HomeVestors of America, Inc. v. STL Homebuyers, LLC / Matt Midden
Claim Number: FA1402001544114
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Darin M. Klemchuk of Klemchuk Kubasta LLP, Texas, USA. Respondent is STL Homebuyers, LLC / Matt Midden (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webuyuglyhousesstlouis.org>, registered with GoDaddy.com, LLC (R91-LROR).
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 18, 2014; the National Arbitration Forum received payment February 18, 2014.
On February 18, 2014, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <webuyuglyhousesstlouis.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2014, 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@webuyuglyhousesstlouis.org. Also on February 19, 2014, 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 March 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson sits as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Policy ¶ 4(a)(i)
a. Complainant offers low-cost franchising opportunities to investors seeking to enter the real estate business, and its franchisees go on to buy homes that are hard to sell and pays cash to owners who are in difficult situations. Complainant’s franchisees rehabilitate the houses, and then sell or lease the homes.
b. Complainant is the number one buyer of houses in the United States, and has operated under the WE BUY UGLY HOUSES mark since at least as early as March 1, 2000.
c. Complainant owns a family of related marks, including the WE BUY UGLY HOUSES mark. See, e.g., United States Patent and Trademark Office (“USPTO”) Reg. No. 2,999,705 registered September 27, 2005.
d. Complainant owned and operated the <webuyuglyhouses.com> domain name since June 5, 2000.
e. The disputed domain name <webuyuglyhousesstlouis.org> is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark because the domain name incorporates Complainant’s mark in its entirety, merely adding a geographic descriptor referring to the City of St. Louis at the end.
2. Policy ¶ 4(a)(ii)
a. Respondent is not now and has never been commonly known by the <webuyuglyhousesstlouis.org> domain name.
i. Complainant has not authorized Respondent to use its marks in a domain name.
ii. Respondent is not a franchisee of Complainant.
iii. The WHOIS information on file identifies “Matt Midden” as the registrant name and “STL Homebuyers, LLC” as the registrant organization.
b. Respondent has not and does not use the disputed domain name in connection with a bona fide offering of goods or services.
i. Respondent is using the disputed domain name to operate a website that provides services seeking to compete with Complainant. Respondent’s website offers information on services that compete with those of Complainant and offers a “Submit Now” form for obtaining consumer information for Respondent’s services. See Complainant’s Exhibit E.
ii. Respondent uses the phrase “We Buy Ugly Houses” in the title section of its web page, throughout the website text, and repeatedly within the meta tags of the source code.
3. Policy ¶ 4(a)(iii)
a. Respondent registered a confusingly similar domain name, incorporating Complainant’s entire mark, and operates a website at such domain name that competes with Complainant.
b. Respondent is using the disputed domain name to attract Complainant’s customers to Respondent’s website, for commercial gain, by creating a likelihood of confusion and blatantly infringing upon Complainant’s trademark rights.
c. Respondent’s registered <webuyuglyhousesstlouis.org> knowing full well that it had no right to use Complainant’s mark in the domain name.
1. The Panel notes that Respondent registered <webuyuglyhousesstlouis.org> January 9, 2013.
Complainant established that it has rights to and legitimate interests in the disputed domain name containing Complainant’s protected rights.
Respondent has no such rights or legitimate interests in the mark and domain name.
The disputed domain name is confusingly similar to Complainant’s protected rights.
