HomeVestors of America, Inc. v. Stephen Haver
Claim Number: FA1304001493461
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Remy M. Davis of Klemchuk Kubasta LLP, Texas, USA. Respondent is Stephen Haver (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <we-buy-ugly-houses-houston.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2013; the National Arbitration Forum received payment on April 8, 2013.
On April 8, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <we-buy-ugly-houses-houston.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 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@we-buy-ugly-houses-houston.com. Also on April 8, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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. 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
Complainant made the following contentions.
1. Complainant owns rights in the WE BUY UGHLY HOUSES mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,099,814 registered June 6, 2006).
2. Complainant has used its WE BUY UGLY HOUSES mark since March 1, 2000.
3. Respondent registered the <we-buy-ugly-houses-houston.com> domain name was registered on July 21, 2007.
4. Respondent’s <we-buy-ugly-houses-houston.com> domain name is confusingly similar to Complainant’s registered WE BUY UGLY HOUSES mark.
a. Respondent’s <we-buy-ugly-houses-houston.com> domain name is comprised of Complainant’s registered mark in its entirety with the addition of the geographic location “Houston,” as well replacing the spaces between the words with four hyphens.
5. Respondent has no rights or legitimate interests in the <we-buy-ugly-houses-houston.com> domain name.
a. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services.
b. Complainant has not authorized Respondent to use its registered mark.
c. The WHOIS information for Respondent lists “Stephen Harver” as registrant of the <we-buy-ugly-houses-houston.com> domain name.
d. Respondent uses the disputed domain name to resolve to a website featuring services that compete with Complainant.
e. Respondent is not commonly known by the <we-buy-ugly-houses-houston.com> domain name.
6. Respondent registered and has used the disputed domain name in bad faith.
a. Respondent’s website offers services that compete with Complainant.
b. Respondent’s use of the confusingly similar domain name disrupts Complainant’s business.
c. Respondent’s actions signal Respondent’s knowledge and awareness of Complainant’s rights in the <we-buy-ugly-houses-houston.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a well-known franchise business engaged in the purchase, refurbishment and selling and leasing of houses.
2. Complainant owns rights in the WE BUY UGHLY HOUSES mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,099,814 registered June 6, 2006).
3. Respondent registered the <we-buy-ugly-houses-houston.com> domain name on July 21, 2007. Respondent uses the disputed domain name to resolve to a website featuring services that compete with Complainant.
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.
In view of 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 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 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims it has rights in the WE BUY UGLY HOUSES mark through its registrations with the USPTO (Reg. No. 3,099,814 registered June 6, 2006). Previous panels have found that evidence of a registration for a mark with a recognized trademark organization is sufficient to establish rights in a given mark. 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). The Panel therefore finds that Complainant has rights in the WE BUY UGLY HOUSES mark under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WE BUY UGLY HOUSES mark. Complainant argues that Respondent’s <we-buy-ugly-houses-houston.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark under Policy ¶ 4(a)(i). Complainant argues that Respondent’s disputed domain name replaces the spaces in Complainant’s mark with hyphens. Complainant also argues that Respondent adds the geographic locator “Houston” after the word “houses” in Complainant’s mark. The Panel notes that Respondent also adds the generic top-level domain (gTLD) “.com” to the disputed domain name. Previous panels have found that adding hyphens, geographic locators and gTLDs are insufficient to differentiate a disputed domain name from a given mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel thus finds that Respondent’s <we-buy-ugly-houses-houston.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WE BUY UGLY HOUSES trademark to use in its domain name and has merely added the word “Houston” after the word “houses” in Complainant’s mark to complete the domain name, thus implying that the domain name is an official domain name of Complainant relating to its business in Houston and that it will lead to an official website of Complainant dealing with the same subject, neither of which is true;
(b) Respondent has then used the domain name to resolve to a website featuring services that compete with Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <we-buy-ugly-houses-houston.com> domain name under Policy ¶ 4(a)(ii). Complainant claims that Respondent is not now and has never been commonly known by the <we-buy-ugly-houses-houston.com> domain name. Complainant contends that it has not licensed or permitted Respondent to use any of its marks including the WE BUY UGLY HOUSES mark. The Panel notes that the WHOIS information for Respondent lists “Stephen Haver” as registrant. Previous panels have found that when a respondent is not authorized by a complainant to use its trademark, then it is not commonly known by the mark and thus has no rights or legitimate interests in the mark. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and thus has no rights or interests in Complainant’s registered trademark;
(e) Complainant also argues that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name. Complainant contends that Respondent is using the disputed domain name in attempts to attract Complainant’s potential customers to Respondent’s website. The Panel notes that Respondent’s resolving website features an advertisement for Respondent’s business claiming that customers should not, “worry about repairs. Call us today. We buy ugly houses and we’ll answer your questions and explain how easy it is to sell your house in as-in condition.” The resolving website also features contact information for Respondent as well as the link “Contact Us.” Previous panels have found that diverting Internet users to a respondent’s website resolving from a confusingly similar domain name featuring advertisements for Respondent’s competing business does not indicate rights or a legitimate interest in a disputed domain name. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel finds therefore that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has registered and is using the disputed domain name in bad faith. Complainant argues that Respondent is operating its website resolving from a confusingly similar domain name with the goal of competing with and disrupting Complainant’s business. Complainant claims that Respondent’s resolving website features the tagline “We Buy Ugly Houses for Cash.” Complainant claims that Respondent is trading off the goodwill that Complainant has created in its mark by preventing Complainant from using its registered mark. Previous panels have found that using a confusingly similar domain name to resolve to a website that competes with a complainant’s business diverts customers from complainant’s business, indicating bad faith registration and use under Policy ¶ 4(b)(iii). See 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).”). As the Panel agrees, it finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant asserts that its trademark registrations for the WE BUY UGLY HOUSES mark existed well before the registration of the disputed domain name. Complainant contends that Respondent registered the disputed domain name on July 21, 2007, which was well after Complainant’s first use of the mark. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the notoriety of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). see Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration…”.).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the WE BUY UGLY HOUSES mark and the lack of any explanation by Respondent for registering and retaining the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <we-buy-ugly-houses-houston.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 12, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page