Trulia, Inc. v. IHUSTLE INC. and M Ferman
Claim Number: FA0911001296473
Complainant is Trulia, Inc. (“Complainant”), represented by Matthew
D. Schneller, of Perkins Coie LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <truliaforeclosures.com> and <truliaforeclosures.info>, registered with Mesh Digital Limited.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2009.
On December 4, 2009, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <truliaforeclosures.com> and <truliaforeclosures.info> domain names are registered with Mesh Digital Limited and that Respondent is the current registrant of the names. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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 December 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2010 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@truliaforeclosures.com and truliaforeclosures.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <truliaforeclosures.com> and <truliaforeclosures.info> domain names are confusingly similar to Complainant’s TRULIA mark.
2. Respondent does not have any rights or legitimate interests in the <truliaforeclosures.com> and <truliaforeclosures.info> domain names.
3. Respondent registered and used the <truliaforeclosures.com> and <truliaforeclosures.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Trulia, Inc., offers online real estate information services including “searchable online real estate listings, market information, real estate advertising services, and referrals in the field of real estate.” Complainant owns several trademark registrations for the TRULIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,197,657 issued January 9, 2007).
Respondent registered the <truliaforeclosures.com> and <truliaforeclosures.info> domain names on October 13, 2009. Respondent’s disputed domain names resolve to Respondent’s commercial website offering real-estate listing services and real estate brokerage services in direct competition with Complainant. In addition, Respondent offered the disputed domain names to Complainant for purchase in the amount of $5,000.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 has multiple registrations for the TRULIA mark
with the USPTO (e.g., Reg. No. 3,197,657
issued January 9, 2007), and thus the Panel finds Complainant has established
rights to the mark pursuant to Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under
Complainant argues that Respondent’s <truliaforeclosures.com> and <truliaforeclosures.info> domain names are confusingly similar to Complainant’s TRULIA mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names contain Complainant’s mark in its entirety, add the descriptive term “foreclosures,” and add a generic top-level domain (“gTLD”). The Panel finds that the term “foreclosures,” when added to Complainant’s TRULIA mark in the disputed domain name, creates a confusing similarity between Complainant’s mark and the disputed domain name because the term “foreclosures” has an obvious relationship to Complainant’s offering of real-estate information services. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); 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.”). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s TRULIA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has sufficiently met its burden of producing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Therefore, it is Respondent’s responsibility to repudiate Complainant’s assertion and provide evidence that Respondent does have rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). However, Respondent has failed to respond to the Complaint. Consequently, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names. Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel will nevertheless examine the record in consideration of the factors cited under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the registrant of the disputed domain names as “M F c/o IHUSTLE, INC.” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain names resolve to a website that offers real estate listing services and real estate
brokerage services that directly compete with Complainant’s
business. The Panel finds that
Respondent’s competing use of the disputed domain names does not represent 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).
In addition, Complainant presents evidence that Respondent offered to sell the disputed domain names for $5,000, an amount in excess of the out-of-pocket costs needed in order to register the disputed domain names. The Panel finds that Respondent’s offer to sell the disputed domain names for a price in excess of Respondent’s out-of-pocket costs is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent offered to sell the
disputed domain names to Complainant for $5,000, an amount above Respondent’s
out-of-pocket costs to register the disputed domain names. The Panel finds that this offer to sell is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus
Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct.
15, 2003) (finding the respondent’s offer to sell the domain name for $2,000
sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant alleges Respondent has engaged in a pattern of registering disputed domain names incorporating Complainant’s TRULA mark. The Panel finds that Respondent’s registration of multiple domain names containing Complainant’s TRULIA mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Since Respondent registered the disputed domain
names on October 13, 2009,
Respondent has used the disputed domain names to
offer competing real estate listing
services and real estate brokerage services. The Panel finds that this use
disrupts Complainant’s business. The
Panel further finds that such a disruption constitutes bad faith registration
under Policy ¶ 4(b)(iii). See DatingDirect.com
Ltd. v. Aston, FA
593977 (Nat. Arb. Forum Dec. 28, 2005)
(“Respondent is appropriating Complainant’s mark to divert Complainant’s
customers to Respondent’s competing business.
The Panel finds this diversion is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii).”); see also 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).
Complainant contends Respondent is profiting from its use of the confusingly similar disputed domain names by selling competing real-estate services. The Panel finds that Respondent’s use of the disputed domain names create a likelihood of confusion as to Complainant’s affiliation with the disputed domain names. The Panel further finds that Respondent’s commercial gain from this likelihood of confusion through the sale of competing services constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truliaforeclosures.com> and <truliaforeclosures.info> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 25, 2010
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