HomeVestors of America, Inc. v. Matthew Downs
Claim Number: FA1602001659787
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Aaron D. Davidson of Klemchuk LLP, Texas, United States. Respondent is Matthew Downs (“Respondent”), Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <picahomevestor.com>, <picahomevestor.net>, and <picahomevestor.info>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2016; the Forum received payment on February 5, 2016.
On February 5, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <picahomevestor.com>, <picahomevestor.net>, and <picahomevestor.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 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@picahomevestor.com, postmaster@picahomevestor.net, postmaster@picahomevestor.info. Also on February 9, 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 March 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, HomeVestors, began franchising its business in 1996. Complainant has over 600 franchisees in 44 states that operate under strict codes and systems to ensure high ethical standards and responsible business practices.
Complainant is the number one buyer of houses in the United States. Complainant’s franchisees buy homes that are hard to sell and pay cash to owners who are in difficult situations. Complainant franchisees rehabilitate the houses, and then sell or lease them. This process improves neighborhood aesthetics and provides opportunities for first-time homebuyers, other homebuyers, and renters.
Complainant offers low-cost franchising opportunities to investors seeking to enter the business. Its unique business model includes a proprietary software system franchisees use to evaluate single-family homes for purchase and repair, mass market advertising based on high- impact billboard campaigns that quickly achieve nearly universal market awareness, and a direct- selling program that helps franchisees identify buyers or investors who already have a stake in the neighborhood.
Complainant has received numerous honors and awards. In 2015, HomeVestors was recognized as the 19th fastest growing franchise by Entrepreneur Magazine. In 2016, HomeVestors was recognized as number 91 in the Franchise 500 by Entrepreneur Magazine. Furthermore, in 2015, SMU Cox School of Business named HomeVestors as number 28 in the “Dallas 100” fastest- growing private companies based in Dallas. HomeVestors was the only home buying franchise on each of those lists. Also in 2015, and for the tenth consecutive year, HomeVestors was named to Franchise Business Review’s “Top 50 Franchises,” a distinction awarded to franchisors with the highest level of franchisee satisfaction. HomeVestors has built substantial goodwill in its name and business practices among both consumers and its franchisees.
In the provision of these services, Complainant has developed and now possesses extensive valuable rights in its intellectual property. Specifically, Complainant owns a family of marks that it has used continuously and exclusively in commerce for over 15 years. These marks include, but are not limited to: HOMEVESTORS® (Reg. No. 2,721,129); HOMEVESTORS® (Reg. No. 2,894,974); HOMEVESTORS® (Reg. No. 2,216,811); HOMEVESTORS® (Reg. No. 2,402,260); and WE BUY UGLY HOUSES. HOMEVESTORS & Design (collectively, the “HomeVestors’ Marks”).
Complainant began using its HOMEVESTORS mark at least as early as June 21, 1989. Complainant has built substantial brand name recognition through its marks. Over the years, Complainant has spent significant amounts of time and resources in developing its brand and maintaining the goodwill it has built in its trademarks. Complainant’s franchisees have spent over $100 million on advertising over the course of the past 10 years, which includes advertising on the Internet, radio, television, magazines, and billboards seen throughout the country. Complainant’s brand is readily recognizable in the industry and among the general public.
