Meredith Corporation v.
Claim Number: FA0708001067637
Complainant is Meredith Corporation (“Complainant”), represented by Lisa
C. Walter, of Faegre & Benson, LLP, 3200 Wells
Fargo Center, 1700 Lincoln St., Denver, CO 80203-4532. Respondent is Texas International Property Associates
- NA NA (“Respondent”), represented
by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bhgrealty.com>, registered with Compana, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 27, 2007.
On September 10, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <bhgrealty.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 4, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on October 4, 2007.
A timely Additional Submission was received on October 10, 2007 in accordance with the Forum’s Supplemental Rule 7.
On October 15, 2007, a timely Objection and Reply to Complainant’s Additional Submission was received in accordance with the Forum’s Supplemental Rule 7.
On October 15, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it is a leading media and publishing company that holds numerous US Trademark Registrations for the marks Better Homes & Gardens and BH & G covering a broad range of goods and services including real estate brokerage services. Complainant also contends that Respondent is not and has never been a licensee of Complainant and was not commonly known by BH&G. It is also asserted by Complainant that the domain name <bhgrealty.com> is not being used in connection with a bona fide offering of goods and services, but rather is being used to misdirect consumers and to divert them to competitive third party websites. Still further, it is contended that the <bhgrealty.com> was registered with at least constructive notice of Complainant’s trademarks and is an infringement thereof being confusingly similar to Complainant’s marks to an extent that the public will believe that the website at <bhgrealty.com> is somehow authorized, sponsored, approved or endorsed by Complainant.
Respondent asserts that BHG is a commonly used letter combination numerous parties and that Complainant’s use of the BH&G mark is not so well known that the public would associate the domain <bhgrealty.com> with Complainant given the numbers of parties that are using that letter combination without the ampersand (&), which forms part of Complainant’s mark. Respondent also contends that it has rights and a legitimate interest in the domain <bhgrealty.com> since its use of the domain name as an internet portal with search functions and advertisements is a legitimate business and does not specifically target Complainant. Furthermore, Respondent asserts that Complainant has failed to proffer evidence that demonstrates that respondent was acting in bad faith when it registered the domain <bhgrealty.com>, and that it is being used in bad faith.
C. Additional Submissions
In its additional submission, Complainant indicates that it established a prima facie case in its Complaint that shifted the burden of proof to Respondent to establish that it has rights and legitimate interests in the domain, and that this burden has not been met by Complainant. Complainant also asserts that Respondent is a known cybersquatter.
In its additional submission responding to that of Complainant, Respondent contends that Complainant’s additional submission is outside of the scope of the UDRP rules and Supplemental rules so that it should not be considered. Respondent also contends that, even if Complainant’s additional submission is properly considered, it amounts to an attempt at character assassination based on cases in which no findings were rendered and where all transfers were voluntary.
Given the Respondent’s objection to Complainant’s Additional Submission and the fact that nothing therein affects the decision below, without ruling on the propriety thereof, Complainant’s Additional Submission has not been taken into consideration.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant asserts rights in the BH&G mark through its registration of the mark (Reg. No. 1,137,368 issued July 1, 1980) with the United States Patent and Trademark Office (“USPTO”). The Panel finds that this sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that Respondent’s <bhgrealty.com> domain name is confusingly similar to Complainant’s BH&G mark, because the disputed domain name merely omits the ampersand in the mark, adds the generic term “realty,” which is descriptive of an aspect of Complainant’s business, and adds the generic top-level domain “.com.” The Panel finds that these alterations of Complainant’s BH&G mark do not sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <bhgrealty.com> domain name is confusingly similar to Complainant’s BH&G mark pursuant to Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
While Respondent contends that the <bhgrealty.com> domain name is comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i), as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. Furthermore, a review of the evidence presented by Respondent reveals no third party registrations using the letters “bhg” for goods or services even remotely related to realty services, such that they are considered not to have any bearing on the distinctiveness of Complainant’s registered trademarks for such services. A mere printout of company names is not considered probative of the actual use being made of the letters “bhg,” let alone as a source of realty related goods and services.
The Panel is cognizant of the fact that 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), before the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that, because Respondent’s WHOIS information indicates that Respondent is “Texas International Property Associates,” Respondent is not commonly known by the <bhgrealty.com> domain name. Complainant further contends that there is no additional evidence in the record to suggest that Respondent is known by the disputed domain name, and that Respondent is not, and never has been, a licensee of Complainant. Based on these contentions, the Panel concludes that the burden shifted to Respondent to establish that it had rights and legitimate interests in the <bhgrealty.com> domain name pursuant to Policy ¶ 4(c)(ii) and that Respondent has failed to meet that burden. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Furthermore, Complainant alleges that Respondent is using the <bhgrealty.com> domain name to redirect Internet users to a website featuring links to third-party websites that provide real estate-related goods and services in direct competition with Complainant, and that Respondent receives commercial gain through these links. Thus, the Panel finds that such use does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Complainant contends that Respondent is using the <bhgrealty.com> domain name to redirect Internet users to a website displaying links in competition with Complainant’s realty business. The Panel finds that this constitutes a disruption of Complainant’s business and indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
In addition, Complainant alleges that Respondent benefits commercially from the links displayed on the website that resolves from the <bhgrealty.com> domain name. Complainant argues that Internet users, seeking Complainant’s business, may be confused as to Complainant’s affiliation with the disputed domain name. The Panel finds that this use of the disputed domain name to redirect Internet traffic for the benefit of Respondent also indicates Respondent’s bad faith registration and use of the <bhgrealty.com> domain name under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bhgrealty.com> domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: October 24, 2007
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