DECISION

 

HomeVestors of America, Inc. v. DOMAIN ADMINISTRATOR / DOMAINVEST B.V.

Claim Number: FA1801001769273

 

PARTIES

Complainant is HomeVestors of America, Inc. (“Complainant”), represented by S. Roxanne Edwards of Klemchuk LLP, Texas, USA.  Respondent is DOMAIN ADMINISTRATOR / DOMAINVEST B.V. (“Respondent”), The Netherlands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <advestors.com>, registered with Uniregistrar Corp.

 

PANEL

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 29, 2018; the Forum received payment on January 29, 2018.

 

On Jan 30, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the <advestors.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name.  Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2018 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@advestors.com.  Also on February 8, 2018, 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 February 21, 2018.

 

A compliant Additional Submission was received from Complainant on February 26, 2018. A compliant Additional Submission was received from Respondent on March 1, 2018.

 

On February 24, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, HomeVestors of America, Inc., is the number one buyer of houses in the United States, with approximately 900 franchisees in 44 states and the District of Columbia. Complainant has rights in the ADVESTORS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,313,733, registered Apr. 2, 2013). Respondent’s <advestors.com> domain name is identical or confusingly similar to Complainant’s ADVESTORS mark, as the domain name consists entirely of the mark and the “.com” generic top-level domain (“gTLD”).

 

Respondent has no rights or legitimate interests in the <advestors.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the ADVESTORS mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent does not make an active use of the name.

 

Respondent registered and is using the <advestors.com> domain name in bad faith. Respondent refused Complainant’s offers to purchase the domain name, instead requesting $25,000 as a counteroffer, indicating it registered the domain name for the express purpose of selling it for an amount in excess of out-of-pocket registration costs, in bad faith. Further, Respondent is not making any active use of the domain name. Respondent also clearly had constructive knowledge of Complainants rights in the mark at the time it registered the domain name.

 

B. Respondent

Respondent, Domainvest B.V., registered the <advestors.com> domain name as part of a now-abandoned project focused on investments in pay-per-click advertisements. Respondent registered the domain name on June 4, 2016, and still holds the name in case an opportunity arises and a similar project might become more achievable. Complainant does not have rights in the ADVESTORS mark in The Netherlands or Europe, where Respondent resides. It also does not market any services under the mark to any parties outside of its own organization and therefore does not conduct any commerce under the mark. Further, Respondent is using the domain name in advertising and financial services, a different industry than Complainant.

 

Complainant claims Respondent does not have rights or legitimate interests in the <advestors.com> domain name because it has not made demonstrable preparations to use the name for a bona fide offering of goods or services. However, Respondent acquired the name with the intention of using it as a brand name for an investment fund focused on Pay-Per-Click advertising on domain names. Respondent uses the generic combination of the words “advertisement” and “investors.”

 

The <advestors.com> domain name was not registered in bad faith. Instead Respondent registered the name to use for a bona fide project, an investment fund. Though no use was ever publically launched, Respondent had a clear use planned for the domain name. Respondent countered Complainant’s offer with a more reasonable amount, because it more adequately reflected the costs to rebrand its $5,000,000 project. Further, the offers made by Complainant were made anonymously through GoDaddy’s Domain Buy Service, and Respondent could not assume the bidder would be Complainant. Finally, Respondent’s use of the domain name or brand name ADVESTORS has not violated any rights of Complainant, as Complainant does not own any trademarks for ADVESTORS for financial services, nor does it offer any such services.

 

C. Additional Submissions

Complainant reaffirmed its prior national registration of its ADVESTORS mark as acceptable proof of rights in the mark under the UDRP, and that Respondent’s domain name contained the mark as a whole. Complainant noted Respondent’s admission that the domain name was to cover potentially similar advertising related services, and that the domain name has never been used since registration. Complainant pointed to evidence that it made several offers to buy the disputed domain, identifying itself each time and only receiving Respondent’s high counteroffer after it’s third attempt at purchase.

 

Respondent reasserted that it did not register the domain in bad faith because it had a business in mind at the time of registration, even allegedly developing a prospectus for the same. The name was adopted seemingly in light of Respondent’s determination that Complainant was not registered or doing business in Respondent’s country, and that anyone searching for Complainant would know they were in the wrong place if they were redirected to Respondent’s website, if it was to become active. Respondent also contended that Complainant was liable for reverse domain name hijacking.

 

FINDINGS

Complainant is HomeVestors of America, Inc., of Dallas Texas, USA. Complainant is the owner of the domestic registration for the mark ADVESTORS, which it has used continuously since at least as early as 2011, in connection with the advertising and marketing of its home buying services.

Respondent is Domain Administrator/ Domainvest B.V., Groningen, The Netherlands. Respondent’s registrar’s address is listed as Grand Cayman Islands, Cayman Islands. Respondent registered the <advestors.com> on or about June 4, 2016.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant claims rights in the ADVESTORS mark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,313,733, registered Apr. 2, 2013). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).

 

Respondent claims Complainant does not have rights in the ADVESTORS mark in The Netherlands, where Respondent resides. A complainant need not have registered a mark in the country in which Respondent operates for the purposes of Policy ¶ 4(a)(i). See Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”); see also Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”).

