HomeVestors of America, Inc. v. G. Rodney Turner
Claim Number: FA1405001560275
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Darin M. Klemchuk of Klemchuk Kubasta LLP, Texas, USA. Respondent is G. Rodney Turner (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jthomevestors.com>, registered with GODADDY.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 May 20, 2014; the National Arbitration Forum received payment on May 20, 2014.
On May 20, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <jthomevestors.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.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 May 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@jthomevestors.com. Also on May 21, 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.
A timely Response was received and determined to be complete on June 9, 2014.
On June 19, 2014, 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 was founded in 1989 and began a franchising business in 1996, which expanded into 38 states and over 400 franchises. It is the number one buyer of houses in the United States and has been awarded numerous honors and awards, with high rankings in terms of the fastest growing franchises.
Complainant owns the HOMEVESTORS mark (through its registrations with the USPTO (Registration Nos. 2 216 811, 2 402 260, 2 894 974 and 2 721129). Use of the HOMEVESTORS mark began as early as June 21, 1989. It has substantial goodwill in its name and business practices among consumers and its franchisees. It spent over $100 million on advertising over the course of the past ten years, by way of television, radio, magazine, Internet and billboard advertising across the country. The HOMEVESTORS mark has become well known to designate Complainant’s business.
Complainant has a domain name registration for <homevestors.com> which it registered on November 12, 1996. It has operated its website from that domain name since then.
The disputed domain name is confusingly similar to Complainant’s HOMEVESTORS mark. It incorporates Complainant’s HOMEVESTORS mark in its entirety, and the addition of the letters “JT” at the front end of the domain name does not distinguish the disputed domain name from Complainant’s mark.
Respondent has no rights or legitimate interests in respect of the disputed domain name. It has not used the disputed domain name in connection with a bona fide offering of goods and services and Respondent was not authorized by Complainant to use the HOMEVESTORS mark in a domain name. Respondent is using the disputed domain name to operate a website that promotes and providers services that compete with Complainant’s.
Respondent has registered and is using the disputed domain name in bad faith. The disputed domain name was registered on February 27, 2013, well after the first use registration of Complainant’s HOMEVESTORS mark. Respondent is blatantly attempting to trade off of the goodwill Complainant has developed in its HOMEVESTORS mark through its website offering competing services. At the time Respondent registered the disputed domain name, Complainant had well-established trademark rights in its HOMEVESTORS mark. Three cease and desist letters sent to Respondent notifying him of Complainant’s intellectual property rights in its trade marks were not responded to nor acknowledged. This demonstrates a knowing, willful intent to trade on the value of, and interfere with, Complainant’s rights in the HOMEVESTORS mark.
B. Respondent
Respondent submitted a response by way of letter stating that its company, J.T. Homevestors LLC was founded in 2013 and registered with the Texas Secretary of State. The State of Texas did not raise concern over the registration.
Respondent does not exhibit to be part of Complainant nor does it represent itself as one of its franchisees. There are many different companies with “homes” and “homevestors in their name” and Complainant should not be allowed to monopolize the use of the word as it sees fit.
(a) The disputed domain name is confusingly similar to the HOMEVESTORS trade mark in which Complainant has rights.
(b) The Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and 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.
The Complainant has established it has trademark rights (both by way of registration and under common law) to HOMEVESTORS. The Panel is of the view that the disputed domain name is confusingly similar to the HOMEVESTORS mark. The only difference between the disputed domain name and the HOMEVESTORS trade mark is the addition of the letters “jt” and the generic TLD “.com”. It is a well-accepted principle, when considering the issue of whether a domain name is identical or confusingly similar, that the generic top level domain is to be disregarded. As the HOMEVESTORS mark is incorporated in its entirety in the disputed domain name and clearly identifiable, the Panel finds that paragraph 4(a)(i) of the Policy has been established by the Complainant.
Many previous UDRP decisions (see e.g. Hanna-Barbera Prods, Inc. v. Entm’t Commentaries, FA 741828, Nat. Arb. Forum, August 18, 2006; AOL LLC v. Gerberg, FA 780200, Nat. Arb. Forum, September 25, 2006) have established the principle that complainants are obliged to establish a prima facie case that the respondent lacks rights or legitimate interests in respect of the disputed domain name and then the burden shifts to the respondent to prove otherwise.
The Panel finds that Complainant has established a prima facie case in this case.
Paragraph 4(c) of the Policy provides that any of the following circumstances, if found to exist, would demonstrate Respondent’s rights or legitimate interests in respect of the disputed domain name:
“(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Panel finds Respondent to have failed to establish he has legitimate rights or interests in relation to the disputed domain name. His statement that the company was founded and registered in 2013 is not substantiated with supporting evidence and in any event, does not show that Respondent has been commonly known by the disputed domain name. The use of the disputed domain name incorporating a well-known mark of Complainant in relation to real estate investment services which are competing in nature does not constitute a bona fide offering of services nor a legitimate noncommercial or fair use.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been established by Complainant.
Paragraph 4(b) of the Policy sets out that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel concludes, after due consideration of the evidence in this case, that Respondent’s registration and use of the disputed domain name have been in bad faith. The Panel notes that Respondent did not at any point deny having prior knowledge of Complainant and/or of its HOMEVESTORS trade mark. He did not do so in his response by letter. Neither did he respond to Complainant’s cease and desist letters.
Respondent could have offered an explanation of how he came to independently (and coincidentally) choose the disputed domain name which contains the HOMEVESTORS mark, which might have served to demonstrate a legitimate right or interest in the disputed domain name, and that the registration was made in good faith. On a preponderance of the evidence, in particular the fact that the parties are competitors in the real estate investment market, the disputed domain name incorporates a high profile trade mark which has been in use since 1989, and the disputed domain name has been used to operate a website in competition with Complainant, Panel concludes that the registration and use have been in bad faith, and falls within the circumstances set out in paragraph 4(b)(iv) of the Policy. This finding is consistent with the decisions of previous panels where evidence of bad faith was found in circumstances where the respondents used the domain names in dispute to operate websites in competition with the complainant (see e.g., MathForum.com, LLC v. Weiguang Huang, D2000-0743, WIPO, August 17, 2000); Computerized Sec. Sys., Inc. v Hu, FA 157321 (Nat. Arb. Forum, June 23, 2003)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jthomevestors.com> domain name be TRANSFERRED from Respondent to Complainant
Francine Tan, Panelist
Dated: July 2, 2014
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