HomeFinishers, Inc. v. Tom Schutz
Claim Number: FA0208000123928
PARTIES
Complainant
is HomeFinishers, Inc., Downers
Grove, IL (“Complainant”) represented by Brent
E. Ohlmann. Respondent is Tom Schutz, Naperville, IL
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <homefinishers.com>,
registered with VeriSign, Inc.
PANEL
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.
Bruce
E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 29, 2002; the Forum received a hard copy of the
Complaint on September 3, 2002.
On
September 3, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the
domain name <homefinishers.com>
is registered with VeriSign, Inc. and that the Respondent is the current
registrant of the name. VeriSign, Inc.
has verified that Respondent is bound by the VeriSign, 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
September 3, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 23, 2002 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 postmaster@homefinishers.com by
e-mail.
A
timely Response was received and determined to be complete on September 12,
2002.
On September 26, 2002 pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Bruce Meyerson
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
HomeFinishers, Inc., is an Illinois corporation engaged in the business of
selling and installing specialty bath and kitchen products. It has used the
mark HOMEFINISHERS in Illinois since 1989 and registered the service mark
HOMEFINISHERS with the State of Illinois effective August 2000. Complainant contends that Respondent has
established a domain name identical to Complainant’s mark, and prior to this
dispute had not used, or prepared to use, the domain name in connection with
any bona fide offering of goods or services.
Complainant contends that Respondent has never been commonly known by
the domain name. After Respondent
registered the domain name in March 2000, Respondent allegedly contacted
Complainant and offered to sell the domain name registration to
Complainant. Complainant contends that
Respondent has used the site to create confusion with Complainant’s mark.
B. Respondent
Respondent,
Tom Schutz, denies the allegations of the Complaint, calling them “frivolous
and without merit.” Respondent agrees
that it made no use of the domain name, because he acted out of “fear of
retribution and litigation.”
FINDINGS
As
stated, Complainant, HomeFinishers, Inc., is an Illinois corporation engaged in
the business of selling and installing specialty bath and kitchen products. It
has used the mark HOMEFINISHERS in Illinois since 1989 and registered the
service mark Homefinishers
with the State of Illinois effective August 2000. Respondent has never been known by the domain name.
DISCUSSION
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.
Identical and/or Confusingly Similar
The disputed domain name is identical to
a trademark or service mark in which Complainant has rights. The addition of a
generic top-level domain, such as “.com,” is inconsequential to an identical
analysis. See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain “.com”
after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent has
never been known by the domain name or any variant of it. Respondent has made no attempt to contradict
this assertion. Under the
circumstances, Complainant’s allegations must be accepted as true. See Time Out Group v. Jacobson, Case No. D2001-0317 (WIPO May 7, 2001).
Other than stating that it abandoned its
plans to use the domain name after this dispute arose, Respondent has not
demonstrated any bona fide use whatsoever with respect to the domain name. The
passive holding of a domain name for over two years without providing any
demonstrable plans or preparations to use the domain name fails to establish rights
or legitimate interests. See Flor-Jon
Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding
that Respondent’s failure to develop the site demonstrates a lack of legitimate
interest in the domain name); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares
its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to
show 1) ‘demonstrable’ evidence of such preparations to use the domain name,
and 2) that such preparations were undertaken ‘before any notice to
[Respondent] of the dispute’”).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant contends that Respondent,
subsequent to its registration of the domain name, contacted Complainant and
offered to sell its rights in the domain name. Because Respondent has not
established any rights or legitimate interests in the domain name it is evident
that it registered the <homefinishers.com> domain name based on
the goodwill associated with Complainant’s mark. The aforementioned
circumstances indicate that Respondent has registered the domain name primarily
for the purpose of selling the domain name registration to Complainant; thus,
Respondent’s actions constitute bad faith pursuant to Policy ¶ 4(b)(i). See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO
Nov. 27, 2000) (finding that a failure to use the domain name in any context
other than to offer it for sale to Complainant amounts to a use of the domain
name in bad faith).
Additionally, the WHOIS information
indicates that Respondent registered the subject domain name on March 10, 2000.
Previous panels have determined that the passive holding of a domain name for
over two years satisfies a finding of bad faith registration and use under
Policy ¶ 4(a)(iii). See DCI S.A.
v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Mondich
& Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16,
2000) (holding that Respondent’s failure to develop its website in a two year
period raises the inference of registration in bad faith); see also LFP,
Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002)
(recognizing that in certain instances excusable delays will inevitably arise,
but noting that those delays must be quantifiable and limited; they cannot
extend indefinitely).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements required under
ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <homefinishers.com>
domain name be TRANSFERRED from Respondent
to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 10, 2002