national arbitration forum

DECISION

Barratt American Inc. v. Domaincar

Claim Number: FA0604000679556

PARTIES

Complainant is Barratt American Inc. (“Complainant”), represented by Peter K. Hahn, of Luce, Forward, Hamilton & Scripps, 600 West Broadway, Suite 2600, San Diego, CA 92101. Respondent is Domaincar (“Respondent”), Galerias 3, Zona 5, Panama 5235.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barattamerican.com>, registered with Belgiumdomains, LLC.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 17, 2006.

On April 15, 2006, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <barattamerican.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 April 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 2006 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@barattamerican.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On May 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <barattamerican.com> domain name is confusingly similar to Complainant’s BARRATT AMERICAN mark.

2. Respondent does not have any rights or legitimate interests in the <barattamerican.com> domain name.

3. Respondent registered and used the <barattamerican.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Barratt American Inc., has continuously and extensively used the BARRATT AMERICAN mark in connection with residential homebuilding activities in Southern California since 1981. Complainant operates a website at the <barrattamerican.com> domain name (registered on January 11, 1999) that provides information to Internet users about the company and its homebuilding services. Complainant prominently displays the BARRATT AMERICAN mark on its website, at all of its construction sites, on all exterior building signs and in all advertisements for new residential communities. Complainant advertises its activities under the BARRATT AMERICAN mark via radio, television, periodicals and various other marketing materials throughout Southern California. Through such continuous and extensive use, Complainant’s BARRATT AMERICAN mark has generated substantial goodwill in connection with providing high-quality homebuilding services.

Respondent registered the <barattamerican.com> domain name on November 19, 2005. Respondent’s website at the disputed domain name contains links to Complainant’s competitors in the homebuilding industry.

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."

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.

Identical and/or Confusingly Similar

Complainant is not required to own a trademark registration to establish rights in the BARRATT AMERICAN mark under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).

Complainant has established common law rights in the BARRATT AMERICAN mark through continuous and extensive use of the mark in connection with its homebuilding business for the past twenty-five years. The Panel finds that Complainant has generated substantial goodwill under the BARRATT AMERICAN mark and is well-known in Southern California for providing high-quality homebuilding services. Hence, the Panel finds that Complainant’s BARRATT AMERICAN mark has acquired secondary meaning sufficient to establish common law rights in the mark. See 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); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).

Additionally, Respondent’s <barattamerican.com> domain name is confusingly similar to Complainant’s BARRATT AMERICAN mark, because it wholly incorporates the mark and merely eliminates an “r,” thereby misspelling the mark. Panels have held that the mere misspelling of a mark in a domain name does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar). Therefore, the <barattamerican.com> domain name is confusingly similar to Complainant’s BARRATT AMERICAN mark pursuant to Policy ¶ 4(a)(i).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant contends that Respondent does not have rights or legitimate interests in the <barattamerican.com> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <barattamerican.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

The WHOIS information lists “Domaincar” as the registrant of the disputed domain names, and there is no other evidence in the record to suggest that Respondent is commonly known by the <barattamerican.com> domain name. Therefore, Respondent has not demonstrated rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent was not commonly known by the domain name <greatsouthernwood.com> where the respondent linked the domain name to <bestoftheweb.com>).

Moreover, Respondent’s <barattamerican.com> domain name, which is confusingly similar to Complainant’s BARRATT AMERICAN mark, resolves to a web directory featuring links to Complainant’s direct competitors in the homebuilding business. Respondent likely receives referral fees for each consumer it diverts to other websites, and therefore, Respondent is not using the disputed domain name in connection with 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration and use of a domain name confusingly similar to Complainant’s BARRATT AMERICAN mark to operate a web directory containing links to Complainant’s competitors in the homebuilding industry provides evidence that Respondent has registered and used the <barattamerican.com> domain name for the primary purpose of disrupting Complainant’s business, which constitutes bad faith under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site).

In addition, Respondent’s registration and use of the disputed domain name to redirect Internet users to a web directory featuring links to Complainant’s direct competitors in the homebuilding industry constitutes bad faith under Policy ¶ 4(b)(iv). In TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001), the respondent was using the <erarealty.com> domain name, which the panel found was confusingly similar to the complainant’s ERA mark, to redirect Internet users to its own website offering competing real-estate services. The panel found that such use constituted bad faith registration and use under Policy ¶ 4(b)(iv), because the respondent was intentionally attracting Internet users to a direct competitor of the complainant for commercial gain. Id. In this case, the Panel infers that Respondent receives click-through fees for each consumer it diverts to websites competing with Complainant. Thus, Respondent is taking advantage of the confusing similarity between its domain name and Complainant’s BARRATT AMERICAN mark in order to profit from the goodwill associated with the mark, in violation of Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).

Moreover, Respondent’s <barattamerican.com> domain name represents a common misspelling of Complainant’s BARRATT AMERICAN mark, which indicates that Respondent is typosquatting. Typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).

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 <barattamerican.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated: May 24, 2006

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