Location, Inc. Group Corporation d/b/a Location Inc. v. Domain Admin c/o Dynadot Privacy
Claim Number: FA1202001428303
Complainant is Location, Inc. Group Corporation d/b/a Location Inc. (“Complainant”), represented by Gregory M. Krakau of Morse, Barnes-Brown & Pendleton, P.C., Massachusetts, USA. Respondent is Domain Admin c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <neighborhoodscouts.com>, registered with Dynadot.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2012; the National Arbitration Forum received payment on February 8, 2012.
On February 7, 2012, Dynadot confirmed by e-mail to the National Arbitration Forum that the <neighborhoodscouts.com> domain name is registered with Dynadot and that Respondent is the current registrant of the name. Dynadot has verified that Respondent is bound by the Dynadot 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 February 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2012 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@neighborhoodscouts.com. Also on February 8, 2012, 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.
On February 10, 2012, Respondent sent an email to the National Arbitration Forum and Complainant’s counsel to state that he had “submitted a request with Dynadot to delete neighborhoodscouts.com from the registry.” According to Respondent’s email, Dynadot responded that this process “will take 30 days.”
A timely Response was received and determined to be complete on February 17, 2012.
An Additional Submission from Complainant was received on February 21, 2012; and determined to be timely on February 22, 2012.
On February 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a well-known provider of online information in the field of real estate. Complainant additionally states that it is the owner of the NEIGHBORHOODSCOUT and NEIGHBORHOOD SCOUT REPORT marks (collectively, the “NEIGHBORHOODSCOUT Marks” and the “Marks”) for use in providing information and newsletters in the field of real estate. Complainant operates a website in connection with the domain name <neighborhoodscout.com>.
Complainant states that it has provided services under the NEIGHBORHOODSCOUT mark since at least September 6, 2000. Further, Complainant contends that it has made substantial marketing and promotional investments in the Marks. Moreover, Complainant states that consumers recognize the Marks as the source and/or sponsor of Complainant’s services.
Complainant contends that Respondent registered the <neighborhoodscouts.com> domain name on March 13, 2011, which is long after the Complainant established rights in the NEIGHBORHOODSCOUT Marks. Complainant contends that Respondent has no right or legitimate interests in the domain name, and that the domain name was registered and used in bad faith.
B. Respondent
Respondent contends that <neighborhoodscouts.com> is comprised of common and generic terms, and therefore cannot be found confusingly similar to Complainant’s mark. Respondent additionally contends that Complainant’s mark covers demographics, character, and economic climate for a geographical area. Further, Complainant’s registration for the Marks is in a class for newsletters.
Respondent states that its use of <neighborhoodscouts.com> is “descriptive of the services offered at the real estate website” and that its use is not “in the same class as demographics or newsletters.” Respondent contends that it has not registered the domain name in bad faith.
Respondent additionally states that he is a licensed real estate agent, and his use of the <neighborhoodscouts.com> domain name is consistent with Respondent’s professional activities, and that the domain name does not divert business from Complainant.
C. Additional Submissions
In its Additional Submission, Complainant argues that the Respondent’s statement that the domain name contains common and generic terms is without merit because the Complainant owns registrations for the Marks, and Respondent has not provided any evidence that the domain name is comprised of generic terms. Complainant also argues that Respondent mischaracterizes the goods indentified in Complainant’s U.S. trademark registration. Complainant further states that a Google search reveals that Respondent necessarily diverts business from Complainant because Respondent’s website appears as the first Google result. Finally, Complainant argues that Respondent’s attempted sale of the domain name is unlawful.
The Panel finds:
1) Complainant owns legal rights in the NEIGHBORHOODSCOUT mark, which was registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,754,328) on March 13, 2011.
2) Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Domain Admin c/o Dynadot Privacy,” and Respondent has not claimed to be commonly known by the disputed domain name.
3) Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
4) Complainant and Respondent exchanged emails regarding the domain name in dispute, but the parties were unable to resolve this matter prior to the filing of the UDRP Complaint.
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."
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 owns a U.S. Trademark for the NEIGHBORHOODSCOUT mark, which was registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,754,328) on March 13, 2011. Respondent’s allegations concerning the mark’s generic nature are immaterial because the registered status of the mark is sufficient to confer trademark rights on Complainant. Previous panels have determined that registering a mark with the USPTO confers upon the registrant sufficient rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Additionally, Respondent’s arguments about legal limitations resulting from classification of Complainant’s services are immaterial because the classification system is an administrative system of the U.S. Trademark Office that has no implications on the issue of likelihood of confusion.
Respondent’s <neighborhoodscouts.com> domain name is confusingly similar to Complainant’s NEIGHBORHOODSCOUT mark. The disputed domain name includes the entire mark, and merely adds the generic top-level domain “.com” and the letter “s.” Neither of the changes sufficiently differentiates Respondent’s <neighborhoodscouts.com> domain name from the NEIGHBORHOODSCOUT mark. The Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s NEIGHBORHOODSCOUT mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark).
In view of the above, the Panel finds that Complainant establishes rights in its NEIGHBORHOODSCOUT mark, and that Respondent’s <neighborhoodscouts.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Domain Admin c/o Dynadot Privacy.” Further, Respondent has not claimed to be commonly known by the disputed domain name. Cf. M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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).
This Panel concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of <neighborhoodscouts.com>. The disputed domain name resolves to a website offering competing real estate services (as shown by a screenshot of the resolving website). Previous panels have determined that such a use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Accordingly, the Panel finds under Policy ¶ 4(c)(i) that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent’s registration and use of the <neighborhoodscouts.com> domain name disrupts Complainant’s business by promoting competing real estate services on the website associated with the disputed domain name. Respondent’s diversion of customers is evidenced by the fact that <neighborhoodscouts.com> is the first result when Internet users search for Complainant by using the Google search engine. Both Respondent and Complainant are in the real estate services industry. The Panel finds that Respondent’s registration and use of the domain name disrupts Complainant’s real estate business, and therefore, Respondent registered and uses the <neighborhoodscouts.com> domain name in bad faith pursuant to 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 Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Moreover, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to Respondent’s affiliation with Complainant’s NEIGHBORHOODSCOUT trademark and <neighborhoodscout.com> domain name. Respondent’s registration of the confusingly similar <neighborhoodscouts.com> domain name is evidence of Respondent’s attempt to create confusion. Respondent commercially benefits from this confusion by providing competing real estate services. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the domain name at issue resolved to a website where similar services were offered to Internet users); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent displayed the complainant’s mark on its website and offered identical services as those offered by the complainant).
Accordingly, the Panel finds that Respondent registered and uses the <neighborhoodscouts.com> domain name in bad faith under Policy ¶ 4(b)(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 <neighborhoodscouts.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: March 6, 2012
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