 

The Panel here finds that Complainant’s registration of the ADVESTORS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Complainant next argues Respondent’s <advestors.com> domain name is identical or confusingly similar to the ADVESTORS mark, as the name consists entirely of the mark, and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel here finds the <advestors.com> domain name is identical or confusingly similar to the ADVESTORS mark per Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).

The Complainant has set forth a prima facie case.

 

Complainant argues that Respondent has no rights or legitimate interests in <advestors.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ADVESTORS mark in any way. WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “DOMAIN ADMINISTRATOR / DOMAINVEST B.V.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Based on the initial attempts to hide its identity through use of a privacy service, and the nature of the true identity revealed through these proceedings, the Panel finds Respondent does not have rights or legitimate interests in the disputed domain name.

 

Complainant also asserts Respondent’s inactive holding of the <advestors.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Respondent claims it acquired the <advestors.com> domain name with the intention of using it as a brand name for an investment fund. A showing of preparations to use a domain under Policy ¶ 4(c)(ii) name can indicate a respondent has rights or legitimate interests in the name. See Always On UPS Sys. Inc. v. Always-On, Inc., FA 114467 (Forum Aug. 22, 2002) (finding that because the respondent submitted evidence—press release and product information—that demonstrated that it was commonly known as “always-on” since Apr. of 2000, and it used <alwayson.com> and <always-on.com> to provide software applications to its customers, it had rights or legitimate interests in the disputed domain names). Respondent submitted a copy of a prospectus allegedly prepared in August of 2016 for submission to select third-party private investors. While the prospectus indicates some business preparation may have occurred, it was still well after the registration of Complainant’s mark, and indicates no reason to adopt Complainant’s mark as its domain name. In light of the domain chosen being reflective of Complainant’s complete prior registered trademark, and Respondent’s efforts to initially hide its identity as registrant, as well as Respondent admittedly never using the domain name, the Panel here finds that Respondent has not been commonly known by the disputed domain name. Respondent further admits that it has not ever used the domain name. The Panel here finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Respondent claims it selected its brand name ADVESTORS as a combination of the terms “advertisement” and “investors” with the intention of using it as a brand name for an investment fund primarily focused on pay-per-click advertising on domain names. Respondent also implies the name is generic by improperly dissecting Complainant’s mark into two generic terms; advertising and investors, because that is what Respondent allegedly had in mind when adopting the domain name. Respondent further states that since Complainant does not operate within the financial services field, Respondent has every right to use the <advestors.com> domain name for its intended project. The Panel disagrees and finds Respondent has no rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii). Respondent’s mere assertions of rights based on claims of intent to use in a manner where no confusion will occur, or in the alternative use in a generic manner without proof of Complainant’s mark being a common term are self-serving and totally unsupported by any evidence based on Respondent’s past or current circumstances.

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant claims Respondent’s attempt to sell the <advestors.com> domain name for an amount in excess of out-of-pocket costs indicates it registered and used the domain name in bad faith. A counteroffer to a complainant to sell a domain name for an amount in excess of estimated out-of-pocket costs can indicate bad faith registration and use per Policy ¶ 4(b)(i). See Bear River Mutual Insurance Company v. Dzone Inc., FA1311001528522 (Forum Dec. 11, 2013) (concluding that the respondent’s offer to sell the disputed domain name to the general public and to the complainant in the form of counter-offers demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i)); see also Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000). Complainant claims, and Respondent admits, Complainant made several offers to purchase the domain name from Respondent for up to $200, and that Respondent sent a counteroffer requesting $25,000. Respondent claims the counteroffer was high because it did not really plan to sell, but if it did, the requested price had to take into consideration the possibility of a $5,000,000 rebranding project. Complainant correctly notes that Respondent had never launched a business associated with the domain name or otherwise used the domain at all, thus a claim of rebranding considerations cannot be substantiated. The Panel here finds Respondent’s behavior indicates the name was registered and used in bad faith per Policy ¶ 4(b)(i).

 

Complainant also asserts that Respondent’s failure to use the <advestors.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Respondent admits it has not used the domain name, but states that it is holding it in case a project comparable to the one originally contemplated arises in the future. The Panel here finds Respondent’s inactive holding of the domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).

 

Complainant has proven this element

 

Reverse Domain Name Hijacking

 

Respondent requests a finding of Reverse Domain Name Hijacking based on the contention that Complainant has no clear rights in owning the domain name, and filed the UDRP based on “the rejection of their unreasonable lowball offer.” The Panel finds for the Complainant. Respondent’s assertions here, much like many of its prior contentions, belie a misunderstanding of trademark law as well as the jurisprudence of internet domain names. Complainant is the owner of a valid nationally registered trademark that has been continuously used for years prior to Respondent’s decision to adopt that mark as its domain name. When selecting a domain name an applicant asserts that the name is not another’s mark, which it clearly was in this case. Respondent has no business or goodwill to be hijacked since it has never used the domain name, other than to offer it for resale. Further Respondent sought to hide its identity when it first selected the domain name. There can be no hijacking found under these circumstances.

 

DECISION

As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <advestors.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Darryl C. Wilson, Panelist

Dated: March 9, 2018