Houzz Inc. v. Willson Avody
Claim Number: FA1911001869942
Complainant is Houzz Inc. (“Complainant”), represented by Anne H. Peck of Cooley LLP, California, USA. Respondent is Willson Avody (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <houzzilla.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2019; the Forum received payment on November 5, 2019.
On November 6, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <houzzilla.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@houzzilla.com. Also on November 12, 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 December 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the HOUZZ mark acquired through its ownership of its portfolio of registered trademarks described below and the goodwill in the mark that it has established through extensive use in relation to its online services. Complainant submits that it has its expended substantial resources promoting the HOUZZ mark and its associated products and services, including the online platform dedicated to home remodeling and design.
Complainant claims that its online platform currently has more than 40 million monthly unique visitors worldwide, and a directory of more than one million active home remodeling and design professionals.
Complainant submits that the disputed domain name <houzzilla.com> is confusingly similar to its HOUZZ trademark.
Complainant submits that the disputed domain name incorporates the HOUZZ mark in its entirety, and that the distinctive and unique spelling of the HOUZZ mark will cause users encountering the disputed domain name to mistakenly believe that it originates from, is associated with, or is sponsored by Complainant.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name given the prominence of its online platform and considering the content of the webpage to which the disputed domain name previously resolved, Respondent is undoubtedly familiar with the HOUZZ mark. Respondent is not commonly known as the disputed domain name or any name containing Complainant’s HOUZZ mark.
Respondent’s WHOIS information in connection with the disputed domain name makes no mention of the disputed domain name or the HOUZZ mark as Respondent’s name or nickname. Complainant submits that a registrant may be found to lack any right or legitimate interest in a domain name where there is no indication it is known by that name. See Popular Enterprises, LLC v. Sung-a Jang, FA0610000811921 (Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”).
Complainant submits that contrary to Respondent’s assertion that the website corresponding to the disputed domain name is associated with “Houzz Certified Advertising and Marketing Specialists,” Complainant has not authorized, certified, or licensed Respondent to use its trademarks in any way. Unlicensed, unauthorized use of a domain incorporating a complainant’s trademark is strong evidence that a respondent has no rights or legitimate interest in the disputed domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA0709001076561 (Forum Oct. 26, 2007).
Complainant argues that Respondent cannot claim to be offering bona fide goods or services because the disputed domain name does not currently resolve to an active website. When “the disputed domain name does not resolve to any active website, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate non-commercial purpose.” See Carrefour v. Xiamen PrivacyProtection Service Co., Ltd. / He Wen Ming, D2018-1577 (WIPO Sept. 13, 2018).
Complainant submits that the disputed domain name was registered and is being used in bad faith. Previously, in September 2019, the disputed domain name resolved to a commercial website that displayed the HOUZZ mark and incorporated Complainant’s Stylised Letter H Logo as the first letter of the word “houzilla”.
Complainant submits that the unique qualities of the HOUZZ mark, which Complainant adopted well before Respondent owned the disputed domain name, refute any suggestion that Respondent created disputed domain name independently and it is impossible to conceive of any potential legitimate use of the disputed domain name and therefore the disputed domain name is being used in bad faith. See Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003) (“Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that Respondent was unaware of Complainant's trademark . . . Respondent has provided no evidence or suggestion of a possible legitimate use . . . Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”).
Complainant submits that the disputed domain name previously resolved to a website that purported to offer services associated with the HOUZZ mark and HOUZZ brand, deceiving consumers into believing that the website associated with the disputed domain name was sponsored by, affiliated with, or endorsed by Complainant when that is not, in fact, the case. Complainant adds that bad faith registration and use is further established by Respondent’s prominent use of the Stylised Letter H Logo mimicking Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of a successful online platform dedicated to home remodeling and design and is the owner of a large international portfolio of trademark registrations dating back to as early as 2011 including the following United States registrations claiming use in commerce since 2008:
• U.S. trademark registration HOUZZ registration number 4,124,845, registered on April 10,2012 for services in international classes 35, 37 and 42;
• U.S. trademark registration HOUZZ registration number 4,939,058 registered on April 19, 2016 i for goods and services in international classes 09, 35;
• U.S. trademark registration HOUZZ registration number 4,934,892 registered on April 12 2016 for services in international class 36;
• U.S. trademark registration HOUZZ registration number,151,869 registered on February 28, 2017 for services in international class 25;
• U.S. trademark registration HOUZZ registration number 5,257,346 registered on August 1, 2017 for goods in international class 20;
• U.S. trademark registration HOUZZ registration number 5,658,881 registered on January 22, 2019 for services in international classes 36, 41
• U.S. trademark registration HOUZZ registration number 5,688,556 registered on March 5,2019 for services in international class 42.
In addition, included in Complainant’s portfolio is a number of trademark registrations for a stylised letter “h” device in green (hereinafter referred to as the “Stylised Letter H Logo”) in combination with the word HOUZZ.
The disputed domain name <houzzilla.com> was registered on August 3, 2019.
A privacy service was engaged to conceal the identity of the registrant.
The disputed domain name does not resolve to an active website, but screenshots of the website to which the disputed domain name previously resolved show that the registrant purported to present a service providing expertise in website administration and Internet search engine optimization.
There is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the FORUM’s request for verification of the registration details of the disputed domain name in the course of this Complaint procedure.
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 has provided credible evidence that it has rights in the HOUZZ mark through its ownership of the above-mentioned portfolio of registered trademarks and its rights at common law acquired through the substantial reputation of its mark on Complainant’s home remodeling and design platform to which its domain name <houzz.com> resolves.
While the additional letters “illa” do to some extent change the character of the word, this Panel is satisfied that there is a confusing similarity between the disputed domain name for the purposes of the Policy. In reaching this decision, this Panel is conscious that it is well accepted that the bar in the first element of the test in Policy ¶ 4(a)(i) is not set high, the unique character of the HOUZZ mark and that the disputed domain name incorporates Complainant’s HOUZZ mark in its entirety.
This Panel finds therefore that the disputed domain name is confusingly similar to the HOUZZ mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is undoubtedly familiar with the HOUZZ mark; that Respondent is not commonly known as the disputed domain name or any name containing Complainant’s HOUZZ mark; that the WHOIS information in connection with the disputed domain name makes no mention of the disputed domain name or the HOUZZ mark as Respondent’s name or nickname; that contrary to Respondent’s assertion that the website corresponding to the disputed domain name is associated with “Houzz Certified Advertising and Marketing Specialists,” Complainant has not authorized, certified, or licensed Respondent to use its trademarks in any way; and that Respondent cannot claim to be offering bona fide goods or services because the disputed domain name does not currently resolve to an active website.
In such circumstances the burden of production shifts to Respondent to prove such rights or legitimate interests.
Respondent has failed to discharge the burden and so this Panel finds that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded second element of the test in Policy ¶ 4(a)(ii).
This Panel also finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith because:
It is improbable that the disputed domain name was registered without the registrant’s knowledge of Complainant’s Internet platform and in fact on the balance of probabilities it is most probable that the disputed domain name was registered with Complainant’s mark in mind.
The disputed domain name is inactive but it previously, in September 2019, resolved to what purported to offer administration and Internet search engine optimisation services with a dragon or dinosaur cartoon character. Significantly the website content did not consistently use the name “HOUZZILLA” but also referred to “HOUZZ Marketing” and furthermore used Complainant’s Stylised Letter H Logo as the first letter of the word “houzilla”.
Respondent’s passive use of the disputed domain name in such circumstances allows this Panel to conclude that the disputed domain name is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <houzzilla.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
James Bridgeman SC,
Panelist
Dated: December 10, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page