KB Home v. RegisterFly.com - Ref#
9565403, 9565404, 9565407 c/o Whois Protection Service ProtectFly.com
Claim Number: FA0505000488510
PARTIES
Complainant
is KB Home (“Complainant”),
represented by Mary Kathryn Sammons, of Susman Godfrey LLP,
Suite 5100, 1000 Louisiana, Houston, TX 77002-5096. Respondent is RegisterFly.com
- Ref# 9565403, 9565404, 9565407 c/o
Whois Protection Service
ProtectFly.com (“Respondent”), 2502 Azle Hwy., Weatherford, TX 76085.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <mykbhomesucks.com>, <mykbhomesucks.net>, and <mykbhomesucks.org>, registered with Enom, Inc.
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 13, 2005.
On
May 31, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain names <mykbhomesucks.com>, <mykbhomesucks.net>
and <mykbhomesucks.org>
are registered with Enom, Inc. and that the Respondent is the current
registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, 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
July 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 2,
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@mykbhomesucks.com, postmaster@mykbhomesucks.net,
and postmaster@mykbhomesucks.org by e-mail.
A
Deficient Response was received and determined to be incomplete on August 2,
2005.
On August 11, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
has registered KB HOME as a service mark on the Principal Register of the
United States Patent and Trademark Office (“USPTO”) (Ser. No. 76154867) for
construction services, namely, planning, laying out and construction of
residential communities, construction of single family and multiple family
dwelling units, and real estate development.
The
Complainant states that each domain name in the dispute includes Complainant’s
registered KB HOME mark. Moreover Complainant’s mark is the most prominent
feature of each of the disputed domain names. Since the addition of the word
“sucks” to a well-known trademark is not always likely to be taken as “language
clearly indicating that the domain name is not affiliated with the trademark
owner,” Complainant states that the domain names in dispute are confusingly
similar to Complainant’s mark itself. Since Complainant’s largest and
longest-standing domestic operations take place in Southwestern states with
large Spanish-speaking populations, the confusion is especially likely.
Furthermore Complainant states that he also operated a major subsidiary in
France for over thirty-five years.
Therefore
Complainant’s rights in its mark are indisputable. In addition Complainant
widely promotes and uses its mark in commerce. Complainant is on of the
nation’s largest, most successful, and most widely recognized new home
builders. A Fortune 500 company, Complainant built over 31,000 homes and earned
revenues of over seven billion dollars in its 2004 fiscal year. Complainant
operates in diverse and populous markets throughout the United States,
including Texas, Florida and California, and through a subsidiary in France.
Complainant has the highest level of total brand awareness of any homebuilder
in the market it serves.
Complainant
takes the position that these facts support a finding that the disputed domain
names are confusingly similar to Complainant’s registered mark.
In
addition Complainant contends Respondent has no rights or legitimate interests
in the disputed domain names, because none of the circumstances described in
the ICANN Policy ¶ 4(c)(i)-(iii) apply to the Respondent’s use of the disputed
domain names. Respondent has not used any of the disputed domain names in
connection with a bona fide offering of goods or services. Respondent
appears to have merely “parked” the three “mykbhomesucks” domain names, which
are not in use at all. To the best of the Complainant’s knowledge, Respondent
has not come to be commonly known by any of the domain names in any capacity.
Furthermore
Complainant contends that Respondent appears to be a proxy holder of the
disputed domain names for Brian Zaltsberg, the registrant in fact of the
similar domain name <kbhomesucks.com>, which is the subject of proceeding
FA506771. Brian Zaltsberg does operate a site at <kbhomesucks.com> that
is stridently critical of Complainant. However, Brian Zaltsberg’s operation of
the site is not a “legitimate noncommercial fair use of the domain without
intent for commercial gain.” He created his site in the course of a dispute with
Complainant over the purchase of a new home, which he claimed was defective.
From its inception, he has used the site as a bargaining chip in this dispute.
