National Arbitration Forum

 

DECISION

 

CasaUSA Holdings LLC v. Samir Dichy

Claim Number: FA0908001278776

 

PARTIES

Complainant is CasaUSA Holdings LLC (“Complainant”), Illinois, USA.  Respondent is Samir Dichy (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <casausa.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

FERNANDO TRIANA, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 12, 2009.

 

On August 11, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <casausa.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 2009 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@casausa.com by e-mail.

 

A timely Response was received and determined to be complete on September 3, 2009.

 

On September 10, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed FERNANDO TRIANA, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.                 Complainant

 

This Complaint is based upon Complainant’s use and ownership of the “CasaUSA” trademark in connection with real estate affairs and mortgage brokerage services in the Commonwealth of Illinois, United States of America.

 

In that sense, Complainant’s basic contentions are as follows:

 

1.       The domain name that Respondent registered <casausa.com>, is confusingly similar to Complainant´s mark “CasaUSA”, granted on behalf of Complainant by the United States Patent and Trademark Office, (USPTO) back in June 30, 2009, vindicating first use in commerce on December 1, 2007. Likewise, Complainant states that the domain name in dispute is identical to Complainant’s domain names <casausa.us>, <casausa.biz>, <casausa.info> and <casausa.org>.

 

2.       Respondent has no rights to or legitimate interests in the domain name <casausa.com>. Likewise, the Respondent has neither known rights nor a legitimate interest in the Domain Names in dispute. Furthermore, Complainant submits that Respondent would infringe upon Complainant’s federally protected right to the name, if Respondent were to use the domain name in commerce in connection with real estate or mortgage services. Moreover, Respondent is currently conducting his real estate business with a corporation named REAL ESTATE PROPERTIES in Miami Beach – Florida and given Complainant’s federally protected rights to the name, would be precluded from using it in commerce.

 

3.       Respondent registered the domain name <casausa.com> in bad faith. Respondent registered the domain name on May 4, 2002 and as of the date hereof has not used it in Commerce and regardless of some purchase offers made by Complainant, Respondent has declined and rejected each and every single one of them.Respondent has registered the domain name with the intent to sell it for considerably more than the effective expenses incurred in its registration.

 

The Complainants requests that the Panel issues a decision that the domain name be transferred.

 

B. Respondent

 

Respondent states that he has owned the domain name <casausa.com> since May 4, 2002 and furthermore, that Complainant has stolen his domain name idea and initiated a business with it.

 

Respondent is a registered Real Estate Agent in Florida, United States of America since 2000 and has offered his services to particular groups with the domain name in dispute along to the following domain: florida2u.com. His company has been using said domains and has likewise incurred important expenses of approximately USD $15,000.00. This amount of money was ultimately offered to Complainant after a chain of offers initated by Complainant itself with the purpose of acquiring the domain <casausa.com> of Respondent.

 

Respondent affirms that he has refrained from using the domain name in dispute in order to conduct his business, as far as he is part-owner of the corporation REMAX BEACH FRONT PROPERTIES, to whom he has a binding contractual obligation which forbids him to somehow commercially compete with said company by means of another business entity or corporation.

 

Respondent likewise argues that he has not yet operated the domain name <casausa.com>  is due to the ruinous situation in which the Real Estate market has been since approximately 3 years ago.

 

FINDINGS

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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Likewise, paragraph 10(d) of  “The Rules”, provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”

 

In the present case, the Panelist wants to place emphasis in the importance of the evidence filed by Complainant and Respondent to prove its assertions, which has been studied to determine its relevance and weight in arriving a decision.

 

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 names registered by the Respondent are identical 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;

 

(3)      The domain name has been registered and is being used in bad faith.

 

DISCUSSION

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 first element of the paragraph 4 (a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.

 

Complainant contends that the Domain Name is identical with and confusingly similar to the trademarks CasaUSA pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the same with the addition of a generic or merely descriptive term.[1] 

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

In fact, Complainant has provided evidence of a registration Nº 3.648.281 for the CasaUSA mark in the United States of America dated June 30, 2009, as well as effective use of it in the pertaining commerce, since December 2007. On this regard, the Panel finds that Complainant has sufficient rights in the CasaUSA mark and that such rights date back to the mark´s filing date with the USPTO.[2]

 

The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[3]. Complainant´s trademark appears to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services.

