Home Vestors of America, Inc. v. L&E Publishing / Van Servance
Claim Number: FA1111001415628
Complainant is Home Vestors of America, Inc. (“Complainant”), represented by Darin M. Klemchuk of Klemchuk Kubasta LLP, Texas, USA. Respondent is L&E Publishing / Van Servance (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webuyuglyhouseshouston.com>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2011; the National Arbitration Forum received payment on November 15, 2011.
On November 15, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <webuyuglyhouseshouston.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 November 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@webuyuglyhouses-houston.com. Also on November 21, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 21, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant, which was founded in 1989 and began franchising its business of buying, rehabilitating and selling homes in 1996, now owns 200 franchises in 33 American states.
Complainant began using its WE BUY UGLY HOUSES mark in connection with the marketing of its business on March 1, 2000.
Complainant owns a service mark registration for its WE BUY UGLY HOUSES mark, on file with the United States Patent and Trademark Office (“USPTO”), identified as Registration No. 3,099,814, and registered June 6, 2006.
Complainant also registered the <webuyuglyhouses.com> domain name on June 5, 2000.
Respondent registered the <webuyuglyhouseshouston.com> domain name on June 18, 2010.
Currently, the <webuyuglyhouseshouston.com> domain name resolves to a website containing an error message.
Formerly, the disputed domain name resolved to Respondent’s website where Respondent offered real estate services in competition with the business of Complainant.
Respondent’s <webuyuglyhouseshouston.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark.
Respondent is not commonly known by the contested domain name <webuyuglyhouseshouston.com>.
Complainant has not authorized Respondent to use its WE BUY UGLY HOUSES service mark.
Respondent does not have any rights to or legitimate interests in the domain name <webuyuglyhouseshouston.com>.
Respondent registered and uses the <webuyuglyhouseshouston.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(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.
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 represent-tations 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 a UDRP 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.
Complainant has rights in its WE BUY UGLY HOUSES service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). 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).
See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Respondent’s <webuyuglyhouseshouston.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES service mark. In forming the domain name, which contains Complainant’s entire mark, Respondent has merely eliminated the spaces between its terms and added the geographic term “houston” and the generic top-level domain (“gTLD”) “.com.” These alterations fail to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to a complainant’s TICKETMASTER mark); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the domain name <axachinaregion.com> “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); further see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of the mark of another and the addition of a gTLD in creating a domain name do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)); to the same effect, see U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).
Thus, the Panel finds that Respondent’s <webuyuglyhouseshouston.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES service mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <webuyuglyhouseshouston.com> domain name. Once Complainant has made out a prima facie case in support of this allegation, the burden shifts to Respondent to prove that it does have such rights or interests. See, for example, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a prima facie showing under this head of the Policy. Therefore, Respondent’s failure to respond to the allegations of the Complaint allows us to presume that Respondent does not have rights to or legitimate interests in the <webuyuglyhouseshouston.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true 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 begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the contested domain name, and that it has not authorized Respondent to use its WE BUY UGLY HOUSES service mark. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “L&E Publishing / Van Servance,” which does not resemble the disputed domain name. On this record, we must 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 it within the meaning of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by a disputed domain names, and so had no rights to or legitimate interests in them under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We also note that Complainant asserts, without objection from Respondent, that Respondent does not currently make any active use of the contested domain name because the domain resolves to a website displaying only an error message. Respondent’s failure to make an active use of the disputed domain name demonstrates that it is not using the domain in a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights to or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that a respondent’s failure actively to use a disputed domain name for several years did not constitute either 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)).
Finally, Complainant further alleges, again without objection from Respondent, that Respondent’s domain name formerly resolved to a website offering real estate services that competed with Complainant’s real estate business. This prior use of the domain is likewise neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that a respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the business of a complainant did not give rise to any legitimate interest in the domain name); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services within the meaning of the Policy).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <webuyuglyhouseshouston.com> domain name formerly resolved to a website offering real estate services in competition with the business of Complainant. This disrupted Complainant’s business, and thus stands as evidence that Respondent registered and used the domain in bad faith under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that a respondent registered and used the <sportlivescore.com> domain name to disrupt a complainant’s business under the LIVESCORE mark because that respondent maintained a website in direct competition with the business of that complainant); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent registered and used disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using them to operate websites competing with a complainant’s business).
Respondent’s prior use of the <webuyuglyhouseshouston.com> domain as alleged in the Complaint was evidently done to benefit Respondent commercially by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the domain. This is evidence that Respondent registered and used the <webuyuglyhouseshouston.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a complainant’s mark and used it to host a website offering services similar to those offered by that complainant under its mark); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith registration and use of domain names that were confusingly similar to a complainant’s mark to redirect Internet users to a website that offering services similar to those offered by that complainant).
Respondent currently fails to make active use of the disputed domain name. This is evidence of bad faith registration and use of the domain as provided in Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make an active use of a domain name satisfies the requirement of Policy ¶ 4(a)(iii)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
For these reason, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <webuyuglyhouseshouston.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 25, 2012
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