Homrich, Inc. v. Akm Rahman a/k/a A Rahman
Claim Number: FA0807001213608
Complainant is Homrich, Inc. (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <homrich.com>, registered with Godaddy.com, Inc., and <homrich.net> and <homrich.org>, registered with Enom, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 8, 2008.
On July 3, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <homrich.com> domain name is registered with Godaddy.com, Inc., and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 July 3, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <homrich.net> and <homrich.org> domain names are registered with Enom, Inc., and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 July 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 6, 2008 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, firstname.lastname@example.org, and email@example.com by e-mail.
A Response was received on August 6, 2008. The Response was deemed deficient pursuant to ICANN Rule 5 because it was not received in hard copy prior to the Response deadline.
On August 13, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends as follows:
Homrich is incorporated in the state of
Homrich Inc. has been an active leader in the Construction Association of Michigan and National Association of Demolition Contractors since 1964.
Homrich Inc. was contracted for a long-term project in the
Respondent has solicited Complainant for purchase of the at-issue domain names at prices grossly overvalued. Submitting an appraisal of <homrich.com> in excess of $250,000.00.
Respondent contends as follows:
Complainant is not the owner of the trademark or servicemark. Homrich Wrecking Company, and also the d/b/a Homrich Inc., are not registered with the USPTO.
Homrich Wrecking Inc. is not
Homrich Inc. Complainant’s corporation name is Homrich Wrecking Inc. d/b/a
Homrich Inc. Homrich Inc. is the assumed
name of Homrich Wrecking Inc. Complainant’s assumed name, Homrich, Inc., was
terminated. The State of
Respondent never solicited to sell
the domain <homrich.com> to Complainant or anyone. The domain is not for sale and was never
posted on any website for sale. The e-mail
provided by Complainant is not the <homrich.com> administrative
contact. Complainant communicated the e-mail contemplation [sic] to be related
to Respondent’s domain name or with bad faith by Complainant to acquire the
domain name because part of Complainant’s company name is Respondent’s domain
Respondent has never been employed by
Complainant’s domain <homrichinc.com> was registered on April 22, 2002, 4 years after Respondent’s domain.
Respondent’s domain name <homrich.com> was acquired almost 10 years ago, on October 25, 1998. The <homrich.com> domain name was registered because it corresponded with Respondent’s nickname. Respondent loved to see his site on <homrich.com>. Respondent never intended to register <homrich.com> for disrupting or competing with Complainant’s company.
Respondent registered <homrich.com> on October 25, 1998.
Respondent never had any intention to register the domain <homrich.com> in bad faith. Respondent’s site <homrich.com> is not in conflict with Complainant’s company website or any of Complainant demolition-related activity. Also, Respondent never solicited Complainant’s company for advertising on <homrich.com>. Respondent’s <homrich.com> is a search engine (Google.com Partnership) news and shopping site. Respondent never intentionally attempted to attract Internet user to his site for commercial gain or to create a likelihood of confusion with the Complainant’s company.
Complainant has been trying to transfer the at-issue domain name to its possession in bad faith.
The Panel finds that Complainant has rights in the HOMRICH mark; that the disputed domain names are identical to this mark; that Respondent lacks rights or legitimate interests in respect of the at-issue domain names; and that Respondent registered and is using the at-issue domain names in bad faith. The Panel also finds that Respondent has falsified part of his Response contrary to the certification he subscribed to therein.
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.
As a first preliminary matter, Respondent has provided a Response that was deficient because a hard copy of the Response was not received prior to the Response deadline. The Panel may decide whether or not to consider Respondent’s submission because it is not in compliance with ICANN Rule 5. The Panel sees no compelling reason not to consider the Response simply because of a formal defect when, as here, there is no prejudice to the opposing party. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
As a second preliminary matter, while Complainant has identified three (3) domain names as the subject of its Complaint, Respondent only addresses the <homrich.com> domain name in his Response. Nevertheless, since the top level domain name is not material to the arguments made by the parties, and since the top level domain name is almost universally disregarded for the purpose of UDRP proceedings, the Panel applies Respondent’s arguments to each domain name, rather than limiting such arguments to <homrich.com>.
Complainant does not hold a trademark registration for HOMRICH or Homrich, Inc. However, Complainant establishes rights in these mark by demonstrating common law rights pursuant to Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant’s business operates under the name of Homrich Inc. and “has been an active leader in the Construction Association of Michigan and National Association of Demolition Contractors since 1964.” HOMRICH as well as Homrich, Inc. appear to be used in commerce to identify Complainant as the source of certain wrecking and demolition services.
