K. Hov. IP, II, Inc. v. MICHAEL GITZES
Claim Number: FA1811001819069
Complainant is K. Hov. IP, II, Inc. (“Complainant”), represented by Grace H Stanton of Perkins Coie LLP, Washington, USA. Respondent is MICHAEL GITZES (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hovnanianent.com> (‘the Domain Name’), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2018; the Forum received payment on November 30, 2018.
On December 3, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hovnanianent.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 December 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@hovnanianent.com. Also on December 5, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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’s contentions can be summarized as follows:
Complainant is the owner of, inter alia, the trade mark HOVNANIAN ENTERPRISES registered in the USA for real estate services with first use recorded as 1972.
The Domain Name registered in 2018 is confusingly similar to Complainant’s trade mark wholly incorporating the HOVNANIAN element and truncating the ENTERPRISES to ENT a common abbreviation for enterprises and the gTLD .com which does not prevent the confusing similarity between Complainant’s trade mark and the Domain Name.
The Domain Name has been used to impersonate Complainant using Complainant’s logo which is also a registered trade mark in order to sell fraudulent insurance services which cannot be a bona fide offering of goods and services or a legitimate noncommercial fair use. Respondent is not commonly known by the Domain Name and has not been authorized by Complainant. Respondent has no rights or legitimate interests in the Domain Name which has been registered and used in bad faith under Policy 4(b)(iii). The use of Complainant’s logo shows actual knowledge of Complainant and its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of, inter alia, the trade mark HOVNANIAN ENTERPRISES registered in the USA for real estate services with first use recorded as 1972.
The Domain Name registered in 2018 has been used for an e-mail scam on several occasions.
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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines a similar mark to Complainant’s HOVNANIAN ENTERPRISES (registered in the USA for real estate services with first use recorded as 1972) and the gTLD .com. Truncating ENTERPRISES to ENT does not prevent this confusing similarity.
The addition of a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic gTLD insufficient to distinguish a disputed domain name from a mark under Policy 4(a)(i)).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Complainant has not authorized the use of its mark or a sign confusingly similar to it for similar services. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact commonly known by the Domain Name.
The Domain Name has been used in fraudulent e mail schemes using the logo of Complainant. This is designed to be deceptive and confusing and pass off Respondent as Complainant. As such it cannot amount to the bona fide offering of goods and services or a legitimate fair use.
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Impersonating a complainant by use of the complainant’s mark in an attempted fraudulent e-mail scam is disruptive and evinces bad faith registration and use. See Microsoft Corporation v. Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4 2016) (finding that respondent’s use of the disputed domain name for fraudulent e mails constituted bad faith registration and use pursuant to Policy 4(b)(iii)).
In the opinion of the Panelist the use made of the Domain Name in relation to a fraudulent e mail scam attempt is confusing in that recipients of any such mails would reasonably believe those e mails are connected to or approved by Complainant as a recognizable version of Complainant’s trade mark and the logo of Complainant was used. This mimicking by Respondent of Complainant shows that Respondent was aware of Complainant and its business and rights and constitutes passing off. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of electronic content on the Internet under Policy 4(b)(iv). See Qatalyst Partners L.P. v. Devinmore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e mail address to pass itself off as the complainant is evidence of bad faith registration and use).
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(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 <hovnanianent.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 27, 2018
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