The Home Store, Inc. v. BargainName.com
c/o Domain Admin
Claim
Number: FA0503000440161
Complainant is The Home Store, Inc. (“Complainant”), represented
by Peter Vickery,
Post Office Box 300, Amherst, MA 01004-0300. Respondent is BargainName.com c/o Domain Admin (“Respondent”), General
Delivery, Georgetown, Grand Cayman, GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <thehomestore.com>, registered with Mobile
Name Services, 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 15, 2005.
On
March 15, 2005, Mobile Name Services, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <thehomestore.com> is
registered with Mobile Name Services, Inc. and that Respondent is the current
registrant of the name. Mobile Name
Services, Inc. has verified that Respondent is bound by the Mobile Name
Services, Inc. registration agreement and has thereby agreed to resolve domain
name disputes brought by third parties in accordance with ICANN's Uniform
Domain Name Dispute Resolution Policy (the "Policy").
On
March 23, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 12, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@thehomestore.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 20, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thehomestore.com>
domain name is identical to Complainant’s THE HOME STORE mark.
2. Respondent does not have any rights or
legitimate interests in the <thehomestore.com> domain name.
3. Respondent registered and used the <thehomestore.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Home Store, Inc., is one of the largest modular homebuilders in New England and
the Hudson Valley. Complainant offers
over 450 house floor plans for its custom modular homes.
Complainant
has been building modular homes under the trademark, THE HOME STORE, since at
least August 1988. Complainant holds a trademark
registration with the United States Patent and Trademark Office for the THE
HOME STORE mark (Reg. No. 2,842,540 issued May 18, 2004).
Respondent
registered <thehomestore.com> domain name on July 12,
2004. Respondent is not using the
domain name in connection with an active website.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant
established that it has rights in the THE HOME STORE mark through registration
with the United States Patent and Trademark Office and by continuous use of the
mark in commerce for the last seventeen years.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive and that a respondent has the burden of refuting
this assumption); see also Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established).
The <thehomestore.com>
domain name registered by Respondent is identical to Complainant’s THE HOME
STORE mark because the domain name incorporates Complainant’s mark in its
entirety, deviating only with the addition of the generic top-level domain
(“gTLD”) “.com.” The addition of a gTLD
is irrelevant, because top-level domains are required and do not negate the
identical nature of the domain name. See
Sporty’s Farm L.L.C. v. Sportsman’s
Mkt., Inc., 202 F.3d 489 (2d Cir. 2000) cert. denied, 530
U.S. 1262 (2000), (“For consumers to buy things or gather information on the
Internet, they need an easy way to find particular companies or brand names.
The most common method of locating an unknown domain name is simply to type in the
company name or logo with the suffix .com.”); see also Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users
searching for a company’s Web site often assume, as a rule of thumb, that the
domain name of a particular company will be the company name or trademark
followed by ‘.com.’”); see also Blue
Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP trademark, and that the “addition of .com is
not a distinguishing difference”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights and legitimate interests in the THE HOME STORE
mark and contends that Respondent can show no such rights or legitimate
interests in the <thehomestore.com> domain name, which contains
Complainant’s entire THE HOME STORE mark.
Respondent failed to respond to the Complaint and in such cases the
Panel assumes that Respondent lacks rights and legitimate interests in the
disputed domain name. In fact, once
Complainant makes a prima facie case in support of its allegations,
which this Complainant has done, the burden shifts to Respondent to show that
it has such rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(a)(ii). See G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise).
Furthermore,
where Complainant makes the prima facie case showing and Respondent does
not respond, the Panel may accept all reasonable allegations and inferences in
the Complaint as true. See 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.”); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that a respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of the complaint to be deemed
true).
Respondent
is wholly appropriating Complainant’s mark and is not using the <thehomestore.com>
domain name in connection with an active website. The Panel finds that the passive holding of a domain name that is
identical to Complainant’s mark is not 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). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where a respondent failed to submit a response to the complaint and had made no
use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that a respondent made preparations to use the domain name in connection
with a bona fide offering of goods and services before notice of the domain
name dispute, the domain name did not resolve to a website, and the respondent
is not commonly known by the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no
rights or legitimate interests where the respondent advanced no basis on which
the panel could conclude that it had rights or legitimate interests in the
domain names, and no use of the domain names was established).
Nothing
in the record, including the WHOIS domain name registration information, for
the <thehomestore.com> domain name dispute suggests that
Respondent is commonly known by the domain name or by Complainant’s THE HOME
STORE mark pursuant to Policy ¶ 4(c)(ii).
Therefore, the Panel finds that Respondent has no rights or legitimate
interests in the domain name. See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“[N]othing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also RMO,
Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
utilized the domain name and inadvertently did not renew the registration. Within a short period, Respondent registered
the domain name. The Panel finds that
since Respondent did not offer any evidence to the contrary, Respondent’s
registration due to Complainant’s oversight is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v.
Serv.point, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where
the domain name has been previously used by the complainant, subsequent
registration of the domain name by anyone else indicates bad faith, absent
evidence to the contrary); see also BAA
plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad
faith where a respondent took advantage of the complainant’s failure to renew a
domain name); R-H-Interactive Jobfinance
v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that
the respondent’s registration and use of the <jobfinance.com> domain name
“immediately after Complainant failed to timely renew the domain name registration”
was evidence of bad faith).
Although
Respondent registered the <thehomestore.com> domain name, it has
not used the domain name in connection with the offering of any services or in
conjunction with an active website. The
Panel finds that Respondent’s passive holding of the domain name evidences bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). In addition, it is inconceivable that
Respondent could have any non-infringing use of a domain name that is
confusingly similar to Complainant’s registered mark. See Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“I]t is possible, in
certain circumstances, for inactivity by the Respondent to amount to the domain
name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that a respondent’s passive holding of the domain name satisfies
the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of the domain
name or website that connects with the domain name, and that passive holding of
a domain name permits an inference of registration and use in bad faith); see
also Alitalia –Linee Aeree Italiane
S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith
where a respondent made no use of the domain name in question and there are no
other indications that the respondent could have registered and used the domain
name in question for any non-infringing purpose).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <thehomestore.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
April 29, 2005
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