began long before. In September and November of 2020 Respondent paid two

different investigators for assistance contacting the prior owner of the Disputed Domain Name, a Japanese entity. This evidence, in combination with evidence that Respondent conducted substantial business under names that include “Tomo” prior to any knowledge of the dispute or Complainant’s alleged prior rights,
persuades the Panel that Respondent was not targeting Complainant’s good will when it registered the

Disputed Domain Name.

The Panel finds the third element of the Policy has not been established.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Lawrence K. Nodine/ Lawrence K. Nodine Presiding Panelist

/Sally M. Abel/ Sally M. Abel Panelist

/Peter J. Dernbach/
Peter J. Dernbach
Panelist
Date: May 8, 2025

documenting payments to these consultants for efforts to identify and open negotiations with the owner of the <tomo.com> domain
name.