national arbitration forum

 

DECISION

 

David B. Hovannisian d/b/a J D Home Rentals v. Manila Industries, Inc.

Claim Number: FA1304001492893

 

PARTIES

Complainant is David B. Hovannisian d/b/a J D Home Rentals (“Complainant”), represented by Thomas V. Miles, California, USA.  Respondent is Manila Industries, Inc. (“Respondent”), represented by Ravi Puri, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jdhomerentals.com>, registered with GODADDY.COM, LLC.

 

PANEL

The undersigned certifies that 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.

 

Anne M. Wallace, Q.C. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2013; the National Arbitration Forum received payment on April 3, 2013.

 

On April 4, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <jdhomerentals.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 April 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2013 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@jdhomerentals.com.  Also on April 10, 2013, 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 April 29, 2013.

 

Complainant submitted an Additional Submission, which was determined to be complete on May 3, 2013.

 

Respondent submitted an Additional Submission, which was determined to be complete on May 8, 2013.

 

Respondent has suggested the Panel should not consider Complainant’s additional submission. However, the Panel finds Complainant’s Additional Submission to be responsive to specific points raised by Respondent in the Response. Therefore, the Panel will consider the Additional Submissions of both Complainant and Respondent in this decision.

 

On May 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant submits:

 

B. Respondent

Respondent submits:

 

C. Additional Submissions

In the Additional Submission, Complainant Submits:

 

In the Additional Submission, Respondent submits:

FINDINGS

·        Complainant has common law and registered trade mark rights in the JD HOME RENTALS mark.

·        The disputed domain name, <jdhomerentals.com>, is, but for the removal of the spaces and the addition of the gTLD, identical to the Complainant’s mark.

·        Respondent has no rights or legitimate interest in the disputed domain name.

·        Respondent registered and is using the disputed domain name 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."

 

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.

 

Identical and/or Confusingly Similar

Complainant asserts that it has trademark rights in the JD HOME RENTALS mark pursuant to its USPTO trademark registration (Reg. No. 4,221,415 filed February 16, 2012, registered October 9, 2012). Previous panels have held that a trademark registration with the USPTO secures a complainant’s rights in its claimed mark under the Policy, dating back to the date on which Complainant filed its trademark application. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Complainant has successfully established its rights in the JD HOME RENTALS mark under Policy ¶ 4(a)(i) dating back to February 16, 2012.

 

Complainant claims in its Complaint and its Additional Submission that it has established common law rights in its JD HOME RENTALS mark, as its business under the JD HOME RENTALS name has existed since 1992. Complainant alleges that the Central California Better Business Bureau opened a file for Complainant’s business on February 9, 1993, which establishes the mark’s use by the principal owner since 1992 for the purpose of a home rental business. Complainant alleges in its Additional Submission that it has established a secondary meaning in its mark as a result of “extensive use in commerce and notoriety,” and the fact that its business continues to be a top property management company in the state of California since 1992, with extensive brand recognition. The panel in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), found that the complainant’s common law rights in its mark were established by providing sufficient evidence of continuous use of the mark since 1989 in connection with a car dealership. Complainant’s continuous use of the JD HOME RENTALS mark since 1992 in connection with a home rental business establishes a secondary meaning in the mark sufficient to demonstrate common law rights pursuant to Policy ¶ 4(a)(i). While the words HOME RENTALS may by themselves be generic words, the addition of the term JD make the name distinctive.

 

Complainant argues that the <jdhomerentals.com> domain name is identical to the JD HOME RENTALS mark. The disputed domain name includes Complainant’s mark in its entirety, only omitting the spaces and adding a gTLD. Otherwise, the name is identical. As such, the <jdhomerentals.com> domain name is identical to the JD HOME RENTALS mark for the purposes of Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).

 

While Respondent argues that its registration of the <jdhomerentals.com> domain name predates Complainant’s alleged rights in the mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

 

While Respondent contends that the <jdhomerentals.com> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

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), and then the burden shifts to Respondent to show it does have 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.”).

 

Complainant alleges that Respondent is not commonly known by the <jdhomerentals.com> domain name. The Panel notes that the WHOIS information associated with the domain name identifies “Manila Industries, Inc.” as the registrant. In Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), the panel concluded that the respondent registered the disputed domain name under the registrant “Ilyoup Paik a/k/a David Sanders,” which did not demonstrate that the respondent was commonly known by the disputed domain name. The WHOIS information in this case also fails to support a finding that Respondent is commonly known by the <jdhomerentals.com> domain name, which demonstrates that Respondent has no rights or legitimate interests in the domain as envisioned by Policy ¶ 4(c)(ii).

