Wausau Homes, Inc. v. Domain Privacy Group
Claim Number: FA1307001508634
Complainant is Wausau Homes, Inc. (“Complainant”), represented by Mark J. Diliberti of Foley & Lardner LLP, Wisconsin, USA. Respondent is Domain Privacy Group (“Respondent”), represented by Scott A. Gronek of Assist-2-Sell, Inc., Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <4wausauhomes.com>, registered with DOMAIN.COM, LLC.
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.
Francine Tan, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2013; the National Arbitration Forum received payment on July 9, 2013.
On July 9, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <4wausauhomes.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@4wausauhomes.com. Also on July 17, 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 August 6, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on August 9, 2013.
A timely Additional Response was received from Respondent on August 14, 2013 and has been considered by the Panel in this decision.
On August 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Tan 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 makes the following assertions:
Complainant is a leading provider of home building systems out of Rothschild, Wisconsin. Complainant markets its services under the WAUSAU HOMES and WAUSAU HOMES and Design (“the WAUSAU HOMES marks”). The latter is a registered mark with the USPTO covering “pre-assembled housing units and components thereof.”
Complainant commenced use of its WAUSAU HOMES marks in the U.S. in connection with offering pre-assembled housing units and their components, home building construction services, the sale of new and existing homes and the advertisement of such services in 1963. The sale of pre-assembled housing units and homebuilding construction services under the WAUSAU HOMES marks exceeded USD10,000,000 in each of the years 2010, 2011 and 2012. Complainant has spent more than USD1,000,000 in advertising and promotion of its WAUSAU HOMES-branded products and services over a three-year period ending in 2012. Since 1963, the WAUSAU HOMES marks have been prominently featured in advertising and promotional materials. Advertising has taken place over the Internet, the National Association of Home Builders, Building Systems magazines, and local newspapers.
Complainant has owned the domain <wausauhomes.com> since 1997. It asserts that:
1. Respondent’s <4wausauhomes.com> domain name is confusingly similar to Complainant’s WAUSAU HOMES marks.
2. Respondent does not have any rights or legitimate interests in the <4wausauhomes.com> domain name.
3. Respondent registered and used the <4wausauhomes.com> domain name in bad faith.
B. Respondent
Respondent asserts in the Response filed that it has a legitimate interest in the <4wausauhomes.com> domain name and that its registration was not made in bad faith.
Respondent is the franchisor of ASSIST-2-SELL real estate brokerage offices in the United States and Canada, granting each franchisee the right to use, inter alia, Respondent’s marks. Each franchisee is authorized to use a unique domain name in connection with its real estate brokerage services. Respondent's franchisee, Superior Services Realty Group LLC d/b/a Assist-2-Sell Superior Service Realty (“Assist-2-Sell”), provides real estate brokerage services in the Wausau, Wisconsin area. Assist-2-Sell commenced operations in June 2006 and has continuously used and advertised the <4wausauhomes.com> domain name in connection with its real estate brokerage services since then.
The <4wausauhomes.com> domain name is descriptive of services Assist-2-Sell provides where it operates. The website helps prospective buyers and sellers by indicating where they can view homes for sale in Wausau, Wisconsin. Respondent and its franchisees regularly utilize geographically descriptive domain names consisting of the numeral “4,” the area where the franchisee operates, and the term “homes,” e.g. <4napleshomes.com> (Naples, Florida), <4renohomes.com> (Reno, Nevada), <4richmondhomes.com> (Richmond, Virginia) and <4ottawahomes.com> (Ottawa, Ontario).
Complainant’s USPTO registration for the WAUSAU HOMES mark & design (Registration NO. 991,197) covers only “pre-assembled housing units and components thereof” in Class 19 whereas Respondent uses the disputed domain name in connection with licensed real estate brokerage services in Class 36. There has been no evidence of actual confusion between Respondent’s domain name and Complainant’s business. The disputed domain name was used for more than 5 years before Complainant’s representative contacted Assist-2-Sell by way of a telephone call in August 2011 requesting them to stop using the disputed domain name. After Complainant’s representative called again several weeks later, a written response was sent by Assist-2-Sell’s General Counsel in November 2011. In the letter, Respondent stated why it believed the rights asserted by Complainant were limited in scope and how the registration and use of the disputed domain name were in good faith.
