Wahl Group Investments, Inc. v. bart trow / Direct Response of America
Claim Number: FA1702001719474
Complainant is Wahl Group Investments, Inc. (“Complainant”), represented by George R. Schultz of Schultz & Associates, P.C., Texas, USA. Respondent is bart trow / Direct Response of America (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2017; the Forum received payment on February 28, 2017.
On February 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com> 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 March 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2017 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com. Also on March 1, 2017, 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.
Preliminary Issue: Deficient Response
The Response was received on March 22, 2017, one day after the deadline to file a response. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Complainant’s Additional Submission was received and determined to be in compliance with the Rules on March 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed
Kenneth L. Port 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 names be transferred from Respondent to Complainant.
Complainant provides real estate services. Complainant uses the CASH FOR HOUSES mark in conjunction with its business practices. Complainant registered the CASH FOR HOUSES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,265,790, registered July 27, 1999). See Compl., at Attached Ex. A. Respondent’s <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com> are confusingly similar to Complainant’s CASH FOR HOUSES mark because they incorporate the mark in its entirety, eliminating spaces and adding the “.com” generic top-level domain (“gTLD”). Some of the disputed domain names incorporate the numbers “800” or “1800” and hyphens.
Respondent has no right or legitimate interests in <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the CASH FOR HOUSES mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domains. Respondent’s <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com> resolve to a website in direct competition with Complainant’s business. See Compl., at Attached Ex. C.
Respondent registered and is using <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com> in bad faith. The disputed domain names attract Internet users to Respondent’s websites for commercial gain. Respondent’s <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com> presumably seek to confuse Internet users by creating the assumption that Respondent is affiliated or endorsed by Complainant. Respondent registered the disputed domain names with actual knowledge of Complainant and its rights to the CASH FOR HOUSES mark.
Respondent is the current owner of <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com>. Respondent has maintained the <cashforhouses.com> domain, where the other three domain names resolve, for almost ten years. Complainant’s reliance on the Supplemental Register registration of the CASH FOR HOUSES mark does not establish sufficient rights to the mark. Complainant allegedly acquired the USPTO Principal Register registration of the CASH FOR HOUSES mark (e.g., Reg. No. 5,082,151, registered Nov. 15, 2016) by fraudulently asserting the distinctiveness of the mark, “as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 2265790.” See Resp., at Attached Annex D; Id. at 3 ¶4 (emphasis omitted). Moreover, Complainant is unable to assert common law rights or secondary meaning in the CASH FOR HOUSES mark prior to the 2016 USPTO registration.
The CASH FOR HOUSES mark is generic and “subject to extensive third-party use.” See Resp., at 4 ¶5. Therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent uses the disputed domain names according to their descriptive meaning. Because the disputed domain names are comprised of generic terms chosen for their dictionary attractiveness, not trademark value, Respondent has legitimate rights to the domain.
Respondent did not register and use the disputed domain names in bad faith. Respondent’s <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com> domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s CASH FOR HOUSES mark. Respondent used the term “cash for houses” not because of its value as a trademark, but because of its attractiveness as dictionary words or common terms. Respondent had no knowledge of Complainant when it registered <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com>. Furthermore, Respondent’s registration of the disputed domain names predates Complainant’s USPTO registrations.
Complainant is engaging in reverse name hijacking due to a lack of basis for conducting the instant UDRP proceeding.
Complainant waited almost eleven years to bring this action against the disputed domain names. Complainant’s claims are barred by the doctrine of laches.
C. Additional Submissions-Complainant
The circumstances of Mr. Trow and his estate have no bearing on the outcome of this dispute.
The Response was deficient and filed by a third party not shown to be an authorized agent of Respondent, and so the Respondent should be considered to have failed to respond to the Complaint.
A registration on the Supplemental Register is sufficient to show trademark rights under the Policy. The error in the prior claim for the Principal Register registration noted by Respondent was a mere clerical error, and not fraud.
Respondent has provided no evidence to support the “countless man-hours and hundreds of thousands of dollars programming, designing the website to which the Disputed Domains resolved.” On the contrary, the website is simple, and has not been changed significantly since 2005. See Compl., at Attached Ex. C; see also Resp., at Attached Annex B.
Laches cannot apply because there is no evidence that Complainant knew of or should have known of the infringing use, and laches is not hooked through a mere passage of time.
On March 21, 2017, Mr. Trow’s estate offered to sell the Disputed Domain names to Complainant for $78,000. See Compl., at Attached Ex. H. This violates Policy ¶¶ 4(a)(ii) and (b)(i).
The Panel finds that Complainant has failed to carry its burden to show that it has prior, valid trademark rights in and to the mark CASH FOR HOUSES. As such, the Panel finds for Respondent.
The Panel further finds that Respondent’s Response was not timely filed; however, as the Panel’s opinion is based on the WHOIS record and the issued registration submitted by Complainant, the Panel considered Respondent’s Response, even though it was of doubtful relevance.
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.
Although it cannot be doubted that Complainant trademark, CASH FOR HOUSES, is confusingly similar to the disputed domain names, <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com>, Complainant has failed in its attempt to establish prior trademark rights in and to the mark.
Complainant’s first trademark registration (on the Supplemental Register) for the mark CASH FOR HOUSES was secured on July 27, 1999. The disputed domain name, including <cashforhouses.com>, was registered on April 9, 1998. The Panel disagrees with Respondent in that a Supplemental Registration is insufficient to establish trademark rights. Complainant can and has established its trademark rights in and to CASH FOR HOUSES; however, this registration was effective on July 27, 1999 or nearly one year after Respondent registered <cashforhouses.com>.
It appears from the record that Complainant actually claims first use of the trademark CASH FOR HOUSES on January 1, 1987. This could be the basis of Complainant’s claim that it had common law rights in and to the trademark CASH FOR HOUSES that predate Respondent’s registration of the disputed domain names including <cashforhouses.com>. To do that, Complainant has to show that the mark has secondary meaning prior to the disputed domain names being registered. This evidence would be in the form of actual use of the mark in advertising or on or in connection with the service of selling houses. Complainant’s material as filed shows one house with one sign using the CASH FOR HOUSES mark. Furthermore, this one sign is undated; therefore, the Panel cannot tell if this use predated Respondent’s registration or not.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i); therefore, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
such, the Panel finds in favor of Respondent and need not reach the other
claims and responses that the parties have raised.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <cashforhouses.com>, <1800cashforhouses.com>, <1-800-cash-for-houses.com>, and <800cashforhouses.com> domain names remain with Respondent.
Kenneth L. Port, Panelist
Dated: April 1, 2017
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