He offered to close the site if Complainant would pay off his mortgage. When
Complainant offered to market the home to third parties on Brian Zaltsberg’s
behalf, he demanded an additional cash payment in exchange for disabling the
web site. Later he offered to sell the <kbhomesucks.com> domain name to
the Complainant in conjunction with settling all other issues for a total
payment of 2 million dollars.
The
Complainant contends that maintaining a criticism site for the purpose of
obtaining leverage in other negotiations does not constitute noncommercial fair
use within the meaning of ICANN Policy ¶ 4(c)(iii).
Finally
Respondent has registered and used the domain names in bad faith. Brian
Zaltsberg has repeatedly offered to transfer <kbhomesucks.com> to
Complainant for consideration in ever-escalating amounts far in excess oh his
potential out-of-pocket costs related to the domain names. Respondent’s
creation of the site with a dispute with Complainant and use of the site as a
bargaining chip from the early stages of negotiations over that dispute is
further evidence of his bad-faith intent to profit from registration of the
site. His bad faith use of <kbhomesucks.com> also suggests an improper
purpose in Respondent’s registration of the <mykbhomesucks.com>, <mykbhomesucks.net>, and <mykbhomesucks.org> sites as his proxy. Further proof of
bad-faith purpose is Respondent’s masking of identity information in the
registration information for <mykbhomesucks.com>, <mykbhomesucks.net>, and <mykbhomesucks.org> as well as for <kbhomesucks.com>.
B.
Respondent
Respondent
contends that there is absolutely no confusion between Complainant’s registered
trademark KB HOME and the domain name <mykbhomesucks.com>.
The domain names in dispute do not appear on any search engines nor do they
resolve to any website. Therefore there is no possibility of the domain names
being confused with the KBHOME or KBHOME.COM marks. The word “sucks” with a
Company’s trademark cannot be confusingly similar. It is well known that the
word “sucks” refers to a “complaint” or “protest.” Both common sense and plain
reading of the Policy support the view that a domain name combining a trademark
with the word “sucks” cannot be considered confusingly similar to the mark. The
use of the “sucks.com” suffix attached to a company name has become a standard
formula for Internet sites protesting the business practices of a company.
Internet users would not confuse Respondent’s domain name with Complainant’s
mark because the addition of the terms “sucks” indicates that the disputed
domain name has no affiliation with Complainant’s mark. The use of a “sucks”
following a company name in a domain name is, in Internet parlance, referred to
as a complaint name. “Sucks” has entered the vernacular as a word loaded with
criticism. The use of a “sucks” following a company’s name removes any
confusion as to the source.
The
Respondent should be able to retain ownership of the domain names, as
Complainant has no more use for the domain names than Respondent. The domain
names clearly can be used for the purpose of protest and a demonstration of
free speech. Respondent has the right just as anyone else to register the
domain names. Respondent has the right to practice free speech. It’s the
Respondent’s freedom of speech to own this domain names. Respondent has not
used the names and they are parked. They do not resolve to any website. If
Complainant receives the domain names it will be simply a violation of freedom
of speech, as taking the names will hinder the ability of Respondent to free
speech using the domain names. An exercise of free expression enjoys the protection
of the fair use exception to Policy ¶ 4 (c)(iii).
The
Respondent contends that there are many domain names that are available that
have the phrase “kbhome” contained within. However Complainant chooses to file
a complaint in regards to <mykbhomesucks.com>, <mykbhomesucks.net>, and <mykbhomesucks.org> for the simple reason that Respondent’s
son is currently in litigation with the Complainant. One reason Complainant
wants to get the domain names is to keep future customers or other patrons from
using them for free speech purposes. This is an attempt by the complainant to
limit freedom of speech. Complainant has no fair use for the domain names other
than to limit people’s freedom of speech.
Furthermore
this could also be considered harassment as Respondent has not had direct
dealings with Complainant and the domain names do not resolve to a website.