 

Moreover, the addition of the generic top-level domain “.com” is irrelevant, as irrelevant is the inclusion of a an symbolic element within the trademark compound due to its figurative nature which is weak when compared or charted with the nominative expression CasaUSA. Bearing in mind the above, the Panel finds that the disputed domain name is identical to Complainant´s mark under Policy 4(a)(i).[4]

 

Respondent has the burden of refuting this assumption[5] and in this case, it has failed to contest Complainant's assertions regarding its trademark rights. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights of the cited trademark.

 

Before establishing whether or not the disputed domain name is confusingly similar to the Complainant’s registered trademark, the sole panelist wants to point out that the entirety of the mark CasaUSA is included in the Respondent Domain Name <casausa.com>.

 

At this point, it is essential to set forth that the domain name in dispute is essentially identical and confusingly similar with Complainant´s trademark “CasaUSA” duly proven within this administrative procceeding. The domain name contains Complainant´s entire trademark. Moreover and as previously announced, it differs from Complainant´s trademark by only the inclussion of a graphic “rombo”, which can not be compared to the force of the nominative elements included within the mark itself. In that sense, it is clear that the existence of the referenced figure does little to avoid the risk of confusion as the Respondent´s domain name remains virtually the same and almost identical in appearance and impression to the trademark “CasaUSA” of Complainant.

 

In view of the foregoing, the sole Panelist concludes that this evidence establishes Complainant’s rights in the “CasaUSA” trademark for purposes of Policy ¶ 4(a)(i). This because ICANN panels have recognized that reproducing a trademark in its whole is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark; indeed, the addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant's registered trademark.

 

Rights or Legitimate Interests

 

Paragraph 4(c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’ s rights or legitimate interest to the domain name:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

 

Before shifting the burden to Respondent, 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).

 

Notwithstanding the fulfillment of the first element of paragraph 4 (a) of the Policy, the Panel finds that Complainant has failed to make a prima facie showing that Respondent lacks rights to the Domain Name in dispute.  The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.  Here, Complainant has alleged that Respondent does not own any rights in the term CasaUSA, and that Respondent has not used the domain name in dispute since originally registered. 

 

Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the burden of production shifts to the Respondent to come forward with evidence of its rights to or legitimate interests in the domain name.  As explained in Document Technologies, Inc. v. International Elec. Communications Inc., D2000-0270 (WIPO June 6, 2000):

 

This “burden shifting” is appropriate given that Paragraph 4(c) of the Policy, which is entitled “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name.  The burden of proof, however, does not shift as the Policy makes clear that “the complainant must prove that each of these three elements are [sic] present.” 

 

Nevertheless, the Panel agrees with the statements of Respondent, mainly on the following grounds:

 

·                    Respondent argues that it is a registered real estate agent in the Florida since 2000 (Florida Agent #690,712) and that he is part owner of REMAX BEACH PROPERTIES.

 

·                    Respondent asserts it uses both the disputed domain name and the <florida2u.com> domain name in connection with its idea to market services to particular groups. 

 

·                    Respondent argues that it has spent $15,000 on marketing through the disputed domain name, and that it is maintaining the disputed domain name for future use when the real estate market reappears. 

 

·                    Finally, Respondent contends that Complainant stole Respondent’s business idea well after Respondent obtained the disputed domain name.

 

The Panel finds that Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), factually shown not only through the registration itself of the domain name in dispute, but also including it as an element of its professional development as shown in the following example:

 

 

 

 

Due to the foregoing, the Panel considers that Respondent is indeed holding and elaborating a serious and consistent business plan demonstrating the Respondent's preparation to use the domain name in connection with a bona fide offering of goods or services which therefore is sufficient to establish a legitimate interest in the disputed domain name.[6]

 

