Houzz Inc. v. Tiaratri adaninggar candradewi putro sonya
Claim Number: FA1705001730197
Complainant is Houzz Inc. (“Complainant”), represented by Cooley LLP, California, USA. Respondent is Tiaratri adaninggar candradewi putro sonya (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <houzz.us>, registered with NameCheap, Inc.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2017; the Forum received payment on May 4, 2017.
On May 5, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <houzz.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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 postmaster@houzz.us. Also on May 9, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
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, Houzz Inc., is a leading online platform for home remodeling and design based in Palo Alto, California, USA. In connection with this business, Complainant uses the HOUZZ mark to promote its goods and services. Complainant has rights in the HOUZZ mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,934,892, registered April 12, 2016). Respondent’s domain name, <houzz.us>, is identical to Complainant’s mark as it contains the mark in its entirety and appends the country code top-level-domain (“ccTLD”) “.us” to make it resolve.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by <houzz.us> nor has Complainant authorized Respondent to register a domain name reflecting its mark. Respondent failed to use <houzz.us> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the <houzz.us> domain name diverts Internet users to a commercial website that directly competes with Complainant’s business. Further, Respondent attempts to pass off as Complainant to benefit from the goodwill associated with Complainant’s mark.
Respondent registered and used <houzz.us> in bad faith. Respondent redirects Internet users searching for Complainant to a website that offers competing products and services while deceiving consumers into believing that the website associated with the Domain Name is sponsored by, affiliated with, or endorsed by Complainant when that is not the case. Respondent was opportunistic in its registration of the disputed domain name. Respondent had constructive and actual notice of Complainant’s rights in the HOUZZ mark at time of registration, evinced by Respondent’s prominent use of the HOUZZ mark on the landing page for the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <houzz.us> domain name.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 (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 asserts rights in the HOUZZ mark based upon its registration with the USPTO (Reg. No. 4,934,892, registered April 12, 2016). Registration of a mark with the USPTO is sufficient to establish rights in the mark per 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). The Panel finds that Complainant has rights in the HOUZZ mark.
Next, Complainant argues Respondent’s domain name is identical to Complainant’s mark as it contains the mark in its entirety and appends the ccTLD “.us” to make it resolve. The addition of a ccTLD to a complainant’s mark is insufficient to differentiate between a mark and the resulting domain name per Policy ¶ 4(a)(i). See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”). The Panel finds that <houzz.us> is identical to Complainant’s HOUZZ mark.
Complainant has proved this element.
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), and 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 (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.”).
Complainant contends Respondent is not commonly known by <houzz.us> and that Complainant has not authorized Respondent to register a domain name that reflects Complainant’s mark. Because Respondent failed to submit a response in the instant proceedings, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information lists “Tiaratri adaninggar candradewi putro sonya” as the registrant of the disputed domain name. The Panel finds Respondent is not commonly known by the disputed domain name.
Next, Complainant argues Respondent failed to use <houzz.us> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the <houzz.us> domain name to pass off as Complainant and divert Internet users to a commercial website that directly competes with Complainant’s business. Use of a disputed domain name to divert Internet users seeking Complainant to Respondent’s competing website can indicate of a lack of rights and legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) & (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). The Panel finds that Respondent passed itself off as Complainant and diverted Internet users to a webpage offering competing services for Respondent’s commercial gain. The Panel finds Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant has proved this element.
Complainant argues Respondent registered and uses <houzz.us> in bad faith as Respondent redirects Internet users searching for Complainant to a website that offers competing products and services while deceiving consumers into believing that the website associated with the Domain Name is sponsored by, affiliated with, or endorsed by Complainant when that is not the case. Use of a disputed domain name to disrupt a complainant’s business in this manner is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Respondent redirects Internet users to a page that offers products and services that are nearly identical to those offered by Complainant. The Panel finds Respondent registered and uses the disputed domain name in bad faith.
Further, Complainant contends Respondent was opportunistic in its registration of the disputed domain name. Registration of a disputed domain name that causes initial interest confusion can be further evidence of a respondent’s bad faith registration and use. See Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). As Respondent has wholly appropriated Complainant’s mark and links to a competitor, the Panel agrees that Respondent was opportunistic in its registration and finds bad faith per Policy ¶ 4(a)(iii).
Finally, Respondent had actual notice of Complainant’s rights in the HOUZZ mark at time of registration. While constructive notice is not enough for a finding of bad faith, actual notice as demonstrated through the use of the disputed domain name is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Respondent has used <houzz.us> to link to competitors of Complainant operating in the same house design field. As such, the Panel finds that Respondent had actual notice of Complainant and the Panel finds this is further evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <houzz.us> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 12, 2017
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