Houzz Inc. v. hello@thedomain.io / Jurgen Neeme
Claim Number: FA1906001849454
Complainant is Houzz Inc. (“Complainant”), represented by Anne H. Peck of Cooley LLP, California, USA. Respondent is hello@thedomain.io / Jurgen Neeme (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <houzz.co>, registered with Dynadot, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2019; the Forum received payment on June 24, 2019.
On June 27, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <houzz.co> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 June 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2019 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@houzz.co. Also on June 28, 2019, 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 July 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading online platform for home remodeling and design. Complainant has rights in the trademark HOUZZ through its use dating back to 2008 and its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”), dating back to 2012. Respondent’s <houzz.co> domain name, registered on April 19, 2019, is identical or confusingly similar to Complainant’s mark as it fully incorporates the HOUZZ mark and adds the “.co” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <houzz.co> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent makes no demonstrable preparations to use the disputed domain name. Respondent uses the disputed domain name to misdirect users and phish for sensitive data. Respondent attempts to pass itself off as Complainant.
Respondent registered and uses the <houzz.co> domain name in bad faith. Respondent offers to sell the disputed domain name for $4960 US dollars. Respondent uses the disputed domain name to attempt to distribute malware. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the HOUZZ mark given the uniqueness and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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."
Paragraph 4(a) of the Policy 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the HOUZZ mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”). Registration of a mark with government trademark agencies sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Although no examples of actual registration certificates are submitted, Complainant does provide a chart of Complainant’s various trademark registrations around the world and this evidence is not contested by the Respondent. Accordingly, the Panel finds that Complainant has established rights in the HOUZZ mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <houzz.co> domain name is identical or confusingly similar to Complainant’s mark as it fully incorporates the HOUZZ mark and adds the “.co” ccTLD. The addition of a ccTLD is insufficient to distinguish a domain name for the purposes of Policy ¶ 4(a)(i) where it is a mere technical feature and adds no substance or meaning to the domain name as a whole. See Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). The Panel therefore finds that the <houzz.co> domain name is identical or confusingly similar to the HOUZZ mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interest in the <houzz.co> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the HOUZZ mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Jurgen Neeme / hello@thedomain.io,” and there is no other evidence to suggest that Respondent is known otherwise or that it was authorized to use the HOUZZ mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next contends that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <houzz.co> domain name because Respondent makes no demonstrable preparations to use the disputed domain name. Resolving a disputed domain name only to an inactive website may not demonstrate a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Complainant argues that Respondent makes no demonstrable preparation to use the disputed domain name where the disputed domain name redirects Internet users to an unaffiliated third-party website. Although a screenshot of this website is not submitted into evidence, Comlainant does submit a signed declaration from its attorney stating that the disputed domain name does, in fact, redirect as claimed. In light of the evidence before it and in the absence of a Response or other submission by the Respondent, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Next, Complainant argues that Respondent does not make a bona fide offering of goods or services or legitimate noncommercial or fair use of the <houzz.co> domain name because Respondent uses the disputed domain name to misdirect users and phish for sensitive data. Using a disputed domain name in furtherance of a phishing scheme may not be a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nordstrom, Inc. v. Above.com Domain Privacy, FA 1654490 (Forum Feb. 1, 2016) (finding respondent failed under Policy ¶¶ 4(c)(i) and (iii) as it phished for internet users’ personal information via a fake survey). Complainant provides a declaration which alleges that the website to which the disputed domain name redirects is blocked by a firewall and is blacklisted for potential security threat or malware. It provides screenshots from third-party malware detection websites that identify the disputed domain name as being “blacklisted” and exhibiting other issues such as “HTTP Errors” and containing “Suspicious Injects”. Interestingly, these scan results note that “Problems have not been detected” under the categories of “HTML Malware” and “JS Malware”. Still, the Panel finds this evidence sufficient, on a balance of probabilities, that Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent does not make a bona fide offering of goods or services or legitimate noncommercial or fair use of the <houzz.co> domain name as Respondent attempts to pass itself off as Complainant. Passing oneself off as a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant argues that Respondent is passing itself off as Complainant by incorporating Complainant’s HOUZZ mark in the disputed domain name and that “the Domain Name could only have been registered with an intent to misdirect Houzz’s users”. In light of the very close and confusing similarity between the disputed domain name and Complainant’s own <houzz.com> domain name, the Panel agrees with Complainant’s contention and finds that Respondent is seeking to pass itself off as Complainant. This does not evidence a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered the <houzz.co> domain name in bad faith as Respondent had knowledge of Complainant’s rights in the HOUZZ mark at the time of registration, given the uniqueness and fame of the mark. Prior Panels have consistently held that actual knowledge of a complainant’s mark prior to registering a disputed domain name is adequate evidence upon which to base a finding of bad faith registration under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant provides press coverage regarding its company and its services under the HOUZZ mark. This, combined with the near identity of the disputed domain name to the Complainant’s own <houzz.com> domain, leads the Panel to conclude that Respondent had actual knowledge of Complainant’s rights in the HOUZZ mark, thus constituting bad faith registration under Policy ¶ 4(a)(iii).
Next, Respondent registered and uses the <houzz.co> domain name in bad faith as Respondent offers to sell the disputed domain name for thousands of dollars. An offer to sell a disputed domain name for in excess of a respondent’s out-of-pocket costs can demonstrate bad faith registration and use per Policy ¶ 4(b)(i). See Navajo Nation Gaming Enterprise v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd, FA 933276 (Forum May 14, 2018) (concluding that the respondent registered and was using the <firerockcasino.com> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for $14,999.00 USD). Complainant provides a screenshot from a domain name auction website which lists the disputed domain name as being offered for sale at a price of $4,960 USD. The Panel therefore finds that Respondent registered and uses the disptued domain name in bad faith per Policy ¶ 4(a)(i).
It is also argued that Respondent registered and uses the <houzz.co> domain name in bad faith as Respondent uses the disputed domain name to attempt to distribute malware. Use of a disputed domain name to distribute malware to Internet users can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). The Panel notes that Complainant provides a declaration which alleges that the website to which the disputed domain name redirects is blocked by a firewall and is blacklisted for potential security threat. As noted, though, the evidence does not support the claim of malware. However, on a balance of the probabilities, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant submits evidence that, until recently, the disputed domain name did not resolve to any website content at all. It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that Panels may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”) Here, the evidence shows that, until recently, there was no website associated with the disputed domain name. The Panel therefore finds that Respondent is passively holding the domain name, which is confusingly similar to Complainant’s mark, and that this further indicates bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <houzz.co> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 24, 2019
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