Furthermore, Respondent argues that it did not seek to sell the disputed domain name upon Complainant’s offers, but that it felt that the repeated offers merited a good faith analysis of expenditures in furtherance of the disputed domain name, which totaled USD $15,000.  On this particular regard, the Panel concludes that it was Complainant who constantly addressed Respondent in order to seek for a potential economical arrangement for transferring the disputed domain. There is no evidence whatsoever that could lead this Panel at least to presume that Respondent was interested in registering the domain name for afterwards offering it to Complainant. As a matter of fact, Respondent does not lack rights or any legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In view of this, this Panel considers that the foregoing situation by means of which Complainant firstly offered amounts of money for the disputed domain towards Respondent, is a suitable and appropriate circumstances under which the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy).[7]

 

Respondent contends that it registered the disputed domain name on May 4, 2002.  The Panel also finds how Complainant does not assert rights in its mark prior to 2007 when it first used the mark in commerce.  Thus, the Panel finds that Respondent does not lack legitimate interests in the disputed domain name under Policy as per simultaneously Respondent does have a legitimate interest in the domain name where it did register the domain name for a legitimate purpose prior to Complainant’s application for registration of the mark and due to the fact that Complainant has not proven any earlier use of the mark.[8]

 

Finally, but not least relevant, the Panel also wants to point out that after making an ex-officio investigation upon the related domains <casausa.info>, <casausa.org> and <casausa.biz>, owned by Complainant, it was found that all of them immediately readdress and forward the Internet consultant to the domain <casausa.us>, which is the main domain used by Complainant to develop its business, as shown below:

 

 

 

 

In connection to the above and in accordance with Paragraph 4(c) of the Policy, it is clear for this Panel that the generic domain in dispute <casausa.com>, is not definitively and inexcusably required by Complainant in order to adequately develop its commercial activity as per it is not in anyway blocked, obstructed or diverted by Respondent to its website controlled under the domain name in dispute.

 

Furthermore, after making an additional exploration by means of the web searcher “Google”, and as a logical conclusion of the current unavailability of the domain in dispute, the Panel noticed that there is no possible way for consumers or public in general to become confused between the services offered by both parties as far as casausa.com is not found in the net as shown ahead:

 

 

 

Accordingly, Complainant has not succeeded in showing that Respondent lacks a legitimate interest in the Domain Name and thus has failed to satisfy the requirements of paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent has acted in bad faith. The sole panelist has considered the fact that Complainant has failed to evidence its assertion as per it did not provide substantial evidence that could ultimately show that Respondent lacks of legitimate rights or interest in the disputed domain names.

 

According to paragraph 4(b) of the Policy the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

 

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

The Panel wants to clarify that it is most of the times quite difficult, to actually show bad faith, at the time of registration and/or use, with concrete evidence. While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith. This Panel’s understanding of the Policy is that the initial burden to prove Respondent’s bad faith in the registration and the use of the disputed domain name relies squarely on the shoulders of Complainant, by pointing out at least a prima facie case, and once it has done so, it is then incumbent upon Respondent to either justify or explain its business conduct (if not to demonstrate the contrary).[9]

 

            In the present case the Panel has found that Complainant used again the same  arguments explained under the “Rights or Legitimate Interests” chapter, by emphasizing that Respondent primarily intended for the sale of the disputed domain name while registering it and afterwards, and moreover, that Respondent has not made active use of the disputed domain name since May 4, 2002.

 

First and foremost, the Panel considers that Complainant is making general and unsubstantial allegations regarding the assumed real feeling and/or intention of Respondent when registered the disputed domain 7 years before the mark “CasaUSA” was duly registered, without supporting said assertions on factual and evidential grounds. The need of proving bad faith registration and/or use is a key component of the Policy.  That is because the Policy is not intended as a method of resolving all domain name disputes; rather, it was designed to prevent only a particular type of abusive cybersquatting characterized by bad faith conduct on the part of the registrant.[10] 

 

Because proving bad faith is so important to a finding of abusive cybersquatting under the Policy, it is incumbent upon Complainant to adduce factual evidence affirmatively demonstrating the Respondent’s bad faith.  Proving bad faith is thus very different from proving that a Respondent lacks a legitimate interest.  As discussed above, Complainant may be able to satisfy its burden under the second factor, and cause a shift in the burden of production, by making bald factual allegations that track the Policy. In contrast, when it comes to the third factor, the burden is squarely on the Complainant to come forward with evidence – that is, facts – proving that the respondent is guilty of bad faith. 