 

Complainant makes the contention in its Complaint and Additional Submission that Respondent has not used the <jdhomerentals.com> domain name in connection with a bona fide offering of goods or services, as the resolving website leads to a webpage that links Internet users to competitors who rent homes in the Fresno and San Joaquin Valley area. Complainant claims that Respondent uses the domain name as an advertising portal that “specifically identifies the availability of properties” in the same area and displays links to Complainant’s competitors. Respondent’s use of the resolving website to establish an advertising portal that contains links to Complainant’s competitors does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).

 

Complainant has met the initial burden to show lack of rights or legitimate interests. The burden shifts to Respondent.

 

Respondent says it uses the disputed domain name to sponsor links to websites renting homes which directly relate to the key words “home rentals” incorporated into the domain name. The Panel notes the domain also includes the distinctive term JD. The Panel has already found the operation of a pay-per-click website at a confusingly similar domain name does not establish 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)).

 

Respondent contents it is in the business of acquiring, developing and selling generic domain names. The words “home” and “rentals” may be generic on their own or even when combined into the phrase “home rentals”, but when JD HOME RENTALS is used, the phrase is no longer generic. Respondent contends that it intended to build out of the disputed domain name a focus on home rentals within the city of John Day, Oregon as well as other cities with the initials “JD”. There is no evidence whatsoever before the Panel to suggest this was Respondent’s intention. While re-selling generic domain names can be a bona fide offering of goods or services, this case does not involve a generic domain name. Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues in its Complaint and Additional Submission that Respondent registered the <jdhomerentals.com> domain name for the purpose of selling it to Complainant for a sum in excess of the out of pocket costs related to registering the domain name. Complainant provides evidence of a screenshot from the resolving website that displays a query box advertising the opportunity to purchase the domain name. Additionally, Complainant contends that Respondent rejected an offer from Complainant to purchase the domain name for a price no higher than $1,000. The panel in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), stated that the respondent’s use of the domain name was in bad faith, as respondent offered to sell the domain name for valuable consideration in excess of out-of-pocket costs.

 

The material before me, some of which was submitted by Respondent, shows Complainant and Respondend had several communications, both directly and through GoDaddy, about the possible transfer of the disputed domain name to Complainant. While at one point it appeared Complainant was prepared to pay $15,000 for the name, this turned out to be an error in communication which was clarified by GoDaddy. In the material, there are communications from Respondent at different times suggesting Respondent would sell the disputed domain name for various amounts including $20,000, $15,000 and $8,500. Respondent has not denied this and indeed much of this information is found in documents submitted by Respondent.

 

Respondent’s offering the domain name for sale and requesting a sum in excess of the domain name’s registration costs, when viewed in light of all the circumstances, shows Respondent registered and uses the <jdhomerentals.com> domain name in bad faith under Policy ¶ 4(b)(i).

 

Complainant contends Respondent prevents Complainant from reflecting his mark in a corresponding domain name, and argues in its Complaint and Additional Submission that there are a number of similar UDRP complaints against Respondent, establishing a pattern of registering domain names containing marks held by other entities. See Everest Nutrition, Inc. v. Manila Indus., Inc., FA1313264 (Nat. Arb. Forum April 20, 2010); see also Niagara Parks Comm’n v. Whoisprotections.cc/Manila Indus., Domain Admin., D2009-1209 (WIPO February 11, 2009).

 

Complainant has identified at least 27 UDRP decisions, having Respondent as the Respondent, involving numerous domain names where Panels have found in favour of Complainants and ordered transfer of disputed domain names. These cases show Respondent has engaged in a pattern of registering domain names incorporating marks belonging to other entities sufficient to show Respondent is engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings are sufficient evidence of a pattern of bad faith registrations).

 

Reverse Domain Name Hijacking

Respondent alleges Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends Complainant is attempting to deprive Respondent, the rightful registered holder of the <jdhomerentals.com> domain name, of its rights to use the disputed domain name.

 

Complainant has satisfied all three elements for a claim under the UDRP. Complainant is not engaged in reverse domain name hijacking.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

 

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

 

Anne M. Wallace, Q.C., Panelist

Dated:  May 19, 2013

 

 

 

 

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