HomeAway.com, Inc. v. Name Administration Inc. (BVI)
Claim Number: FA0909001283498
Complainant is HomeAway.com, Inc. (“Complainant”), represented by Peter
Kennedy, of Graves, Dougherty, Hearson & Moody,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homeawayfromhome.com>, registered with Iregistry Corp.
The undersigned certifies that he and the other panelists have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Louis E. Condon
G. Gervaise Davis III
Daniel B. Banks, Jr., as Panelists
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
A timely additional submission was submitted by Respondent and was considered.
On October 16, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Louis E. Condon, G. Gervaise Davis III and Daniel B. Banks, Jr., as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns federal trademark registrations for the HOME AWAY FROM
HOME AWAY FROM HOME has become distinctive of the services of Complainant through substantial and exclusive use of that name in commerce for almost 50 years. The website is extremely popular and well-known. For almost 19 years, Complainant and its legal predecessor have used the trademark HOME AWAY FROM HOME to identify its website and rental services. It has become a famous trademark in common law and carries valuable good will, high consumer recognition, distinctiveness and secondary meaning.
Respondent registered the disputed domain name on or about October 5, 1999 and operates a website at that address. The disputed domain name is identical and/or confusingly similar to Complainant’s registered trademark. Respondent is using the mark on its website in connection with its services. Such use is causing consumer confusion to the severe detriment of the Complainant.
The Respondent registered the disputed domain name without the permission of Complainant. It came more than 35 years after Complainant began using the mark and more than 15 years after the USPTO issued a federal registration for the mark. These facts show that Respondent has no rights or legitimate interests in the disputed domain name.
The domain name was registered and is being used in bad faith. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. From the context of the site, it is clear that Respondent is deriving, or attempting to derive, revenue from the operation of the site. This demonstrates bad faith.
Respondent uses the site to redirect users to Respondent’s commercial website featuring links to competing services. This constitutes disruption of a competitor and shows bad faith registration and use.
Respondent has failed to respond to three cease and desist letters from Complainant and has continued to use the domain name in bad faith.
This dispute raises a question as to whether a recent naked purchase of a relatively narrow US Trademark Registration, absent supporting evidence of underlying use by the Complainant or the Assignor, is a sufficient basis for asserting a monopoly in a common expression used in connection with the subject matter to which its primary non-trademark meaning pertains.
The first criterion required to be proven by the Complainant is that the domain name
is identical or confusingly similar to a trade or service mark in which the Complainant has rights. In support of this element, the Complainant has produced US TM Reg. No. 1,152,761, for “HOME AWAY FROM HOME” in connection with the service of “Rental of Temporary and Permanent Living Quarters to Others”. The Complainant mischaracterizes the services for which the registration was issued by including “hotel services” at page three of the Complaint, and as “vacation rental properties” at page four of the Complaint. Neither of these things are recited in the registration document which the Complainant purchased in 2007, some eight years after the domain name was created, and several years after the domain name was acquired by the Respondent.
Complainant provides no evidence of any use of the disputed term as a trade or service mark and no evidence of such use by the party which sold the registrations to Complainant. Complainant’s Exhibit 4, which the Complainant shows as its website confirms the absence of any use of the term “HOME AWAY FROM HOME”. A mark ceases to be enforceable against others when it loses its significance as an indication of the origin of goods sold by and associated with the mark owner.
The Complainant has shown an “assignment” of the federal registration but has made no showing of how it claims to use the mark or how it was used by the “assignee”. The mere purchase of a trademark registration without continuity of use does not confer an enforceable trade or service mark right.
