national arbitration forum

 

DECISION

 

Home Warranty of America, Inc. v. Chen Yan Hua

Claim Number: FA1101001368013

 

PARTIES

Complainant is Home Warranty of America, Inc. (“Complainant”), represented by Adam K. Sacharoff of Much Shelist, Illinois, USA.  Respondent is Chen Yan Hua (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hwahomewarranties.com>, registered with MONIKER ONLINE SERVICES, 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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2011; the National Arbitration Forum received payment on January 18, 2011.

 

On January 20, 2011, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <hwahomewarranties.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name.  MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hwahomewarranties.com.  Also on January 24, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant markets home warranties and provides services repairs under its home warranties. 

 

Complainant offers its warranties and services under its HWA service mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,138,580, issued September 5, 2006).

 

Respondent registered the disputed <hwahomewarranties.com> domain name on June 7, 2010. 

 

The disputed domain name resolves to a commercial hyperlinks page featuring links to the websites of third-parties that compete with Complainant’s home warranties business.

 

Respondent’s <hwahomewarranties.com> domain name is confusingly similar to Complainant’s HWA mark.

 

Respondent does not have any rights to or legitimate interests in the domain name <hwahomewarranties.com>.

 

Respondent registered and uses the <hwahomewarranties.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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 a 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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant holds a trademark registration with the USPTO for its HWA mark. Trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).

 

This is true even if the trademark is registered in a country other than a respondent’s country of residence. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of ¶ 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business, it being sufficient that a complainant have rights in its mark in some jurisdiction).   

 

Respondent’s <hwahomewarranties.com> domain name is confusingly similar to Complainant’s HWA mark.  The disputed domain name merely adds to Complainant’s HWA mark “home” and “warranties”, which are terms descriptive of Complainant’s business, and the generic top-level domain (“gTLD”) “.com”.  These additions are insufficient to distinguish the disputed domain name from Complainant’s HWA mark under Policy ¶ 4(a)(i).  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained a complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). 

 

Thus the Panel holds that Respondent’s <hwahomewarranties.com> domain name is confusingly similar to Complainant’s HWA mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights to and legitimate interests in the <hwahomewarranties.com> domain name.  Once a complainant makes out a prima facie case in support of its allegations under Policy ¶ 4(a)(ii), the burden shifts to a respondent to prove that it does have rights to or legitimate interests in its contested domain name.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) whereupon the burden shifts to that respondent to show that it does have rights to or legitimate interests in a domain name).

 

Complainant has made out a prima facie case under this head of the Policy.  Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the <hwahomewarranties.com> domain name.  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004), finding that because a respondent failed to submit a response to a complaint filed under the Policy:

 

Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.

 

Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We first observe that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <hwahomewarranties.com> domain name.  Moreover, there is no indication in the record that Complainant has authorized Respondent to use its mark in a domain name, and the pertinent WHOIS information identifies the domain name registrant only as “Chen Yan Hua,” which is not similar to the disputed domain.  On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the relevant WHOIS information and other evidence in the record).

 

We next note that Complainant alleges, without objection from Respondent, that Respondent uses its <hwahomewarranties.com> domain name to resolve to a commercial hyperlink page that features links to the websites of Complainant’s commercial competitors.  In the circumstances here presented, we may safely presume that Respondent receives click-through fees each time an Internet user accesses one of the featured hyperlinks.  Such a use of the contested domain is not 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).  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because that respondent used the names to divert Internet users to a website that featuring services that competed with those offered by a complainant under its marks).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s <hwahomewarranties.com> domain name, which is confusingly similar to Complainant’s HWA service mark, resolves to a website containing hyperlinks to the websites of Complainant’s commercial competitors.  This use of the domain disrupts Complainant’s business and stands as evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii));  see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):

 

This Panel concludes that by redirecting Internet users seeking information on Complainant’s … institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).

 

Respondent presumably receives click-through fees from the visits of Internet users to the hyperlinks featured on the website resolving from the contested domain name to Complainant’s competitors.  Respondent thus benefits commercially from its use of the domain as alleged.  Respondent is thus attempting to create and profit from confusion among Internet users as to the possibility of Complainant’s affiliation with the disputed domain name.  This use of the domain evidences bad faith registration and use under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites featuring services similar to those offered by that complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using disputed domain names to operate a search engine with links to the products of a complainant and to complainant’s commercial competitors, as well as by diverting Internet users to several other domain names).

 

For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) have been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <hwahomewarranties.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  February 18, 2011

 

 

 

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