Keystone Custom Homes, Inc. v. Domain Admin
Claim Number: FA1711001757072
Complainant is Keystone Custom Homes, Inc. (“Complainant”), represented by Randy M. Friedberg of White and Williams LLP, New York, USA. Respondent is Domain Admin (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keystonecustomhomes.com>, registered with BigRock Solutions Ltd..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 3, 2017; the Forum received payment on November 3, 2017.
On November 03, 2017, BigRock Solutions Ltd. confirmed by e-mail to the Forum that the <keystonecustomhomes.com> domain name is registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the name. BigRock Solutions Ltd. has verified that Respondent is bound by the BigRock Solutions Ltd. 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 November 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@keystonecustomhomes.com. Also on November 6, 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 November 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a Pennsylvania-based, limited liability company that designs and builds residential homes.
Complainant has shown common law rights to the KEYSTONE CUSTOM HOME mark through its extensive and continuous use since 1992.
Respondent’s <keystonecustomhomes.com> domain name is confusingly similar to the Complainant’s KEYSTONE CUSTOM HOME mark because it incorporates the mark in its entirety, adds the letter “s” at the end of the mark, and attaches a “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <keystonecustomhomes.com>. Respondent is not commonly known by the disputed domain name. There is no basis for such contention. WHOIS information for <keystonecustomhomes.com> gives no indication that Respondent is known by the at-issue domain name. Additionally, Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent’s <keystonecustomhomes.com> domain name resolves into a website, indicating that Respondent has made no demonstrable preparations to use the disputed domain name. Furthermore, Respondent’s <keystonecustomhomes.com> domain name was updated during these proceedings and now redirects to unrelated, third-party sites and advertises a downloadable web search application.
Respondent registered and used the <keystonecustomhomes.com> domain name in bad faith. Respondent registered the disputed domain name with false or misleading information in the WHOIS record, which is an indication of bad faith registration. Additionally, Respondent failed to provide the correct details for the registrant and failed to list a Registrant Organization name or street address, further demonstrating bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the KEYSTONE CUSTOM HOME mark.
Respondent registered the at-issue domain name after Complainant acquired rights in KEYSTONE CUSTOM HOME.
Respondent’s <keystonecustomhomes.com> domain name addresses a webpage which redirects visitors to third party websites.
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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
There is no requirement under the Policy that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). In the instant case, Complainant proffers documentary evidence of the KEYSTONE CUSTOM HOME mark’s having acquired secondary meaning through continuous use of such mark over a period of years dating back prior to Respondent’s registration of the at-issue domain name. In light of the foregoing, the Panel finds that Complainant acquired common law trademark rights in the KEYSTONE CUSTOM HOME mark before Respondent’s acquisition of the <keystonecustomhomes.com> domain name. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.).
The <keystonecustomhomes.com> domain name contains Complainant’s entire KEYSTONE CUSTOM HOME trademark, less its spaces, followed by an “s” and a necessary top-level domain name, here “.com”. The negligible differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purpose of the Policy. Therefore, the Panel finds Respondent’s <keystonecustomhomes.com> domain name to be identical to Complainant’s KEYSTONE CUSTOM HOME trademark pursuant to Policy ¶ 4(a)(i). See International Soap Box Derby, Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1602433 (Forum Mar. 4, 2015) (“The domain name contains the mark in its entirety, merely eliminating the spaces between the terms of the mark and adding the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy.”); see also, LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”)
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
The WHOIS information for the disputed domain name lists “Domain Admin” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <keystonecustomhomes.com>. domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <keystonecustomhomes.com> domain name first points to a parking page and then redirects visitors to unrelated third parties. The domain name’s use in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of such domain name under Policy ¶ 4(c)(iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”); see also Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”); see also State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
Given the foregoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the disputed domain name.
The <keystonecustomhomes.com> domain name was registered and used in bad faith. As discussed below, specific bad faith circumstances are present which compel the Panel to conclude that as to each domain name Respondent acted in bad faith under paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent’s domain name first addressed a singular webpage. The page displayed: “Sorry We Currently Have No Promotions Available Right Now, Please Try Again Later.” Later, Respondent set the domain name to address a website advertising a downloadable web search application. On each reload of the domain name the visitor is re-directs to a different website unrelated to Complainant. The Panel finds it likely that Respondent profited from this scheme either via pay-per-click links or otherwise. Although not expressly alleged by Complainant, using the domain name in this manner to display a message or website by misdirecting traffic reasonable intended to reach Complainant, and while receiving benefits from so doing, demonstrates bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links); see also, Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Additionally, Respondent’s apparent intentional misspelling of Complainant’s trademark within the confusingly similar <keystonecustomhomes.com> domain name shows that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either inadvertently type the malformed string when searching for associated products, or will confuse the malformed trademark laden domain name with its target trademark when viewing the domain name as text. Here, Respondent adds an “s” to Complainant’s KEYSTONE CUSTOM HOME trademark to form the at-issue domain name. Importantly, typosquatting is a hallmark of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, somewhat indicative of Policy ¶ 4(a)(iii) bad faith Respondent appears to have provided incomplete and misleading registration information for the domain name registrar. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003A (WIPO, February 18, 2000) (finding that the factors in support of bad faith included that “Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,” and that “Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreements” such that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <keystonecustomhomes.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 30, 2017
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