Seliger Ideas, Inc. v. James Vasquez
Claim Number: FA1610001699016
Complainant is Seliger Ideas, Inc. (“Complainant”), represented by Nathan P. Suedmeyer of Larson & Larson, P.A., Florida, USA. Respondent is James Vasquez (“Respondent”), represented by Zak Muscovitch of The Muscovitch Law Firm, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <needtosellmyhouse.com>, registered with Dynadot, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Richard DiSalle, W. Scott Blackmer and Sandra J. Franklin as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 20, 2016; the Forum received payment on October 20, 2016.
On October 20, 2016, Dynadot, LLC confirmed by e-mail to the Forum that the <needtosellmyhouse.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 October 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@needtosellmyhouse.com. Also on October 21, 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.
A timely Response was received and determined to be complete on November 14, 2016.
On November 22, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed
Richard DiSalle as Panelist;
W. Scott Blackmer as Panelist; and
Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a real estate investment company that buys houses and connects distressed homeowners with local homebuyers. Complainant operates with the NEED TO SELL MY HOUSE FAST mark, which it has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,881,460, first use Jan. 30, 2014, filed June 4, 2015, registered Jan. 5, 2016). Respondent’s <needtosellmyhouse.com> is nearly identical to the mark, save for the elimination of spacing between words of the mark and the term “FAST,” and the addition of “.com.”
Respondent has no rights or legitimate interests in <needtosellmyhouse.com>. Respondent is not commonly known by <needtosellmyhouse.com> and is not a licensee of Complainant. In addition, Respondent advertises its services for providing real estate leads to prospective services as well as real estate acquisition services and real estate brokerage services. This is identical to Complainant’s, and shows that Respondent is intentionally misleading and diverting Internet users away from Complainant.
Respondent registered and used <needtosellmyhouse.com> in bad faith. As a threshold matter, Respondent registered the domain name between June 30, 2015 and July 2, 2015 because Annex 26 demonstrates that on June 30, 2015 the owner of the domain name is listed as Justdropped.com Inc., and on July 2, 2015, the owner is listed as James Vasquez. Primarily, Respondent registered the domain name to disrupt Complainant’s business through offering identical and competing services.
B. Respondent
Complainant and Respondent are competitors within the distressed real estate lead generation market. Complainant acquired trademark rights after Respondent registered the domain name. Respondent purchased the domain name from the previous registrant on or about June 30, 2015 for $1,200.00.
The terms of the domain name are ubiquitous and commonly used in the real estate context. The terms of the domain name are also different from Complainant’s NEED TO SELL MY HOUSE FAST mark. Nobody has rights in or to the NEED TO SELL MY HOUSE mark, lacking the FAST portion. While the mark and the domain may be similar, they are not confusingly similar because small differences matter in this context. Therefore, there is no confusing similarity.
Respondent has operated with a bona fide interest as it has developed a robust website, spent considerable sums on advertising and marketing, and has spent a great deal of time and effort on the website. In addition, Respondent has generated 4,811 leads, which it has sold to third parties. Respondent rightfully and reasonably believed that it was entitled to register and use the domain name.
Respondent did not register or use the disputed domain name in bad faith. Respondent denies that the commonalities which Complainant claims fail to show that Respondent’s website copies the Complainant’s website or that there was any substantial copying of text to which Complainant had exclusive rights.
(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 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.
As to the issue of whether this trademark dispute is outside the scope of the UDRP, the Panel determines its own jurisdiction and chooses to consider the Complaint and issue an order. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Telebrands Corp. v. Khalid, FA 467079 (Forum May 31, 2005) (decided to proceed with the dispute over the <telebrandspakistan.com> even though both the complainant and the respondent had registered marks in TELEBRANDS and TELE BRANDS PAKISTAN, respectively, because the panel thought it would be unfair and costly to treat the case as a trademark dispute when the “gravamen” of the proceeding was the alleged misuse of the domain name in dispute).