Additionally, Complainant is the owner of the domain name <homevestors.com>, which it registered on November 12, 1996 and from which it has operated an ongoing website using Complainant’s HomeVestors’ Marks since that time (“Complainant’s Website”).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix). [a.] In accordance with UDRP Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i):
The Disputed Domain Name is Confusingly Similar to the Marks in which Complainant has Rights:
The disputed domain names <picahomevestor.com>, <picahomevestor.net> and <picahomevestor.info> are confusingly similar to Complainant’s registered HOMEVESTORS® Marks because the domain names incorporate Complainant’s HOMEVESTORS® Mark, merely adding the letters “pica” at the front end of the domain name and leaving out the “s” at the end. Merely adding letters at the beginning of a domain name does not distinguish Respondent’s domain name from Complainant’s HOMEVESTORS® Mark. The dominant portion of the disputed domain name is virtually identical to the Complainant’s HOMEVESTORS® Mark. Simply adding letters to Complainant’s mark and leaving out the end letter of HOMEVESTORS® Mark fails to detract from the overall commercial impression provided by the HomeVestors’ Marks. See Skechers U.S.A., INC. II v. Bergstein, FA 100309 (Nat. Arb. Forum Nov. 19, 2001) (finding the domain name <sketchers.tv> confusingly similar to Complainant’s SKECHERS mark because it merely added the letter “t” to Complainant’s mark); AT&T Corp. v. Zuccarini, D2001-1503 (WIPO Apr. 3, 2002) (finding the domain name <atttwireless.com> confusingly similar to Complainant's AT&T WIRELESS SERVICES mark because the domain name simply added an extra letter “t” to the term AT&T and merely eliminated the word “SERVICES” from the mark); Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks.”); T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶4(a)(i)); Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding the <aolrj.com> domain name was confusingly similar to complainant’s AOL mark because “. . . the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
[b.] In accordance with UDRP Rule 3(b)(ix)(2); UDRP Policy ¶¶ 4(a)(ii), 4(c):
The Respondent Has No Rights of Legitimate Interests in the Disputed Domain Names:
Upon information and belief, Respondent has not and does not use the disputed domain names in connection with a bona fide offering of goods or services and Complainant has not authorized Respondent to use the HomeVestors’ Marks in domain names.
Respondent is using the disputed domain names to operate websites that provide competing services to Complainant. Respondent is clearly using the disputed domain names as an opportunistic attempt to attract Complainant’s customers to Respondent’s website by creating a likelihood of confusion and blatantly infringing upon Complainant’s trademark rights. Respondent’s use of domain names that are confusingly similar to Complainant’s marks for the purpose of diverting Internet users to Respondent’s websites for its own commercial gain is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. 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). Respondent’s websites clearly show Respondent’s use of Complainant’s mark for Respondent’s commercial gain. Such use is clear trademark infringement and not a bona fide offering of goods or services.
Complainant has not licensed or otherwise permitted Respondent to use any of Complainant’s marks or to apply for or use any domain names incorporating any of Complainant’s marks, including any of Complainant’s HomeVestors’ Marks, and Respondent is not a franchisee of Complainant. In fact, Respondent is blatantly infringing Complainant’s trademark rights in its HOMEVESTORS® Marks by diverting consumers to its website, where Respondent then provides consumers with information about Respondent’s services for Respondent’s own personal gain.
[c.] In accordance with UDRP Rule 3(b)(ix)(3); UDRP Policy ¶¶ 4(a)(iii), 4(b): Respondent Has Registered and Is Using the Disputed Domain Names in Bad Faith:
Respondent registered domain names that are confusingly similar to Complainant’s HOMEVESTORS® Marks, Respondent is not commonly known by the domain name, and such registrations were made and are being used in bad faith. Respondent registered the disputed domain names on March 4, 2015 and filed for an assumed name of “Pica Homevestors” in Nueces County Texas on April 15, 2015, well after the first use and registration of the HomeVestors’ Marks, thus evidencing Respondent’s registration of the domain name in bad faith. See Victoria’s Cyber Secret Ltd. v. Victoria’s Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1349 (S.D. Fla. 2001) (noting “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. §1072); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Respondent is operating websites at the disputed domain names in which it offers information on services that compete with those of Complainant. Such competing services are evidenced in copies of the website pages. With the use of “Pica Homevestors” throughout the website text and within the title meta tags of the source code, Respondent is blatantly attempting to trade off of the goodwill Complainant has developed in its HomeVestors’ Marks.
