Homes & Land Affiliates, LLC v. sky Island Productions / Neal Guthrie
Claim Number: FA1207001453836
Complainant is Homes & Land Affiliates, LLC (“Complainant”), represented by Allison R. Imber, Florida, USA. Respondent is sky Island Productions, LLC / Neal Guthrie (“Respondent”), represented by Abby Guthrie, Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homeandlandhawaii.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David S. Safran as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2012; the National Arbitration Forum received payment on July 18, 2012.
On July 18, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <homeandlandhawaii.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 July 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@homeandlandhawaii.com. Also on July 19, 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.
A timely Response was received and determined to be complete on August 7, 2012.
On August 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that Respondent’s domain name wholly incorporates is registered service mark Homes and Land, and is practically identical to Complainant’s domain name <homesandlandofhawaii.com> which has been in use since long before Respondent registered the domain name at issue here.
Complainant also alleges that Respondent has no rights or legitimate interests in the <homeandlandhawaii.com> domain name since Respondent is not commonly known by the domain name and Respondent’s use of the website in connection with the domain name is not in connection with a bona fide offering of goods or services.
Still further, Complainant contends that Respondent registered and is using the domain in bad faith for the purpose of disrupting Complainant’s business and to intentionally attempt to trade off of Complainants mark and goodwill for its own commercial gain in offering competing services.
B. Respondent
Respondent contends that the domain name in dispute is not confusingly similar to the Complainant’s service mark because the registered trademarks are graphics and lack a descriptive location, and that there are numerous differences, e.g., 11 (eleven) letters/symbols in the domain that are different than the registered service-mark. Additionally, Respondent notes that the common elements are all words that are generically descriptive as they apply to the services of the parties Respondent further contends that it is only offering its own real estate in Hawaii, and not any competing sales services the only links on the website being ancillary to Respondent’s attempts to sell the property.
The Panel finds that the domain at issue using the singular “home” is consistent with Respondent’s evidence that the site is only being used to sell its own single piece of property, and that there is no evidence of competing services being offered at the site to which the <homeandlandhawaii.com> domain name resolves. The Panel also finds that the mark “HOMES AND LAND” and “HOMES AND LAND OF HAWAII” are weak marks, being at least suggestive of real estate services, that are not entitled to a wide range of protection and should not be viewed as precluding personal descriptive uses of the words “home and land” or the fact that a home and land are situated in Hawaii.
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.
Given the findings under Paragraph 4(a)(ii) and 4(a)(iii) below, the Panel finds it unnecessary to make a determination under Paragraph 4(a)(i).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent asserts and has provided evidence to support that Respondent and his wife own a home and land in Hawaii that they are trying to sell. Respondent notes that it is a tree house and three acres of Norfolk pines that are clearly depicted in Complainant’s Exhibit D. Respondent contends that the property depicted on the website is its only property and is the only property that it has ever listed on the domain name. Respondent argues that it used terms that described that a home and land were for sale in Hawaii so that people would know what they were looking at. Respondent argues that Complainant’s Exhibit D is not a true and correct representation of the website. Further, Respondent argues that Complainant’s statement that Respondent makes sales through the website is false and misleading as Respondent is only attempting to sell its own personal real estate while Complainant offers broker advertising. The Panel finds that Respondent has been making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name in order to sell its home under Policy ¶ 4(c)(iii).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Additionally, since the Panel has concluded that Respondent has rights or legitimate interests in the <homeandlandhawaii.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel also finds that Respondent has not registered or used the <homeandlandhawaii.com> domain name in bad faith since the Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent contends that it is using the domain name to sell its own property in Hawaii. Respondent asserts that it is not using the domain name to compete with Complainant’s real estate advertising services but is only attempting to market and sell its singular property after having to move to Iowa. Respondent alleges that the property for sale encompasses a tree house home and three acres of Norfolk pines, and is the only property that has ever been advertised on the website. Respondent also argues that no Internet user could possibly become confused as to whether the website belongs to Complainant. Respondent contends that Complainant offers advertising for sale and provides a service, while Respondent is only selling its own, personal property through the domain name. Respondent also claims that it did not register the domain name for the purpose of selling or renting the domain name registration to Complainant. Respondent further argues that it did not register the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name. Respondent also contends that there is no evidence indicating that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant. Lastly, Respondent argues that Respondent has not attempted to attract, for commercial gain, Internet users by creating confusion with Complainant’s mark and the Panel finds that Complainant has not proved otherwise.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <homeandlandhawaii.com> domain name REMAIN WITH Respondent.
David S Safran, Panelist
Dated: August 13, 2012
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