HomeVestors of America, Inc. v. Mitch Painter
Claim Number: FA1210001465371
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Remy M. Davis of Klemchuk Kubasta LLP, Texas, USA. Respondent is Mitch Painter (“Respondent”), represented by J. Thomas Hodges, Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webuyuglyhousescincinnati.com>, registered with 1 & 1 Internet AG.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2012; the National Arbitration Forum received payment on October 2, 2012.
On October 10, 2012, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <webuyuglyhousescincinnati.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 October 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2012 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@webuyuglyhousescincinnati.com. Also on October 11, 2012, 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 October 26, 2012.
On November 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant began its business in 1989, buying houses that are difficult to sell and paying cash to the homeowners. Complainant rehabilitates the purchased house and leases or sells the home after remodeling is complete. Complainant began franchising its business in 1996 and currently operates approximately 200 franchisees in 33 states under the WE BUY UGLY HOUSES mark. Complainant has been recognized as the recipient of several business honors and noted in business magazines as one of the fastest-growing private companies in the country. Complainant uses billboard campaigns that increase its market presence and has achieved a “nearly universal market awareness” of its name.
Complainant owns trademark registrations for its WE BUY UGLY HOUSES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,000,705 registered September 27, 2005). Complainant owns the domain name <webuyuglyhouses.com>, which it registered on June 5, 2000.
Respondent registered the <webuyuglyhousescincinnati.com> domain name on August 21, 2011. The disputed domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark. Respondent is not commonly known by the <webuyuglyhousescincinnati.com> domain name, and Respondent is not licensed to use the mark, nor is Respondent a franchisee of Complainant.
Respondent uses the <webuyuglyhousescincinnati.com> domain name to divert Internet users to its own commercial site, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Respondent registered and uses the disputed domain name in bad faith by offering competing services at a confusingly similar domain name.
B. Respondent
Respondent contends as follows:
Respondent claims that Complainant does not adequately show that its business interests are harmed by Respondent’s registration and use of the <webuyuglyhousescincinnati.com> domain name.
Respondent alleges that Complainant does not prove that visitors confuse Respondent’s domain name with Complainant’s WE BUY UGLY HOUSES mark.
Respondent was engaged in the real estate business prior to registering the <webuyuglyhousescincinnati.com> domain name by “flipping” and managing properties as a student at the University of Cincinnati.
Respondent became successful in acquiring real estate in Cincinnati. Respondent registered the <webuyuglyhousescincinnati.com> domain name on August 21, 2011 in order to present his business online and expand his services.
Respondent uses the disputed domain name as a legitimate extension of his business and does not use the domain name in bad faith.
Complainant owns trademark registrations for its WE BUY UGLY HOUSES mark with the USPTO.
Respondent registered the at-issue domain name subsequent to the Complainant acquiring rights in the WE BUY UGLY HOUSES mark.
Complainant has not authorized Respondent to use its trademark nor is Respondent related to Complainant as a franchisee.
Respondent is using the at-issue domain name to host a website which concerns real estate and which competes with Complainant’s real estate business. Respondent presumably profits, or intends to profit, from such use of the domain name.
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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Through its USPTO trademark registrations, Complainant demonstrates rights in its WE BUY UGLY HOUSES mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), (finding that a complainant’s trademark registration with the USPTO met the requirements of Policy ¶ 4(a)(i)).
The at-issue domain name incorporates Complainant’s entire mark sans spaces, adds the geographic identifier “Cincinnati,” and appends the top level domain name, “.com” thereto. Notwithstanding these inconsistencies between Complainant’s mark and the at-issue domain name, the Panel concludes that the <webuyuglyhousescincinnati.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES trademark pursuant to Policy ¶ 4(a)(i). See 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)).
The Panel notes that Respondent’s bald assertion that Complainant needs to show that its “business interests have been harmed” by the domain name in order to prove “confusing similarity” under Paragraph 4(a)(i), is without merit. There simply is no such requirement. Likewise, there is no requirement that Complainant must plead and prove “actual confusion” as Respondent also claims.
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances present from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). The fact that Respondent is not licensed to use Complainant’s trademark nor associated in any manner with the Complainant urges that Complainant has made out a prima facie case for finding that Respondent lacks rights and interests in respect of the domain name. The Panel must next consider whether or not the presence of any of the three particular circumstances set forth under Paragraph 4(c) justifies a contrary finding.
Respondent is not commonly known by the <webuyuglyhousescincinnati.com> domain name. WHOIS information identifies “Mitch Painter” as the registrant of the at-issue domain name. Respondent claims he is in the real estate business of rehabilitating houses, but does not mention the name of his business. Additionally, there is no evidence that otherwise tends to prove that, notwithstanding the aforementioned WHOIS record, Respondent is commonly known by the <webuyuglyhousescincinnati.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <webuyuglyhousescincinnati.com> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the <webuyuglyhousescincinnati.com> domain name to infringe on Complainant’s trademark rights in order to benefit Respondent’s competing business. That Respondent uses the domain name in relation to his real estate business and that such business may have existed prior to registering the domain name, does not vitiate Respondent’s improper use of a confusingly similar domain name to trade on Complainant’s mark. Therefore, the Panel concludes that Respondent use of the domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 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).
Given the foregoing, Complainant satisfies its burden and there is no basis from which the Panel may find that Respondent otherwise demonstrates rights or interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent’s bad faith registration and use of the <webuyuglyhousescincinnati.com> domain name is revealed by his operation of a website that offers services competing with those offered by Complainant. Using the domain name in this manner disrupts Complainant’s business and demonstrates bad faith under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), (holding that the respondent appropriated the complainant’s mark in order to lure the complainant’s customers to the respondent’s competing business, which was evidence of bad faith registration and use).
Furthermore, the Panel finds that Respondent registered the <webuyuglyhousescincinnati.com> domain name with knowledge of Complainant, and Complainant’s trademark rights, in the WE BUY UGLY HOUSES mark. Respondent does not refute this contention anywhere in his pleadings and Respondent’s use of the domain name to host a competing website is, in itself, compelling evidence of Respondent’s actual knowledge of Complainant’s rights in the WE BUY UGLY HOUSES mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").Registering and using a domain name with actual knowledge of another’s rights in a trademark that is confusingly similar, shows bad faith registration and use of the domain name 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).
Finally, Respondent offers no evidence whatsoever which justifies the use of the at-issue confusingly similar domain name in connection with his real estate business. Although Respondent does not dispute that Complainant has trademark rights in the WE BUY UGLY HOUSES mark, Respondent nevertheless denies that he registered the <webuyuglyhousescincinnati.com> domain name in bad faith ostensibly, and exclusively, because he conducted a legitimate real estate business for years prior to the instant dispute and prior to registering the <webuyuglyhousescincinnati.com> domain name. However, these circumstances in no way demonstrate that Respondent acted in good faith when he registered the at-issue domain name since , as discussed elsewhere herein, Respondent uses the domain name in a manner that impermissibly capitalizes on Complainant’s trademark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webuyuglyhousescincinnati.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 15, 2012
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