 

Those facts are missing from the instant Complaint.  Indeed, as a review of Complainant’s allegations shows, rather than present factual evidence proving Respondent’s bad faith, Complainant does little more than repeat back the standards in the Policy and pronounce (without convincing explanation) that “Respondent’s registration and lack of use of the disputed domain name is ‘indicative’ of bad faith.”  Such conclusory allegations cannot sustain a Complainant’s burden of proving bad faith registration and use.

 

Even though these foregoing findings would be enough to dismiss the relief pursued in the Complaint, it is important to set forth the following criteria:

 

·        After evaluating the assertions made by the parties along with the evidence provided, the Panel concludes that Respondent was not under legal requirement to foresee that Complainant was going to build a business organization upon the mixed expression CasaUSA. Even if Respondent did know or somehow held any relation with Complainant in the past, the regular and ordinary registration of the domain name in dispute is older than the registered trademark “CasaUSA” of Complainant, which constitutes a clear presumption in favor of the good faith of Respondent, and thus, it is very clear for this Panel that Complainant was not able to find any circumstantial evidence showing the alleged bad faith of Respondent.

 

·        The Panel also deems as important to mention that  the words “casa” and “usa”, included within the disputed domain name, constitute a fusion of 2 words in Spanish and English languages correspondingly, evoking and/or meaning “HOUSE-HOME-U.S.A.=UNITED STATES OF AMERICA”. The above situation is very well supported by the assertion made by Respondent, consisting on the fact that he has Latin-American origin and personal contacts and consequently he focuses his professional market by approaching among others, the Latin community domiciled in the State of Florida, United States of America. The prior implies that Respondent did create the domain name with a clear purpose of addressing a particular and targeted purpose: reaching Latinos in Florida interested in somehow acquiring real estate assets.

 

·        Moreover, it is clear for this Panel that Respondent has not yet made effective use of its domain name not only for the current and factual situation of the real estate market in the United States of America, but also, due to the binding effect that upon his conduct has the Contract that Respondent executed with the corporation named REAL ESTATE PROPERTIES which prevents and bans him from commercially competing by any way with said corporation. The foregoing matter constitutes an evident case of force majeure[11] in favor of Respondent and whose effect is to legally excuse the lack of use of the disputed domain name.  

 

·        The Panel finds that Respondent did not primarily intend for the sale of the disputed domain name at the time of the registration and beyond, Respondent did not engage in bad faith registration or use under Policy under this circumstance. Essentially for this reason, the Panel concludes that Respondent never approached Complainant with an offer to sell the name; rather the Complainant sought to purchase the name in 2 different opportunities and Respondent said that it had valued the disputed domain name on its books at $15,000.  Even if this statement was an implied counter-offer to sell the name to Complainant in connection with a showing of bad faith it is important to note that it was Complainant who initially approached Respondent about the sale.[12]

 

·        In light of the above, the Panel believes that the current administrative proceeding which is being decided in this ruling, is not the suitable path pursuing the transfer of the disputed domain name free of charge. Nevertheless, if both Complainant and Respondent are willing to make a financial settlement, it is logically allowed for Complainant to seek negotiations with Respondent, seeking the ultimate purchase of the domain <casausa.com>.

 

In light of these conclusions, the Panel’s finds that, on balance, Complainant has not met its initial burden in regards to the third element, and that Respondent has succeeded in adequately rebutting it, as the nature of its usage points out to use in good faith. The Panel finds that based on the totality of circumstances and evidence submitted, Respondent’s registration and use of the disputed domain name is not indicative of bad faith under ICANN Policy ¶ 4(a)(iii).

 

DECISION

Complainant having failed to establish two elements required under the ICANN Policy, the Panel concludes that administrative relief shall be DENIED.

 

Accordingly, it is ordered that the <casausa.com> domain name remains under the ownership of Respondent.

 

 

 

FERNANDO TRIANA, Esq. Panelist.

Dated: September 21, 2009.

 

 

 

National Arbitration Forum