Also, it is clear that the only reason Complainant filed this complaint to get
the names was because of the relation of Respondent to other parties involved
in litigation with Complainant, and to hinder ones free speech. Respondent
presents a list of domain names that are currently owned by Complainant, in
order to show that these names also could be used for free speech purposes.
Respondent contends that this could possibly explain Complainant’s motive
behind purchasing domain names that could be used to air complains about them.
Respondent
finally contends that he has never used the domain names for commercial gain or
any gain in any way. Complainant shows no evidence that Respondent has ever
offered the domain names for sale or rent, or that Respondent has had any
contact with Complainant whatsoever.
C. Additional
Submissions
None
PROCEDURAL ISSUES
Respondent
did not submit a hard copy of the Response, as required by ICANN Rule
5(a). Therefore, the Panel may choose
to deny the deficient Response. See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003); see also Schott Glas v. Necschott,
D2001-0127 (WIPO Mar. 14, 2001). In the need to
resolve the real dispute between the parties the panel is of the view
that ruling a Response inadmissible because of formal deficiencies would be an
extreme remedy not consistent with the basic principles of due process. See
Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002); see
also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628
(Nat. Arb. Forum Oct. 17, 2003).
FINDINGS
A copy of the WHOIS registration record
indicates that, the Respondent registered, with Internet Domain Registrars, the
contested domain name <mykbhomesucks.com> on January 26, 2004, <mykbhomesucks.net>
on January 27, 2004, and <mykbhomesucks.org> on January 27, 2004
and is not actively using the domain names in dispute.
The Complainant currently owns the
following valid and subsisting United States service mark registration, on
which this dispute is based: KB HOME as a service mark on the Principal
Register of the United States Patent and Trademark Office (Ser. No. 76154867),
for construction services, namely, planning, laying out and construction of
residential communities, construction of single family and multiple family
dwelling units, and real estate development.
The
Complainant widely promotes and uses its mark in commerce. Complainant is one
of the nation’s largest most successful, and most widely recognized new home
builders. A Fortune 500 company, Complainant operates in diverse and populous
markets throughout the United States, including Texas, Florida and California,
and through a subsidiary in France. The Complainant is the owner and bona
fide senior user of the KBHOME trade name.
Respondent’s son is Brian Zaltsberg, the
registrant in fact of the similar domain name <kbhomesucks.com>, which is
the subject of proceeding FA506771. Brian Zaltsberg does operate a site at
<kbhomesucks.com> that is stridently critical of Complainant.
Respondent is not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name. Respondent has not used the domain names in connection with a
bona fide offering of goods or services or for a legitimate
noncommercial or fair use.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
The
Panel is of the view that the addition of generic or descriptive terms like
“my,” “sucks” and the generic top-level domain “.com” to Complainant’s mark do
not defeat the confusingly similar requirement of the Policy. See ADT
Services AG v. ADTSucks.com, D2001-0213 (WIPO Apr. 23, 2001); see also
Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, D2000-0662 (WIPO
Sept. 19, 2000); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001); see also Vivendi
Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001).
With
respect to this element, the Panel agrees with the following reasoning in the Wal-Mart
Stores Inc. case:
“Following
this reasoning, Complainant contends that consumers are likely to believe that
any domain name incorporating the sequence "Wal-Mart" or a close
approximation thereof is associated with Complainant. In the ordinary case,
when a generic term is appended to the trademark (such as the domain name
walmartstores.com), this would be so. But the fame of a mark does not always
mean that consumers will associate all use of the mark with the mark’s owner.
No reasonable speaker of modern English would find it likely that Wal-Mart
would identify itself using wal-martsucks.com. Complainant has no evidence of
any potential confusion. The Panel specifically rejects Complainant’s argument
that consumers are likely to be confused as to the sponsorship or association
of a domain name that combines a famous mark with a term casting opprobrium on
the mark.
