national arbitration forum

 

DECISION

 

HomeVestors of America, Inc. v. Brandon Richie

Claim Number: FA1304001493510

PARTIES

Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Remy Davis of Klemchuk Kubasta LLP, Texas, USA.  Respondent is Brandon Richie (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <webuyuglyhousesdallastexas.com>, registered with TUCOWS DOMAINS INC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

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, TUCOWS DOMAINS INC. confirmed by e-mail to the National Arbitration Forum that the <webuyuglyhousesdallastexas.com> domain name is registered with TUCOWS DOMAINS INC. and that Respondent is the current registrant of the name.  TUCOWS DOMAINS INC. has verified that Respondent is bound by the TUCOWS DOMAINS 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 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@webuyuglyhousesdallastexas.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 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

Complainant’s Contentions

Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity

Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests

Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration

Respondent was fully aware of Complainant’s rights in the WE BUY UGLY HOUSES mark.  Respondent’s original content pages on the domain name directly mention the mark.

Respondent’s Contentions

Respondent did not submit a Response. 

 

FINDINGS

1.    Respondent’s <webuyuglyhousesdallastexas.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark.

2.    Respondent does not have any rights or legitimate interests in the < webuyuglyhousesdallastexas.com > domain name.

3.    Respondent registered or used the < webuyuglyhousesdallastexas.com > 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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has used the WE BUY UGLY HOUSES mark in connection with real estate transactions and has registered this mark with the USPTO.  See Reg. No. 2,761,385 registered on Sept. 9, 2003.  The Panel agrees that Complainant’s USPTO registration is sufficient evidence of Complainant’s Policy ¶ 4(a)(i) rights in the mark.  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant further argues that the <webuyuglyhousesdallastexas.com> domain name is confusingly similar to the WE BUY UGLY HOUSES mark.  Complainant argues that the domain name takes the entire mark and merely adds the geographic descriptor “dallastexas.”  The Panel notes that Respondent removed all spacing from the mark, and added the generic top-level domain (“gTLD”) “.com” to form this domain name.  The Panel agrees that neither the deletion of spacing, the addition of “.com,” nor the addition of the geographic terms “dallas” and “texas” distinguish the domain name from the mark.  See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the 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)).  Therefore the Panel finds that the <webuyuglyhousesdallastexas.com> domain name is confusingly similar to the WE BUY UGLY HOUSES mark under Policy ¶ 4(a)(i).

 

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 argues that Respondent is not commonly known as the disputed domain name.  Complainant contends that Respondent is not an authorized franchisee or vendor of Complainant.  Complainant notes that the WHOIS information on file with the registrar identifies one “Brandon Richie” as the domain name’s registrant.  The Panel agrees that Respondent is not commonly known as the domain name under Policy ¶ 4(c)(ii) when there is no evidence in the record to suggest otherwise.  See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).

 

Complainant argues that Respondent’s original use of the <webuyuglyhousesdallastexas.com> domain name was to promote its own competing real estate transaction firm under the WE BUY UGLY HOUSES mark.  Complainant argues that there is nothing bona fide in Respondent profiting off of Complainant’s marks by using those marks to compete directly with Complainant.  The Panel notes that the domain name was apparently used at some point to request the information of Internet users concerning their homes.  See Complainant’s Ex. E.  The Panel notes that the services offered on this website are markedly similar to those offered by Complainant under its WE BUY UGLY HOUSES mark.  See id.  The Panel agrees that Respondent’s offerings were at no point bona fide under Policy ¶ 4(a)(i), as they were commercial in nature and used Complainant’s own mark to explicitly compete with Complainant by targeting a geographic region that Complainant bases its company out of.  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).

 

Complainant also argues that Respondent’s current use of the <webuyuglyhousesdallastexas.com> domain name is in fact a non-use.  Complainant points out that the domain name currently resolves to a website that merely provides Respondent’s name, with little other relevant content.  See Complainant’s Ex. F.  The Panel agrees that by taking down the content of the disputed domain name, Respondent did not create a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii); nor can an inactive website, with no other correspondence between the parties, serve as any bona fide offering under Policy ¶ 4(c)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent sought to capitalize on the likelihood that Internet users would confusingly believe that the disputed <webuyuglyhousesdallastexas.com> domain name resolved to pages affiliated with or run by Complainant.  Complainant concludes that Respondent thus profited by deceiving Internet users into providing their information and financials to Respondent, when they were intending to do business with Complainant.  The Panel again notes that the domain name originally resolved to a website that boldly declares “$$ We Pay Cash for Ugly Houses $$” while making representations as to Respondent’s business that are similar to the services Complainant provides under its WE BUY UGLY HOUSES mark.  See Complainant’s Ex. E.  The Panel agrees that Respondent’s decision to use the WE BUY UGLY HOUSES mark to promote its own competing business evidences a Policy ¶ 4(b)(iv) example of bad faith use and registration of the domain name to reap profits through the confusion of Internet users.  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

Complainant further argues that Respondent was fully aware of Complainant’s rights in the WE BUY UGLY HOUSES mark.  Complainant notes that Respondent’s original content pages on the domain name directly mention variations of the mark such as “We Buy Any Ugly Houses” and “We Pay Cash for Ugly Houses.”  The Panel agrees with Complainant regarding Respondent's actual knowledge and conclude that Respondent registered the <webuyuglyhousesdallastexas.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

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 <webuyuglyhousesdallastexas.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  May 21, 2013

 

 

 

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