Shea Homes Limited Partnership v. ICS Inc
Claim Number: FA1602001658971
Complainant is Shea Homes Limited Partnership (“Complainant”), represented by Robert J. Itri of Milligan Lawless, P.C., Arizona, United States. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mysheahomes.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2016; the Forum received payment on February 1, 2016.
On February 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mysheahomes.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 February 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@mysheahomes.com. Also on February 2, 2016, 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 February 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
A. Complainant
Complainant is one of the largest, privately owned real estate developers in the United States. Since at least 1976, Complainant has used the SHEA HOMES mark in connection with the promotion of its real estate development and real estate services. Complainant registered the SHEA HOMES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,246,327, registered May 29, 2007), which demonstrates Complainant’s rights in its mark. The <mysheahomes.com> domain is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety, eliminates the spacing between the words of Complainant’s mark, adds the generic term “my,” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its domain in connection with a website that hosts hyperlinks, a number of which are directly competitive with Complainant’s business.
Respondent registered and is using the domain name in bad faith. Respondent’s website resolves to a general offer to sell the domain. Respondent is a serial cybersquatter, having engaged in bad faith more than one hundred times. Further, Respondent’s use of its domain to host competing hyperlinks disrupts and competes with Complainant’s business. Also, Respondent’s attempt to redirect Internet users to listings for which Respondent presumably receives click-through fees constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Finally, Respondent registered the disputed domain with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Shea Homes Limited Partnership of Scottsdale, AZ, USA. Complainant owns the domestic registration for the mark SHEA HOMES, which it has continuously used since at least as early as 1976, in connection with the promotion of its real estate development and real estate sales services.
Respondent is ICS Inc., Grand Cayman, Cayman Islands. Respondent’s registrar’s address is listed as Scottsdale, AZ. The Panel notes that the disputed domain name was registered on or about December 16, 2012.
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.”).
Complainant is one of the largest, privately owned real estate developers in the United States. Since at least 1976, Complainant has used the SHEA HOMES mark in connection with the promotion of its real estate development and real estate services. Complainant registered the SHEA HOMES mark with the USPTO (Reg. No. 3,246,327, registered May 29, 2007). Complainant asserts that its USPTO registration demonstrates its rights in the mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel here finds that Complainant has demonstrated its rights in the SHEA HOMES mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <mysheahomes.com> domain is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety, eliminates the spacing between the words of Complainant’s mark, adds the generic term “my,” and adds the gTLD “.com.” Previous panels have found evidence of confusing similarity where a respondent’s domain eliminates the spacing between the words of a complainant’s mark or adds a generic term. See 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)); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). The Panel here finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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), 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information lists “ICS Inc” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel finds no basis in the available record to conclude that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its domain in connection with a website that hosts hyperlinks, a number of which are directly competitive with Complainant’s business. Prior panels have held that a respondent’s use of a domain to display competing hyperlinks does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to 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) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel here finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends that Respondent is a serial cybersquatter, engaging in bad faith more than one hundred times. Complainant provided a list of Forum and World Intellectual Property Organization adverse rulings against Respondent. Past panels have held that a respondent’s prior UDRP proceedings were sufficient evidence of a pattern of bad faith pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel here finds that Respondent registered and is using the domain in bad faith under Policy ¶ 4(b)(ii).
Complainant alleges that Respondent’s use of its domain to host competing hyperlinks disrupts and competes with Complainant’s business. Prior panels have determined that a respondent’s use of a domain to display hyperlinks to products and/or services that are in direct competition with a complainant’s business is evidence of bad faith registration and use per Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel here finds that Respondent has engaged in bad faith registration and use.
Complainant asserts that Respondent’s attempt to redirect Internet users to competitive listings for which Respondent presumably receives click-through fees constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Past panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain resolves to a website that displays competing hyperlinks. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel here finds that the above actions further support the conclusion that Respondent registered and is using the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <mysheahomes.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 8, 2016
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