Nevertheless, the Panel understands the phrase "identical or
confusingly similar" to be greater than the sum of its parts. The Policy
was adopted to prevent the extortionate behavior commonly known as
"cybersquatting," in which parties registered domain names in which
major trademark owners had a particular interest in order to extort money from
those trademark owners. This describes Respondent’s behavior. Thus, the Panel
concludes that a domain name is "identical or confusingly similar" to
a trademark for purposes of the Policy when the domain name includes the trademark,
or a confusingly similar approximation, regardless of the other terms in the
domain name. In other words, the issue under the first factor is not whether
the domain name causes confusion as to source (a factor more appropriately
considered in connection with the legitimacy of interest and bad faith
factors), but instead whether the mark and domain name, when directly compared,
have confusing similarity. …”
The
Panel furthermore agrees with the following reasoning in the case Direct
Line Group Ltd & Ors v Purg I.T. Ltd, D2000-0583 (WIPO Aug. 13, 2000):
“The
Respondents' registration, consisting of the Complainants' name with the
suffix, "sucks" (plus ".com"), is not identical to the
Complainants' marks and the question arises whether the registration is
confusingly similar to those marks.
Given
the apparent mushrooming of complaints sites identified by reference to the
target's name, can it be said that the registration would be recognised as an
address plainly dissociated from the Complainants? In the Panel's opinion, this
is by no means necessarily so. The
first and immediately striking element in the Domain Name is the Complainants'
name and adoption of it in the Domain Name is inherently likely to lead some
people to believe that the Complainants are connected with it. Some will treat the additional
"sucks" as a pejorative exclamation and therefore dissociate it after
all from the Complainants; but equally others may be unable to give it any very
definite meaning and will be confused about the potential association with the
Complainants. The Complainants have
accordingly made out the first element in its Complaint (see the rather similar
conclusion on this element in Case D 2000-0477 (walmartcanadasucks.com)).”
The Panel is furthermore of the view that
the addition of the generic top-level domain (“gTLD”) “.com, ” “.net” or “.org”
is irrelevant in determining the element of confusing similarity. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000); see also Little Six, Inc. v. Domain For Sale,
FA 96967 (Nat. Arb. Forum Apr. 30, 2001); see also Microsoft Corp. v.
Mehrotra, D2000-0053 (WIPO Apr. 10, 2000).
As a result the Panel finds that the domain names <mykbhomesucks.com>, <mykbhomesucks.net>,
and <mykbhomesucks.org> are confusingly
similar to the Complainant’s marks cited above. See Bloomberg L.P. v.
Secaucus Group FA 97077 (Nat. Arb. Forum June 7, 2001), for a similar
analysis.
The Complainant must show that the
Respondent has no rights or legitimate interests in respect of the disputed
domain names. The Respondent does not assume the burden of proof, but may
establish a right or legitimate interest in a disputed domain name by
demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name
corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not
acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of
the domain name without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark.
The Panel determines that the Complainant
has discharged the onus of proof for the second criterion: The Respondent has
failed to demonstrate any rights or legitimate interests.
Complainant
has not authorized Respondent to use its trademarks nor to register the
disputed domain names. Respondent is not known by the disputed domain names.
Respondent must have been aware of Complainant’s trademark before registering
the disputed domain names because Respondent’s stated purpose was to criticize
Complainant. See Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000).
Respondent’s “free speech” claim is
untenable. The evidence clearly displays a pattern of registering names, which
include Complainant’s trademark plus the word “sucks.” There is just no evidence of demonstrable
preparations for a business, or of any of the other matters which could assist
Respondent under the Policy. See Pepsico, Inc. v. Leeds, FA
117870 (Nat. Arb. Forum Sept. 27, 2002);
see also E. & J. Gallo
Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000); see also Direct Line Group Ltd. v. Purge I.T.,
D2000-0583, (WIPO Aug. 13, 2000); see also Meijer, Inc. v.
Porksandwich Web Servs.,
FA 97186
(Nat. Arb. Forum July 6,
2001).