The disputed domain was originally
registered in 1999. It was purchased for
$1,400 by Respondent in 2005 at a public auction held after the lapse of registration. This was before Complainant acquired its
homeaway.com domain name and long before the recent purchase of the trademark
registration. WHOIS shows the disputed
domain name had previously been registered by a “Home Away From Home Rental
The second criterion required to be proven by the Complainant is that the Respondent
lacks legitimate rights or interests in the domain name. This criterion is not limited to trade or service mark rights, but includes equitable interests such as expectation and reliance interests implicated by the use of the domain name prior to notice of a dispute in connection with a bona fide offering of goods and services. The Policy expressly states that bona fide use of the domain name prior to notification of a dispute constitutes a legitimate interest.
The Respondent is charted in the
The common term “home away from home” is a casual reference to vacation locations as opposed to residential locations. Complainant does not use the term as a mark or otherwise in connection with hotel or resort rentals but many other parties do. Exhibit C is a list of 9 such uses and Respondent can provide hundreds more.
The term at issue is a common phrase and the Complainant does not own a monopoly in the term. There is a question of the scope of Complainant’s rights, if any, afforded by the Complainant’s purchased registration. Exhibit E shows 5 U.S. Trademark Registrations incorporating the phrase demonstrating that the Complainant’s rights, if any, must be narrowly construed. Use of a common phrase or term in connection with relevant search results is a legitimate activity. Use of domain name constituting a common phrase in association with the information denominated or suggested by the domain name is not an illegitimate use. Respondent was using the domain name prior to any time at which the Complainant has shown itself to be engaged in the provision of goods or services whatsoever in the mark.
Complainant has failed to demonstrate Respondent’s use of the domain name prior to notice of a dispute has been illegitimate. Respondent acquired the disputed domain name prior to Complainant’s acquisition of its domain name.
The final criteria required to be proven by the Complainant is that the domain name
was (a) registered in bad faith, and (b) used in bad faith by the Respondent. The bad faith element is directed to an inquiry into why the Respondent registered this domain name. Did the Respondent register the domain name with an intent to target or usurp the goodwill of the Complainant, or was the Respondent motivated by an independent intent, unrelated to the Complainant.
The Complaint demonstrates no evidence of use of the term as a mark by the Complainant or its predecessor prior to registration of the domain name by the Respondent. In fact, the Complainant has used robots.txt to block access to the history of the Complainant’s website. Attached as Exhibit F is a printout of an attempt using the Internet Archive to determine what, if anything, was being done at the Complainant’s claimed website in late 2005, when the domain name was registered by the Respondent. Access to the entire history of the Complainant’s site is deliberately blocked by the Complainant.
The Archive results for the disputed domain name, as of October 2005, just prior to registration by the Respondent, (also Exhibit F) shows the page to be a Network Solutions “expired domain page” including advertisements for vacation rentals (as indeed the domain name has been used for much of its history dating back to 1999 when it was created). This blocking is relevant because “bad faith” on the part of the domain registrant is to be assessed at the time of registration. It cannot be determined what Complainant was doing in October 2005 when the disputed domain name expired.
The remainder of the Complainant’s argument under “bad faith” amounts to pique at not
having received responsive communications from the Respondent. Respondent is under no obligation to reply to any communications from Complainant.
Complainant has not established facts which
the Respondent knew or should have known at the time the domain name was
registered which evince a bad faith intent in the registration and use of the
disputed domain name. The asserted
does not provide booking, leasing, or rental services of any kind, and generally advertises
subject matter with which the phrase, apart from any of numerous marks registered to various entities, has long been associated. The Complainant’s acquisition of a naked assignment in 2007 for a fortuitous term which the Complainant itself uses generically and not as a mark, does not alter the salient knowable facts in November 2005. The mere existence of any of several registered marks does not establish that such marks where in use or used in connection with relevant goods or services at the pertinent time to this dispute.
C. Additional Submissions
Complainant submitted an additional submission which was deemed by the Forum to have been received in a timely manner. In its additional submission, Complainant restates many contentions set out in the original complaint.
In addition to those contentions previously set out, Complainant asserts that Respondent, in its Response, does not dispute that the domain name is identical or confusingly similar to Complainant’s registered trademark; that Complainant is the owner of the mark; or that Respondent’s use of the domain name is to advertise vacation lodgings which competes against Complainant’s business.
