HomeSmart International, LLC v. Domain Vault / Domain Vault LLC
Claim Number: FA1512001652791
Complainant is HomeSmart International, LLC (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Domain Vault / Domain Vault LLC (“Respondent”), represented by Gary N. Schepps, Texas USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homesmart.com>, registered with Name.com, Inc.
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 Forum electronically on December 16, 2015; the Forum received payment on December 17, 2015.
On December 17, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <homesmart.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 December 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2016 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@homesmart.com. Also on December 18, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
PARTIES’ CONTENTIONS
A. Complainant
Complainant made the following contentions.
Complainant uses the HOMESMART mark to represent its business
brokerage services in the real estate industry. Complainant has rights in the HOMESMART mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,746,858, registered February 09, 2010). Respondent’s <homesmart.com> domain name is confusingly similar to the HOMESMART mark as it incorporates the mark entirely while eliminating spacing between the words of the mark and appending the top-level domain (“TLD”) “.com.”
Respondent has no rights or legitimate interest in the <homesmart.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial fair use through the <homesmart.com> domain name. Rather, the domain name resolves to a website containing hyperlinks which ostensibly resolve to direct competitors of Complainant and from which Respondent presumably receives pay-per-click profits.
Respondent is using the <homesmart.com> domain name in bad faith. Respondent’s use of the website serves as a disruption of Complainant’s legitimate business purpose. Respondent has attempted to attract internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation or endorsement of the website. Furthermore, Respondent had actual and constructive notice of the HOMESMART mark and Complainant’s rights therein because of the mark’s fame, notoriety and multiple trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of the provision of brokerage services in the real estate industry.
2. Complainant has rights in the HOMESMART mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,746,858, filed Aug.22, 2001, registered February 09, 2010).
3. The <homesmart.com> domain name was registered on December 27, 2001. However, Complainant submits that Respondent registered or acquired the disputed domain name between 2013 and 2015 after the initial registrant came out of receivership.
4. The domain name resolves to a website containing hyperlinks which ostensibly resolve to direct competitors of Complainant and from which Respondent presumably receives pay-per-click profits.
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(f), 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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the HOMESMART mark to represent its business brokerage services in the real estate industry. Complainant claims to have rights in the HOMESMART mark pursuant to its registration with the USPTO (e.g., Reg.No.3,074,144, filed Aug.22, 2001, registered Mar.2006), arguing such registration demonstrates rights in a mark. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). 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)). In addition, the Panel observes that the relevant date of rights in a registered trademark is that date the application for said mark was filed. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Accordingly, the Panel finds that Complainant’s rights in the HOMESMART mark date back to August 22, 2001, a date that predates that creation of the <homesmart.com> domain name.
The second issue that arises is whether the disputed <homesmart.com> domain name is identical or confusingly similar to Complainant’s HOMESMART mark. Complainant contends that Respondent’s <homesmart.com> domain name is identical or confusingly similar to the HOMESMART mark as it incorporates the mark entirely while eliminating spacing between the words of the mark and appending the “.com” gTLD. Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ (a)(i). See Fed’s of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); See also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).Therefore, the Panel agrees that Respondent’s <homesmart.com> domain name is identical to the HOMESMART 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 HOMESMART mark and to use it in its domain name which is identical to the mark;
(b) The <homesmart.com> domain name was registered on December 27, 2001. However, Complainant submits and the Panel accepts that Respondent registered or acquired the disputed domain name between 2013 and 2015 after the initial registrant of the domain name came out of receivership and after Complainant’s trademark had been registered;
(c) The domain name resolves to a website containing hyperlinks which ostensibly resolve to direct competitors of Complainant and from which Respondent presumably receives pay-per-click profits;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <homesmart.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes Complainant’s attached Exhibit T, which includes the WHOIS information regarding the disputed domain name, listing “Name.com, Inc.” as the registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence the Panel finds that there is no basis to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
(f) Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <homesmart.com> domain name. Rather, Complainant contends that the domain name resolves to a website containing hyperlinks which purportedly resolve to direct competitors of Complainant and from which Respondent presumably nets pay-per-click profits. See Compl., at Attached Ex. U. Panels have found such uses by a respondent to evince neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, the Panel agrees that Respondent’s <homesmart.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) & (iii).
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 name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith:
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 maintains that Respondent’s use of the <homesmart.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. See Compl., Attached Ex. U (hyperlinks include “Rent to Own Homes”, “Foreclosures Homes for Sale”, and “Low Income Homes for Rent”). Panels have agreed where a respondent has purported to divert internet users to competitors of a complainant via hyperlinks related to such a complainant’s legitimate business, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent’s <homesmart.com> domain name falls within the purview of Policy 4(b)(iii).
Secondly, Complainant contends that Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation or endorsement of the website. The Panel agrees with Complainant and holds that Internet user confusion which subsequently results in the clicking of included hyperlinks awards Respondent with click-through fees, constituting bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Thirdly, Complainant contends that in light of the fame and notoriety of Complainant’s HOMESMART mark, it is inconceivable that Respondent could have registered the <homesmart.com> domain name without actual and constructive knowledge of Complainant’s rights in the mark. The Panel notes that arguments of bad faith based on constructive notice have generally not been found to be persuasive. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). However, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <homesmart.com> domain name using the HOMESMART mark and in view of the conduct that Respondent engaged in when using 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 <homesmart.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 18, 2016
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