K. Hov IP, II, Inc. v. Bill Frankel
Claim Number: FA1307001509748
Complainant is K. Hov IP, II, Inc. (“Complainant”), represented by Alexander J.A. Garcia of Perkins Coie LLP, Washington, USA. Respondent is Bill Frankel (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <khovnanian.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 15, 2013; the National Arbitration Forum received payment on July 15, 2013.
On July 16, 2013, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <khovnanian.com> domain name is regis-tered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Re-spondent is bound by the NETWORK SOLUTIONS, 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 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@khovnanian.com. Also on July 16, 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 tech-nical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 12, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Since 1983 Complainant has used the K. HOVNANIAN mark to manage real property, market leasing services and rent real property.
Complainant holds registrations for the K. HOVNANIAN service mark, on file with the United States Patent and Trademark Office ("USPTO") (including Registry No. 3,579,682, filed July 10, 2008; registered February 24, 2009).
Operating in sixteen states of the United States, Complainant has spent millions of dollars promoting its services under the K. HOVNANIAN mark.
Complainant has operated a website through the <khov.com> domain name since as early as January 1998.
From these activities Complainant has achieved significant marketplace recog-nition for its K. HOVNANIAN mark.
Respondent registered this <khovnanian.com> domain name on March 3, 2008.
The domain name is identical to Complainant’s KHOVNANIAN mark.
Respondent has never been known by the <khovnanian.com> domain name.
Complainant is not associated with, or an endorser of, Respondent.
Complainant has not given Respondent permission to use its K. HOVNANIAN mark.
Respondent is believed to be an officer of a commercial enterprise that provides insurance and real estate services in Complainant’s home state of New Jersey.
Respondent uses the <khovnanian.com> domain name to host commercial ad-vertising links, some of which compete with Complainant’s business.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the K. HOVNANIAN mark when it registered the <khovnanian.com> domain name.
Respondent registered and uses the contested domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the K. HOVNANIAN service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005):
Complainant has established rights in the … mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office.
It would have been open to Respondent to argue that its registration of the con-tested domain name on March 3, 2008, preceded in time Complainant’s regis-tration of the K. HOVNANIAN mark with the USPTO, so that Respondent’s rights in its domain name might supersede Complainant’s rights in its registered mark.
However, Complainant also shows evidence of long and continuous use of the K. HOVNANIAN mark in commerce and of devotion of extensive resources to the development of the mark dating from 1983, as well as resulting marketplace recognition of the mark. This evidence establishes Complainant’s common law rights in the mark which predate, and therefore are senior to, Respondent’s rights in its domain name. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. For-um Aug. 17, 2000), the panel there determining that rights in a mark sufficient to satisfy Policy ¶ 4(a)(i) could be found from evidence of continuous use of the mark, in an open manner, in the stream of commerce.
Accordingly, Complainant has common law rights in its K. HOVNANIAN mark which answer any question of priority vis-à-vis Respondent’s rights, if any, in its domain name.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <khovnanian.com> domain name is confus-ingly similar, and in fact substantively identical, to Complainant’s K. HOVNANIAN mark. The domain name contains the entire K. HOVNANIAN mark, only elimin-ating the space and the period between its terms and adding the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of identity or confusing similarity under the standards of the Policy. See e.g., Hannover Ruck-versicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermis-sible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that under Policy ¶ 4(a)(i), punctuation is not significant in determining the question of confusing similarity as between a domain name and the mark of another from which it was derived).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has never been known by the <khovnanian.com> domain name, that Complainant is not associated with, or an endorser of, Respondent, and that Complainant has not given Respondent permission to use its K. HOVNANIAN mark. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Bill Frankel,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the <khovnanian.com> domain name so as to have acquired rights to or legitimate interests in it with the meaning of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name to meet the test of Policy ¶ 4(c)(ii) where that respondent was not authorized to register a domain name featuring a UDRP complainant’s mark and failed to submit evidence that it was commonly known by that domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <khovnanian.com> domain name to host commercial advertising links, some of which compete with Complainant’s business. This employment of the domain name, which is substantively identical to Complain-ant’s K. HOVNANIAN mark, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (finding that a respondent had not demonstrated a bona fide offering of goods or services by means of, or a leg-itimate noncommercial or fair use of, a disputed domain name where the web-site resolving from the domain name displayed links to websites offering travel products and services that competed with Complainant’s business).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <khovnanian.com> domain name, which is substantively identical to Complain-ant’s K. HOVNANIAN mark, in the manner described in the Complaint disrupts Complainant’s business. This demonstrates bad faith in the registration and use of the domain name as provided in Policy ¶ 4(b)(iii). See, for example, St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the K. HOVNANIAN mark when it registered the disputed domain name. This is independent proof of bad faith registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's mark at the time of its domain name registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <khovnanian.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 26, 2013
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