While Respondent acknowledges that the UDRP is not a forum for determining the validity of a federally registered mark, Respondent indirectly attacks the mark’s validity by arguing that Complainant acquired the mark by “naked assignment” without the goodwill associated with the mark. Respondent also alleges that Complainant does not use the mark.
With regard to use of the mark, Complainant submits several examples of use including:
1 - a current printout of usatoday.homeaway.com, part of the homeaway.com site which prominently features the mark with the ® symbol.
2 – a French website showing Complainant’s licensee’s use of the mark.
3 – trademark registration in multiple countries including the U.S, the
Complainant’s predecessor, Lexington Licensing, Ltd and its
predecessors have been using the mark since 1961. In May of 1986,
Respondent has no rights or legitimate interests in the disputed domain name. It was registered more than 24 years after the mark’s registration was approved and more than 18 years after the mark became incontestable.
Respondent’s argument that it has legitimate interests as a domain to advertise resorts because other entities use the term “home away from home” is without merit. First, Respondent is not using the domain to sell or promote any of its goods and services. It is simply parking the domain name and hosting advertisements related to other travel sites that compete with Complainant. The header of the site (“homeawayfromhome.com: The Leading Home Away From Home Site on the Net”) plainly demonstrates the site’s purpose is to capture search traffic for “HOME AWAY FROM HOME,” rather than to serve a legitimate purpose. It also serves to demonstrate that Respondent is using “HOME AWAY FROM HOME” as a trademark.
Second, Respondent lists other trademark registrations for HOME AWAY FROM HOME or similar marks. Each of those listings are for a completely different type of use than “rental of temporary and permanent living quarters to others.” They are unrelated to Complainant’s travel lodging services.
Third, the descriptive uses by other entities are immaterial. They are not trademark usages, unlike Complainant’s and Respondent’s use. None of the descriptive uses are domain name registrations, let alone brands. Respondent is using the mark as a trademark in competition against Complainant.
With respect to Respondent’s argument that it did not register the domain name in bad faith, the preponderance of the evidence shows otherwise. We have 1) Respondent’s use of an incontestable registered trademark; 2) Respondent’s domain name registration occurring after years of continuous public use by the trademark owner; 3) Respondent’s domain name resolving to a website with links to third-parties offering vacations rental services similar to Complainant; and 4) false claims on the website stating that the site is the “leading travel accommodations site.”
Respondent labels his additional submission as a “Response to Unauthorized Submission.” It is his position that the Complainant’s additional submission was not timely filed within 5 days of the date the Response was received by the Forum.
In response to the Additional Submission of Complainant, Respondent
restates that he found no use of “HOME AWAY FROM HOME” as a mark by the
Complainant. Now Complainant claims to
have been using the mark on a web page disconnected from its site, apparently
as a referral page from the site of
First, the logo is inconsistent with the mark used by Complainant’s predecessor-in-interest. It is, in fact, the subject mark of Complainant’s U.S. Registration No. 3,596,175 issued in March 2009, long after Respondent registered and begun using the domain name at issue. In contrast, the demonstrated use of the claimed predecessor-of-interest appears to have been to place the phrase “Home Away From Home” in temporary lettering on a sign outside a motel to engage in the common practice of a number of hotel chains to use the term as a noun phrase. It appears the predecessor-in-interest was operating facilities which offered long and short term residence facilities while the Complainant appears to be primarily a booking agent for properties owned by others for short resort visits.
None of the Complainant’s assertions alters the fact that “Home Away From Home” is an exceedingly common phrase. The Complainant attempts to cast Respondent’s position as an “invalidity” argument. It is true that it is possible to obtain limited rights in trademark registration of what are otherwise common words and phrases, however, the Policy is composed of more than the first element and not all trademarks are of equal scope of strength.