The “free speech” argument of Respondent
is answered by the same reasoning as was adopted in Monty & Pat Roberts, Inc., v. J. Bartell, D2000-0300 (WIPO June
13, 2000) concerning the domain name < montyroberts.org>:
The
Panel finds the Complainant has established this element. The Respondents has
no rights or legitimate interests in the disputed domain names.
With
respect to this element, the paragraph 4(b) of the Policy reads:
“For the purposes of
Paragraph 4(a)(iii), the following circumstances, in particular but without
limitation, if found by the Panel to be present, shall be evidence of the
registration and use of a domain name in bad faith:
(i) circumstances
indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark
or service mark or to a competitor of that complainant, for valuable
consideration in excess of your documented out-of-pocket costs directly related
to the domain name; or
(ii) you have registered
the domain name in order to prevent the owner of the trademark or service mark
from reflecting the mark in a corresponding domain name, provided that you have
engaged in a pattern of such conduct; or
(iii) you have registered
the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain
name, you have intentionally attempted to attract, for commercial gain,
Internet users to your web site or other on-line location, by creating a
likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of your web site or location or of a
product or service on your web site or location.
On
a review of the evidence, none of the four enumerated circumstances exist in
this case, for the following reasons:
1. There is no evidence that the name was
acquired primarily for the purpose of sale.
2. There
does not appear to be intent to prevent the owner from reflecting the mark, and
in any event there is no pattern.
3. While
we may conclude that the primary purpose of the registration was to disrupt the
business of the Complainant, the Complainant is not a "competitor" of
the Respondent within the meaning of the Policy.
4.
Even if there was intention to attract Internet users to the
site, the site is not being operated for commercial gain.
Given that none of the four enumerated policy criteria with respect to
bad faith have been met, that leaves the Panel with the question of whether
there is bad faith for some other reason. On our reading of the Policy, each
Panel is responsible to determine whether there has been bad faith. The four
cited examples are situations where, if the evidence exists, the Panel must
find bad faith. This does not, however, preclude the Panel finding that other
circumstances amount to bad faith in a particular case. The paragraph says,
"in particular but without limitation."
Complainant
alleges that Respondent’s son registered the domain name
<kbhomesucks.com> in bad faith to cast aspersions on Complainant’s
goodwill. In this regard Complainant has demonstrated that Respondent’s son has
repeatedly offered to transfer <kbhomesucks.com> to Complainant for
consideration in ever-escalating amounts far in excess of his potential
out-of-pocket costs related to the domain name. His creation of the site with a
dispute with Complainant and use of the site as a bargaining chip from the
early stages of negotiations over that dispute is further evidence of his
bad-faith intent to profit from registration of the site. His bad faith use of
<kbhomesucks.com> also suggests an improper purpose in Respondent’s
registration of the <mykbhomesucks.com>, <mykbhomesucks.net>, and <mykbhomesucks.org> sites as his proxy.
As
already mentioned, Respondent did have prior knowledge of the KBHOME mark and
Respondent did deliberately chose to register the domain names which
incorporated that mark in its entirety. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). Furthermore the
<kbhomesucks.com> domain name was registered earlier than the domain
names in dispute. In Cruzeiro
Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen
Enterprises, D2000-0715 (WIPO Sept. 6, 2000), one factor held by the panel
as tilting the inference against the Respondent and assisting the Complainant
in discharging the onus of proof of bad faith was:
"mere passive holding
of a domain name can qualify as bad faith if the domain name owner's conduct
creates the impression that the name is for sale.”
The
Panel finds that such an impression is clearly created by Respondent’s
behavior. The Panel finds that Respondent has acted in bad faith in
registration of the disputed domain names. Complainant’s evidence establishes a
prima facie case that Respondent is using the domain names for a
personal vendetta of his son against Complainant for the purpose of disparaging
Complainant’s name and mark. The Panel finds that use of the domain name in
this fashion amounts to bad faith within the meaning of the Policy.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mykbhomesucks.com>,
<mykbhomesucks.net> and <mykbhomesucks.org> domain name
be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: August 25, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum