HomeVestors of America, Inc. v. East
Broward United Soccer Club
Claim
Number: FA0507000520519
Complainant is HomeVestors of America, Inc. (“Complainant”),
represented by Stephen L. Sapp, of Locke Liddell & Sapp LLP,
2200 Ross Avenue, Suite 2200, Dallas, TX 75201. Respondent is East Broward
United Soccer Club (“Respondent”), 5079 N. Dixie Highway, Suite #118,
Oakland Park, FL 33334.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <homesvestor.com> and <homesvestors.com>,
registered with Network Solutions, 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 July
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 21, 2005.
On
Jul 22, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <homesvestor.com> and <homesvestors.com>
are registered with Network Solutions, Inc. and that Respondent is the current
registrant of the names. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 11, 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@homesvestor.com and postmaster@homesvestors.com by
e-mail.
Having received no Response from Respondent, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
August 19, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <homesvestor.com>
and <homesvestors.com> domain names are confusingly similar to
Complainant’s HOMEVESTORS mark.
2. Respondent does not have any rights or
legitimate interests in the <homesvestor.com> and <homesvestors.com>
domain names.
3. Respondent registered and used the<homesvestor.com>
and <homesvestors.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
HomeVestors of America, Inc., and its related companies are in the business of
providing real estate-related services, mortgage-related services and
franchising services, namely, offering technical assistance in establishing,
operating, marketing and developing franchised businesses that purchase,
finance and sell residential real estate.
Complainant has
used the HOMEVESTORS mark in connection with its real estate and franchising
services in commerce since July 21, 1989.
Complainant holds several trademark registrations with the United States
Patent and Trademark Office (“USPTO”) for the HOMEVESTORS mark (Reg. No.
2,216,811 issued January 12, 1999; Reg. No. 2,402,260 issued November 7, 2000;
Reg. No. 2,721,129 issued June 3, 2003; Reg. No. 2,761,385 issued September 9,
2003).
Respondent
registered the <homesvestor.com> and <homesvestors.com>
domain names on January 31, 2005.
Respondent is using the disputed domain names to redirect Internet users
to commercial websites offering links to residential real estate services that
directly compete with Complainant’s services.
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. 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 (Nat. Arb. 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.").
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 has
established rights in the HOMEVESTORS mark through its registrations of the
mark with the USPTO and through continuous use of the mark in commerce. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <homesvestor.com>
and <homesvestors.com> domain names are confusingly similar to
Complainant’s HOMEVESTORS mark because the domain names add and/or omit the
letter “s” and add the generic top-level domain “.com” to the mark. The Panel finds that these minor alterations
to Complainant’s registered mark are insufficient to negate the confusingly
similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a the
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s marks); see also Universal City Studios, Inc. v. HarperStephens,
D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the
complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall
impression of the mark and thus made the disputed domain name confusingly
similar to it); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA
96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to the complainant’s
NATIONAL GEOGRAPHIC mark); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <homesvestor.com>
and <homesvestors.com> domain names. Once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to prove that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, the Panel presumes that Respondent does not have rights or
legitimate interests in the disputed domain names. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the
complainant has asserted that respondent does not have rights or legitimate interests
with respect to the domain name, it is incumbent on 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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the <homesvestor.com> and <homesvestors.com>
domain names to redirect Internet users to commercial websites offering
residential real estate services that directly compete with Complainant’s
services. Respondent’s use of domain
names that are confusingly similar to Complainant’s HOMEVESTORS mark to
redirect Internet users to competing websites is not a use in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
nor is it a legitimate noncommercial or fair use of the domain names pursuant
to Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where the respondent attempted
to profit using the complainant’s mark by redirecting Internet traffic to its
own website); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
Respondent has
not offered any proof, and there is no indication in the record, suggesting
that Respondent is commonly known by the <homesvestor.com> or <homesvestors.com>
domain name. Furthermore, Respondent
has neither permission nor a license to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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); 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.
Respondent has
registered and used the <homesvestor.com> and <homesvestors.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by registering domain
names that are confusingly similar to Complainant’s mark and using the domain
names to market competing real estate services. See EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of
variation from the complainant's marks suggests that the respondent, the
complainant’s competitor, registered the names primarily for the purpose of
disrupting the complainant's business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding the respondent acted in bad faith by attracting Internet
users to a website that competes with the complainant’s business).
Moreover,
Respondent is capitalizing on the goodwill of the HOMEVESTORS mark by using the
<homesvestor.com> and <homesvestors.com> domain names
to divert Internet users to websites featuring competing real estate
services. Since the disputed domain
names are confusingly similar to Complainant’s mark, a consumer searching for
Complainant would become confused as to Complainant’s affiliation with the
resulting websites. Therefore,
Respondent’s opportunistic use of the disputed domain names constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from
its diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
Furthermore,
Respondent’s registration of domain names that are confusingly similar to
Complainant’s well-known registered mark, as well as the content of
Respondent’s websites, suggest that Respondent registered the disputed domain
names with actual knowledge of Complainant’s rights in the HOMEVESTORS mark. Furthermore, Respondent is deemed to have
constructive knowledge of Complainant’s mark due to Complainant’s registrations
with the USPTO. Thus, the Panel finds
that Respondent registered and used the domain names in bad faith because
Respondent chose the <homesvestor.com> and <homesvestors.com>
domain names based on the distinctive and well-known qualities of Complainant’s
mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the Complainants
that the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”).
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 <homesvestor.com> and <homesvestors.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
August 26, 2005
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