At the time Respondent registered the disputed domain names, Complainant had registered well-established and extensive trademark rights in the HomeVestors’ Marks. Respondent proceeded to register confusingly similar domain names incorporating Complainant’s mark and operates websites at such domains, competing with Complainant. Four cease and desist letters have been sent to Respondent notifying him of HomeVestors of America, Inc.’s intellectual property rights in the HomeVestors’ Marks and no response or acknowledgement of the letters has been made, though the letters were all received by the addressee. Respondent’s conduct, knowing full well he has no right to use Complainant’s marks, demonstrates he is knowingly, willfully, and with a bad faith intent, trading on the value of, and interfering with, Complainant’s rights in its HomeVestors’ Marks. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Abr. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding because the link between 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”); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding the respondent does not have rights in a domain name when the respondent is not known by the mark); 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.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 (through its franchisees) is the number one buyer of houses in the United States. Complainant’s franchisees buy hard to sell homes and pay cash to owners who are in difficult financial situations. Complainant’s franchisees rehabilitate the houses and then sell or lease them for a profit. Complainant registered the HOMEVESTORS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,216,811, registered June 12, 1999). Complainant’s USPTO registration adequately demonstrates its rights in this mark. A complainant can demonstrate its rights to a mark under Policy ¶ 4(a)(i) by demonstrating a registration with any governmental trademark authority. 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)). Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant claims the <picahomevestor.com>, <picahomevestor.net>, and <picahomevestor.info> domains are confusingly similar to Complainant’s mark because they incorporate the bulk of Complainant’s mark, add the letters “pica” at the front end of the domain and leaving out the letter “s” at the end. The letters “pica” are merely descriptive terms (especially when considered phonetically) which do nothing to differentiate the disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). Previous panels have held neither the addition of letters to a complainant’s mark nor the removal of the letter “s” from the mark serves to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). Respondent adds the gTLDs “.com,” “.net,” and “.info.” A TLD must be disregarded when conducting a Policy ¶ 4(a)(i) analysis because every domain name is required to have a TLD. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Respondent has no license or other authorization to use Complainant’s mark (in a domain name or otherwise). The WHOIS information merely currently lists “Matthew Downs” as registrant (the registration was only disclosed once this Proceeding began because Respondent used a privacy service). There is no obvious connection between Respondent’s name and the disputed domain names. Respondent has failed to provide any evidence to the contrary for the Panel’s consideration. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding 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 the respondent was commonly known by the disputed domain name).
Complainant claims Respondent is not using the disputed domain names in connection with (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use. Respondent uses its domains to operate websites to provide competing real estate services. A respondent’s use of domain names to promote products and services in direct competition with a complainant’s business is neither (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use. 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).”). Respondent is not using the domains 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 registered the domain names using a privacy service. This means Respondent has done nothing to publicly associate itself with the disputed domain names. As far as this Panel can determine from conducting brief outside research, area code 361 is in Georgia. There is no Georgia corporation known as Pica HomeVestors, Inc. The Texas corporation database cannot be searched for free. In light of the lack of information, it seems pretty clear there is no entity known as Pica HomeVestors, Inc. Therefore, the information on the web site is misleading about who the Respondent is (because it refers to a non-existent corporation). Respondent’s name is nowhere mentioned on the websites. Respondent acquires no rights by lying to the public about who Respondent is.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent operates websites at the domains which compete with Complainant and this disrupts Complainant’s business. A respondent’s use of a domain to sell products and/or services that are in direct competition with a complainant’s business is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). This is especially true since Respondent has not disclosed its identity in any meaningful way, making it likely the public will confuse Complainant and Respondent. Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant claims Respondent uses the domains to sell products and services that compete directly with Complainant’s business and this constitutes bad faith registration and use under Policy ¶ 4(b)(iv). A respondent demonstrates bad faith registration and use where it used a domain to operate websites that competed directly with a complainant’s business. 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). Respondent registered and is using the domains in bad faith under Policy ¶ 4(b)(iv).
Complainant claims Respondent registered the domains with actual knowledge of Complainant’s mark. Complainant relies mainly on its well-established and extensive trademark rights in its HOMEVESTORS marks. When a respondent is well-aware of a complainant’s mark at the time of the domain registration, this demonstrates bad faith registration and use 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). That would seem to fit this case. Respondent registered the domain name using a privacy service. The disclosure on the web site suggests Pica HomeVestors, Inc. does not exist. There is no mailing address with physical contact information…just a Georgia area code telephone number (and no such corporation exists in Georgia nor is there a foreign corporation by that name registered to do business in Georgia). Respondent just happens to be one of Complainant’s direct competitors. It seems clear Respondent registered and uses the disputed domain names with actual knowledge of Complainant’s mark in violation of Policy ¶4(b)(iii) and Policy ¶ 4(b)(iv).
Finally, Respondent registered the disputed domain names using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith use and registration. Respondent has done nothing to rebut that presumption. For that reason alone, the Panel can (and does) find bad faith registration and use.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <picahomevestor.com>, <picahomevestor.net>, and <picahomevestor.info> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, March 9, 2016
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