Complainant is incorporated in the
Each of the at-issue domain names, <homrich.com>, <homrich.net>,
and <homrich.org> is
identical to Complainant’s HOMRICH mark under Policy ¶ 4(a)(i).
Each at-issue domain names contains
Complainant’s mark in its entirety with the addition of the generic top-level
domain. It is well settled that this
addition does not distinguish a domain name under the Policy. See Towmaster, Inc. v. Hale, FA
973506 (Nat. Arb. Forum June 4, 2007) (“The
panel finds that Respondent’s <bigtow.com> domain name is
identical to Complainant’s BIG TOW mark pursuant to Policy ¶ 4(a)(i) because
the disputed domain name contains Complainant’s mark in its entirety and adds
the generic top-level domain (“gTLD”) “.com”).
if we assume that Complainant claims rights in
Homrich, Inc., (rather than HOMRICH) the domain names are nevertheless
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See WestJet
Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20,
2001) (finding that the <westjets.com> domain name is confusingly similar
to the complainant’s mark, where the complainant holds the
Under paragraph 4(a)(ii) of the Policy, Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must then demonstrate that he nevertheless has rights or legitimate interests in the at-issue domain names.
There is no indication in the record that Complainant authorized Respondent to use the at-issue domain names or that Respondent is either affiliated with or commonly known as HOMRICH or Homrich, Inc. The WHOIS information identifies Respondent as “A. Rahman” and his Response is signed by “Akm Rahman.” Therefore, Complainant has met its slight burden.
Respondent claims that he is using the domain name for a bona fide business use implying that he has rights in the domain name(s) pursuant to Policy ¶4(c)(i). However, as shown below, Respondent registered and is using the at-issue domain names in bad faith. Therefore, Respondent’s use is not bona fide and Respondent cannot demonstrate that he has rights or interests in the at-issue domain names. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
The parties offer conflicting accounts
regarding the registration and use of the at-issue domain names. Complainant asserts that Respondent (or his agent)
tendered transfer of the at-issue domain names to Complainant for an amount far
in excess of the registration fees.
Respondent claims that some other party tendered the sale of the domain
name and therefore there is no adverse inference created under Policy ¶
Complainant suggests that Respondent became aware of Complainant’s trade
name while both parties were working at
HOMRICH is not a generic name nor is it descriptive of Complainant’s services or any other services or goods for that matter. Rather, HOMRICH appears to also be the surname of a principal (or former principal/president) of Complainant’s corporation. As shown below, it defies credulity to hold that Respondent randomly registered the three (3) HOMRICH domain names or that Respondent was otherwise motivated by benign intentions.
Respondent’s explains that he registered the at-issue domain name <homrich.com> because it was his nickname. The Panel extends this explanation to the registration of the other at-issue domain names. However, the Panel is unaware of anyone having the nickname “HOMRICH” and Respondent presents no evidence that corroborates this overtly self-serving assertion concerning Respondent’s motivation in registering the <homrich.com> domain name. Indeed, Respondent’s explanation appears quite fantastic.
Moreover, the fact
that both parties hail from the same
It would be a small matter for Respondent to have a friend or agent act on his behalf to attempt to sell the at-issue domain names to Complainant, and Respondent’s incredible yarn about registering the domain name because it was his nickname reflects most adversely upon Respondent’s veracity. The Panel has little reason to believe the conclusory assertions Respondent makes in his Response, including the statements distancing him from the e-mail offer to transfer the at-issue domain names to Complainant for a fee. The Panel concludes that Respondent has registered and is using the domain names in bad faith under Policy ¶4(b)i. To the extent that the registration of the three (3) at-issue domain names presents a pattern of registration to prevent Complainant from reflecting its mark in corresponding domain names, Respondent also exhibits bad faith behavior under Policy ¶ 4(b)(ii).
Finally, the particular bad faith grounds enumerated in the Policy are not exclusive. The Panel finds that Respondent has falsified parts of his Response contrary to his signed certification that the information contained therein is “complete and accurate” to the best of his knowledge. This failing further evidences Respondent’s bad faith registration and use of the at-issue domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homrich.com>, <homrich.org>, and <homrich.net> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 26, 2008
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