Respondent registered and used Complainant’s mark in a domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant claims to be the number one buyer of houses in the United States, operating under the WE BUY UGLY HOUSES mark since at least as early as March 1, 2000. Complainant claims to have owned and operated the <webuyuglyhouses.com> domain name since June 5, 2000. Complainant states that it owns USPTO registrations for a family of related marks, including the WE BUY UGLY HOUSES mark. See, e.g., Reg. No. 2,999,705 registered September 27, 2005. The Panel agrees that Complainant’s USPTO registrations establish Complainant’s rights in the WE BUY UGLY HOUSES mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <webuyuglyhousesstlouis.org> is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark, as the domain name incorporates Complainant’s mark in its entirety, merely adding a geographic descriptor referring to the city of St. Louis at the end. The Panel notes that the disputed domain name also removes the spaces between words in Complainant’s mark and affixes the generic top-level domain (“gTLD”) “.org.” Previous panels have discounted spaces and gTLDs in the evaluation of confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.) This Panel agrees that Respondent’s addition of a term that appears to be a geographic descriptor is insufficient to distinguish the domain name and the Panel finds that Respondent’s <webuyuglyhousesstlouis.org> is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark for the purposes of Policy ¶ 4(a)(i). See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to 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 of proof shifts to Respondent to show it does have such 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 contends that Respondent is not now, and has never been, commonly known by the <webuyuglyhousesstlouis.org> domain name. Complainant maintains that it has not authorized Respondent to use its marks in a domain name, adding that Respondent is not a franchisee of Complainant. Complainant notes that the WHOIS information on file identifies “Matt Midden” as the registrant’s name and “STL Homebuyers, LLC” as the registrant organization. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) concluded that a respondent was not commonly known by a disputed domain name where no evidence in the record shows that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name. In light of the evidence in the record, the Panel similarly finds that Respondent is not commonly known by the <webuyuglyhousesstlouis.org> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further contends that Respondent has not and does not use the disputed domain name in connection with a bona fide offering of goods or services. According to Complainant, Respondent is using the disputed domain name to operate a website that provides competing services to Complainant. Complainant says Respondent’s website offers information on services that compete with those of Complainant and offers a “Submit Now” form for obtaining consumer information for Respondent’s services. See Complainant’s Exhibit E. Complainant adds that Respondent uses the phrase “We Buy Ugly Houses” in the title section of its web page, throughout the website text, and repeatedly within the meta tags of the source code. Past panels have found that a respondent’s use of a complainant’s mark in a domain name and on its resolving website in order to market competing goods or services evidences a lack of rights and legitimate interests in that domain. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent uses the <webuyuglyhousesstlouis.org> domain name in connection with neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant alleges that Respondent registered a confusingly similar domain name, incorporating Complainant’s entire mark, and operates a website at such domain name that competes with Complainant. The Panel again notes Complainant’s assertion that Respondent uses the <webuyuglyhousesstlouis.org> domain name to operate a website that provides competing services to Complainant. See Complainant’s Exhibit E. Panels have agreed that the provision of competing products or services at a domain name, which incorporates a complainant’s mark illustrates bad faith disruption of the complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore finds that Respondent’s use of the <webuyuglyhousesstlouis.org> domain name to provide home buying services that compete with those offered by Complainant suggests Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).
Complainant next alleges that Respondent is using the disputed domain name to attract Complainant’s customers to Respondent’s website, for commercial gain, by creating a likelihood of confusion and blatantly infringing upon Complainant’s trademark rights. In addition to offering similar services as those provided by Complainant under its marks, the Panel notes that Complainant claims Respondent uses the phrase “We Buy Ugly Houses” in the title section of its web page, throughout the website text, and repeatedly within the meta tags of the source code. See Complainant’s Exhibit E. The Panel considers this evidence to show that Respondent intended to create confusion with Complainant in the minds of consumers. The Panel finds that Respondent generates a commercial gain from the services advertised on its website and finds that such intent and use demonstrate Respondent’s bad faith pursuant to g to Policy ¶ 4(b)(iv). 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).
Finally, Complainant alleges that Respondent registered <webuyuglyhousesstlouis.org> knowing full well that it had no right to use Complainant’s mark in the domain name. Complainant notes that it had already registered the WE BUY UGLY HOUSES mark with the USPTO by the time Respondent registered the disputed domain name. The Panel notes, however, that modern UDRP case precedent decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). That is not an issue here; the Panel finds that Respondent‘s reference to Complainant’s mark and use in the same commercial area are evidence that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge supports findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webuyuglyhousesstlouis.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 31, 2014.
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