Hunt Realty Investments, Inc. v. Jon Richter / SEO Explosion
Claim Number: FA1108001403552
Complainant is Hunt Realty Investments, Inc. (“Complainant”), represented by Ruben C. DeLeon of DeLeon Law Group PC, Texas, USA. Respondent is Jon Richter / SEO Explosion (“Respondent”), Sweden.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <huntrealty.org>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 16, 2011; the National Arbitration Forum received payment August 19, 2011.
On August 18, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <huntrealty.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@huntrealty.org. Also on August 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 September 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon, Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <huntrealty.org>, is confusingly similar to Complainant’s HUNT OIL COMPANY mark.
2. Respondent has no rights to or legitimate interests in the <huntrealty.org> domain name.
3. Respondent registered and used the <huntrealty.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hunt Realty Investments, Inc., serves as the centralized real estate investment management resource for its parent holding company Hunt Consolidated, Inc. Complainant owns a trademark registration for the HUNT OIL COMPANY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,391,309 registered April 29, 1986).
Respondent, Jon Richter / SEO Explosion, registered the <huntrealty.org> domain name April 26, 2011. The disputed domain name resolves to a website presenting information purporting to describe the activities of Complainant and duplicated from other sources. The disputed domain name also displays pay-per-click links, some of which direct Internet users to competitors of Complainant in the real estate and financial investment industry.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 owns a USPTO trademark registration for the HUNT OIL COMPANY mark (Reg. No. 1,391,309 registered April 29, 1986). Federally registered trademarks provide evidence of a complainant’s rights in a mark. Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006). A trademark registration is sufficient to establish rights, regardless of its location or Respondent’s location. Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001). The Panel finds that Complainant established that it has rights in the HUNT OIL COMPANY mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <huntrealty.org> domain name is confusingly similar to Complainant’s <huntrealty.com> domain name. While this is not the correct comparison under the Policy, the Panel nevertheless holds that Respondent’s disputed domain name is confusingly similar to Complainant’s HUNT OIL COMPANY mark because the disputed domain name merely replaces the terms “oil” and “company” of the mark with the term “realty” and attaches the generic top-level domain (“gTLD”) “.org.” Established precedent indicates that replacing one or more terms with a different term in the disputed domain name does not negate a finding of confusing similarity. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”). Prior cases have also shown that the presence of a gTLD does not affect the confusingly similar analysis under Policy ¶ 4(a)(i). See Citizens Fin. Group, Inc. v. Kao, FA 1030868 (Nat. Arb. Forum Aug. 21, 2007) (determining that the gTLD “.org” “does nothing to alleviate the confusing similarity, as a top-level domain is a requirement for all domain names”).
Therefore, the Panel finds that Respondent’s <huntrealty.org> domain name is confusingly similar to Complainant’s HUNT OIL COMPANY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
In alleging that Respondent lacks rights and legitimate interests, Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent. As Complainant has satisfied this obligation, the burden now shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. Given its failure to respond, however, Respondent has not brought evidence of rights or interests and has not contested Complainant’s allegations. In such circumstances, the Panel is permitted to make an inference that Respondent has no rights or legitimate interests and that Complainant’s allegations are true. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, this Panel still reviews the record under the Policy ¶ 4(c) factors for evidence of Respondent’s rights or legitimate interests.
Complainant asserts that no evidence suggests that Respondent is commonly known by the disputed domain name. Complainant urges that the disputed domain name is not a nickname of Respondent and that Complainant has not licensed or otherwise permitted Respondent to use the HUNT OIL COMPANY mark in any way. The WHOIS information for the disputed domain name identifies the registrant as “Jon Richter,” which the Panel finds reveals no nominal association between Respondent and the disputed domain name. Because no evidence supports Respondent under this prong of the analysis, the Panel finds that Respondent has no rights or legitimate interests in the <huntrealty.org> domain name according to Policy ¶ 4(c)(ii) as it is not commonly known by the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also alleges that Respondent’s resolving website displays both information about Complainant and sponsored pay-per-click links. Complainant contends that the information appears to be pulled and duplicated from public information about Complainant published elsewhere. Complainant argues that some of the pay-per-click links, referring to topics such as “Commercial Property Loans” and “Investment Property Refi,” compete with Complainant by targeting Complainant’s customer base. The Panel finds that neither the provision of unauthorized information nor the display of pay-per-click links comports with the Policy ¶ 4(c)(i) and ¶ 4(c)(iii) requirements for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); se also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant makes no specific allegations regarding Respondent under Policy ¶ 4(b)(iii). However, Complainant did raise issues in the prior section of conduct that also constitutes and supports findings of bad faith registration and use. Respondent’s <huntrealty.org> domain name resolves to a website featuring a listing of sponsored pay-per-click links that target Complainant’s customer base. The Panel finds that this behavior is competitive activity that disrupts Complainant’s business and supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); 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 educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent registered the confusingly similar <huntrealty.org> domain name for the purpose of receiving referral fees from the pay-per-click links targeting Complainant’s customer base that are featured on the resolving website. By providing information purportedly related to Complainant on the resolving website and by using Complainant’s mark in the disputed domain name, the Panel finds that Respondent acted to attract and mislead Internet users with the goal of profiting from the sponsored links. The Panel finds that this conduct by Respondent evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <huntrealty.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 28, 2011.
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