Complainant is a real estate investment company that buys houses and connects distressed homeowners with local homebuyers. Complainant operates with the NEED TO SELL MY HOUSE FAST mark, which it registered with the USPTO (Reg. No. 4,881,460, first use Jan. 30, 2014, filed June 4, 2015, registered Jan. 5, 2016). USPTO registrations support rights under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Where a valid USPTO registration exists, rights have been considered to date back to a registered mark’s filing date. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1 1589962 (Forum Jan. 1, 2015) (“The Panel finds that Complainant’s valid registration with the USPTO demonstrates Complainant’s rights in the CHEAPCARIBBEAN.COM mark, and that such rights extend back to the Feb. 7, 2007 filing date.”). Therefore, the Panel agrees that Complainant has established rights in the NEED TO SELL MY HOUSE FAST mark dating back to June 4, 2015.
Next, Respondent’s <needtosellmyhouse.com> is nearly identical to the mark, save for the elimination of spacing between words of the mark and the term “FAST,” and the addition of “.com.” Such alterations have been considered confusingly similar. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (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. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Panco Men’s Products, Inc. v. LEN PETERSON / LEONARD L PETERSON, FA 1613409 (Forum May 26, 2015) (finding Respondent’s <genesvitamine.com> domain name is confusingly similar to the GENES VITAMIN E CREME mark pursuant to Policy ¶4(a)(i).). Therefore, the Panel finds the alterations in the instant case similar to those in the Panco Men’s Products, Inc. case and therefore determines that <needtosellmyhouse.com> is confusingly similar to the NEED TO SELL MY HOUSE mark under Policy ¶ 4(a)(i).
While Respondent contends that <needtosellmyhouse.com> is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel notes 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), after which 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 (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 (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.”).
Respondent has no rights or legitimate interests in <needtosellmyhouse.com>, because Respondent is not commonly known by <needtosellmyhouse.com> and is not a licensee of Complainant. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Accordingly, since the WHOIS lists “James Vasquez” as registrant, there is no evidence of Respondent supporting its rights under Policy ¶ 4(c)(ii).
In addition, Respondent advertises its services for providing real estate leads to prospective services as well as real estate acquisition services and real estate brokerage services. Where a respondent acts in direct competition with a complainant, it may indicate a lack of rights and legitimate interests. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business 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).”). Respondent operates under an identical business model to Complainant’s, even copying content and the organization of information from Complainant’s website. Thus, Respondent is misleading and diverting Internet users away from Complainant and as such has no rights or legitimate interests in the disputed domain name.
The Panel finds that Respondent registered and used <needtosellmyhouse.com> in bad faith. Respondent registered the domain name between June 30, 2015 and July 2, 2015. Complainant provides evidence that demonstrates that on June 30, 2015 the owner of the domain name is listed as Justdropped.com Inc., and on July 2, 2015, the owner is listed as James Vasquez. Therefore, the Panel agrees that Respondent’s registration of the disputed domain name occurred after Complainant established relevant rights in its mark.
Respondent registered the domain name to disrupt Complainant’s business through offering identical and competing services. “[A] respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner.” Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001). Disruption is accomplished through copying Complainant’s website. Specifically, Respondent copies: website title tags; designs, including similar code, CSS classes, and HTML attributes; layout; menu and URL structure; blog posts; and portions of content, including detailed topics and FAQs. Where significant elements of a Complainant’s web offerings have been copied, findings of disruption have followed. See DatingDirect.com Ltd. v. Aston, FA 593977 (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).”); cf. Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Therefore, the Panel agrees that there is sufficient evidence to find Respondent has been appropriating significant elements of Complainant’s online offerings to disrupt Complainant’s business in bad faith per Policy ¶ 4(b)(iii).
Further, Respondent likely profits from its disruptive use, indicating Policy ¶ 4(b)(iv) bad faith. Where there has been copying of a complainant’s content, intent to commercially gain has been found as a distinct likelihood. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Accordingly, the Panel finds that Respondent registered and used the disputed domain name for commercial gain per Policy ¶ 4(b)(iv).
Lastly, it appears that Respondent had actual knowledge of Complainant’s rights in or to the NEED TO SELL MY HOUSE FAST mark. The Panel finds that, based on Respondent’s copying of Complainant’s online content, its actual knowledge of Complainant when registering and using the disputed domain name is imputed. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Respondent had actual knowledge under 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 <needtosellmyhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, W. Scott Blackmer and Sandra J. Franklin as Panelists.
Dated: December 2, 2016
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