No further contact was received from Complainant until March 2013 when Complainant called to reiterate its request for Assist-2-Sell to cease use of the disputed domain name. Assist-2-Sell sought to explain to Complainant why its use of the disputed domain name was legitimate and in good faith. No further written demand was received from Complainant until lodgment of this Complaint.
Respondent asserts Complainant has not met its burden of proving that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
C. Additional Submissions – Complainant
1. Complainant had established both registered trademark and common law rights in the WAUSAU HOMES mark by the time Respondent registered the <4wausauhomes.com> domain name. Complainant’s mark was registered with the USPTO in January 5, 1973 and used in commerce for over 40 years. The <4wausauhomes.com> domain name was registered on May 6, 2006.
2. Respondent did not dispute that the <4wausauhomes.com> domain name is confusingly similar to Complainant’s WAUSAU HOMES mark and relies only on alleged lack of notice.
3. Complainant and Respondent provide similar services. It would be natural for a potential home buyer to assume that the real estate broker and home builder were related. The Trademark Trial and Appeal Board has held that “residential building construction services” and “real estate brokerage and management services” are “clearly related” (In re the Estridge Group, Inc., Application No. 7613102, November 22, 2002). The TTAB noted in that case that it is “obvious that ordinary individuals seeking to purchase a new home would engage the services of a real estate broker in locating new homes that are under construction or have been constructed by builders.” Several homes listed on Respondent’s website at <wausauhomes.com> were described as “custom” homes, which demonstrate that Respondent actively promotes and sells custom-built homes. The content that Respondent places on its website therefore proves that real estate brokerage services and construction and promotion of homes are related.
4. Respondent’s claim of legitimate interest in the disputed domain name based on its undisputed use for 5 years is misplaced as the UDRP is concerned with Complainant’s pre-existing rights in the relevant mark at the time Respondent registered the disputed domain name. The Policy does not state that as long as the trademark owner has not contacted the domain name owner prior to the domain name going live, the domain name owner has legitimate rights to the subject domain name.
5. Respondent’s 18 other domains allegedly held by Assist-2-Sell are not part of these proceedings. A search of the USPTO database confirms that none of the phrases in the names listed by Respondent between the numeral “4” and “.com” is a registered trademark.
D. Additional Submissions – Respondent
1. Complainant’s U.S. Registration No. 991,197 was limited to specific goods which are distinct from the offering of licensed real estate brokerage services. Further, a disclaimer over the exclusive use of the word “HOMES” was entered in that registration and therefore the only remaining word in the trademark registration is the geographically descriptive term “Wausau,” the name of the town. The trademark registration cannot be reasonablyconstrued as having conveyed notice of a claim of rights to the use of the words WAUSAU HOMES in connection with a wide range of services related to the real estate market.
2. Any common law rights held by Complainant in the term WAUSAU HOMES are narrow in scope due to the highly descriptive nature of the mark. Further, any secondary meaning acquired by Complainant’s use of the mark is limited to the goods offered by Complainant. There is no proof that the ordinary consumer looking for real estate brokerage services in the Wausau, Wisconsin area would associate the words “Wausau Homes” exclusively with Complainant, if at all.
3. Complainant has not shown evidence of initial interest confusion or other actual confusion on the part of consumers who viewed the disputed domain name.
4. Complainant’s claim should be barred by laches. Complainant stood by without explanation and watched Respondent’s local franchisee actively build a business using the disputed domain name for more than 5 years before making any contact, and then for almost 2 years before bring this action.
The disputed domain name is confusingly similar to the WAUSAU HOMES marks in which the Complainant has rights.
The Respondent has no legitimate rights or interests in respect of the disputed domain name.
The disputed domain name has been registered and is being used in bad faith.
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 has established it has rights in the WAUSAU HOMES & design mark as well as in the WAUSAU HOMES mark. The fact that the Complainant’s marks comprise words which are generic in nature is irrelevant for the purposes of paragraph 4(a)(i) of the Policy.