Complainant correctly observes that some of the links which are associated with the domain name are unrelated to the travel lodge services for which Complainant’s mark is registered. First, the type of residential services epitomized by the temporary signage submitted to the USPTO in connection with the “specimen of use” submitted by the “Lexington Motor Lodge and Apts” is well known to anyone familiar with the fate of pre-war motor lodges that litter U.S. highway corridors supplanted by the Interstate Highway System in the 1950’s. As travel lodging business was lost, such establishments adapted to a particular market of residential customers of low cost rentals.
Second, Complainant is absolutely correct that several of the link categories have nothing to do with travel lodging services. Automated software which matches categories to domain names has apparently determined that the common phrase “home away from home” is frequently associated with vacation properties and has moreover divided the term into individual words and associated the domain name with a variety of “home” products. That is precisely what such relevance matching software does, and it demonstrates both the commonality of the phrase and that it is not uniquely or distinctively associated with the Complainant. Hyatt operates a “Home Away From Home” program which Complainant attempts to characterize as “not a trademark use” while attempting to characterize, as a trademark injury, the mere association of a common phrase with the category of things to which it is normally and widely associated in the minds of customers.
Were the Respondent engaged in a clear effort to pass off as the Complainant, or engaged in the provision of services denominated as “Home Away From Home”, the situation would be different. But, the Policy consists of three elements for a reason. One of those reasons is to address situations where a claimant may be able to demonstrate ownership of a trade or service mark and similarity of a domain name but other considerations bear on the relative strength and scope of the mark in question and the nature of use to which the domain name is being put.
The Policy requires more than similarity or identity between a domain name and some kind of asserted trademark claim. Legitimate questions are raised concerning the continuity of use of a purchased trademark registration, the scope and strength of the asserted mark versus its status as a common phrase, and the Complainant’s more recent actions which indicate something other than a reliance on the trademark registration in connection with the branding of its resort rental booking services.
The panel finds that, although the disputed domain name is identical to Complainant’s registered trademark, the Respondent has rights and/or legitimate interests in respect of the domain name. Having found Respondent has rights and/or legitimate interests in the name the panel finds no bad faith registration and use.
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.
The Panel finds that registration
of the HOME AWAY FROM HOME mark with the USPTO is sufficient to convey rights
in the mark pursuant to Policy ¶ 4(a)(i).
The disputed domain name removes
the spaces between the words of the mark and adds the generic top-level domain
(“gTLD”) “.com.” In its additional
submission, Complainant notes that Respondent does not contest that
Complainant’s mark and the disputed domain name are identical. The Panel finds that the <homeawayfromhome.com> domain name is identical to Complainant’s HOME
AWAY FROM HOME mark pursuant to Policy ¶ 4(a)(i). See
Respondent has been using the
disputed domain name in connection with a bona fide offering of services since it
acquired the <homeawayfromhome.com> domain name in a domain name auction in
2005. Respondent holds a large number of
domain name registrations for the purpose of generating advertising and
pay-per-click revenue. The Panel finds
that this is bona fide offering of
services under Policy ¶ 4(c)(i). See McMullen Argus Publ’g
Inc. v. Moniker Privacy Servs., D2007-0676
Panel also finds that the terms of the <homeawayfromhome.com> domain name are generic and of common use and therefore, Complainant does not have
an exclusive monopoly on the terms on the Internet. The Panel finds that Respondent can establish
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207
(Nat. Arb. Forum
The Panel concludes that Respondent
has rights or legitimate interests in the <homeawayfromhome.com> domain name pursuant to Policy ¶
4(a)(ii), and therefore finds that Respondent did not register or use the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO
Having established that Complainant only met the requirements of proof of the first element of the UDRP, and that Respondent has established defenses to the other two elements, the Panel concludes that relief shall be DENIED.
Daniel B. Banks, Jr., Panel Chair
Honorable Louis E. Condon, Panelist
G. Gervaise Davis III, Panelist
Dated: October 28, 2009
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