The next question to be determined after the first condition of Complainant showing it has rights in the trademark WAUSAU HOMES is whether the disputed domain name is identical or confusingly similar. The only differences between the disputed domain name and Complainant’s WAUSAU HOMES trademark is the additional numeral “4,” the elimination of the spaces between the words, and the addition of the generic top-level domain “.com.” Many past panels have considered this question and the well-established position is that these differences are without legal significance from the standpoint of assessing the issue of confusing similarity, especially where the trademark concerned is immediately identifiable in the domain name in dispute.
The Panel therefore finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
It is incumbent on Complainant to establish a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name, after which the burden shifts to Respondent to put forward evidence showing its rights or legitimate interests in the domain name. (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006) and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2nd Edition, paragraph 2.1.)
The Panel finds that Complainant has established that the WAUSAU HOMES marks have a reputation and fame, at least in the State of Wisconsin and the Upper Midwest. The Panel notes the undisputed claim of use by Complainant of the WAUSAU HOMES mark since 1963 and federal trademark registration since 1973. Complainant’s contention that the trademark WAUSAU HOME would be associated in the mind of the public as being associated exclusively with Complainant is not without merit. The Panel disagrees with Respondent’s submission that any secondary meaning acquired by Complainant’s use of the mark is limited to the goods offered by Complainant.
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the <4wausauhomes.com> domain name and neither is Respondent a licensee of Complainant. Respondent is identified in the WHOIS records as “Domain Privacy Group” but is identified in its Response as “Assist-2-Sell, Inc.” Complainant asserts that Respondent has used the disputed domain name to host a website that displays information about a “full service real estate company,” which use is closely related to home construction services provided by Complainant under the WAUSAU HOMES mark.
The Panel has noted Respondent’s arguments in support of its contention that it has rights or legitimate interests in the disputed domain name. However, on a preponderance of the evidence, the Panel is not persuaded that Respondent has rights or legitimate interests in the disputed domain name. The services provided by Assist-2-Sell are stated in the Response to be “real estate brokerage services … to buyers and sellers of real estate in Wausau, Wisconsin.” Even by the year 2006, Complainant’s WAUSAU HOMES trademark had already been in use for over 40 years. The Panel agrees with Complainant’s submission that the provision of “full service real estate”/real brokerage services on the one hand, and the provision of building construction services on the other hand, are related services.
The overlap and related nature of the respective services, the confusing similarity between <4wausauhomes.com> and the WAUSAU HOMES marks, and the fact that Complainant’s marks appear to have a strong and long-established reputation in Wisconsin and the Upper Midwest, are factors which the Panel has taken into consideration. The Panel finds on these bases that Respondent’s use of the disputed domain name does not constitute noncommercial or fair use under the Policy. The use of a confusingly similar domain name to ride off the reputation or fame of another party’s trademark by the diversion of Internet users to a website which offers related or competing services goes against the spirit of the Policy.
The Panel therefore finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Complainant has to prove on a balance of probabilities that the disputed domain name was registered and is being used in bad faith (see Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Paragraph 4(b) of the Policy sets out four circumstances (non-exhaustive), which if found to exist, would constitute evidence of bad faith registration and use.
Respondent’s domain name fully incorporates Complainant’s WAUSAU HOMES trademark with only insignificant differences. The Panel is of the view that the use of the disputed domain name to promote services closely related to those offered by Complainant amounts to bad faith as it disrupts Complainant’s business by virtue of its confusing similarity with Complainant’s WAUSAU HOMES mark. (See DatingDirect.com Ltd. V. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005.)
The Panel is of the view that Respondent, operating in the property brokerage industry, must have known of the existence of Complainant and its extensively publicized WAUSAU HOMES marks. The WAUSAU HOMES brand is effectively a leading household name in the home building construction industry. That being the case, it is a reasonable inference that the aim of Respondent’s registration and use of the disputed domain name was to take advantage of the strong likelihood of confusion with Complainant’s WAUSAU HOMES mark by giving an impression of association/affiliation with or endorsement by Complainant, a leading and long-established provider of home building systems, and profiting thereby. It is therefore the Panel’s finding that the facts bring the case within paragraph 4(b)(iii) and (iv) of the Policy.
On the issue of laches raised by Respondent, the Panel does not find that there has been an unreasonable delay on Complainant’s part which merits a barring of its claim under the Policy.
Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <4wausauhomes.com> domain name be TRANSFERRED from Respondent to Complainant..
Francine Tan, Panelist
Dated: September 1, 2013
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