Houzz Inc. v. Qeqe Jr / Stars Media
Claim Number: FA1705001730122
Complainant is Houzz Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, U.S.A. Respondent is Qeqe Jr / Stars Media (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <houzz.website>, registered with Alpnames Limited.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2017; the Forum received payment on May 3, 2017.
On May 5, 2017, Alpnames Limited confirmed by e-mail to the Forum that the <houzz.website> domain name is registered with Alpnames Limited and that Respondent is the current registrant of the name. Alpnames Limited has verified that Respondent is bound by the Alpnames Limited 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 May 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2017 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@houzz.website. Also on May 5, 2017, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <houzz.website> domain name is identical to Complainant’s HOUZZ mark.
2. Respondent does not have any rights or legitimate interests in the <houzz.website> domain name.
3. Respondent registered and uses the <houzz.website> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant runs an online platform for home remodeling, architecture, interior design, landscaping, and home improvement. Complainant registered its HOUZZ mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,124,845, registered Apr. 10, 2012).
Respondent registered the <houzz.website> domain name on September 4, 2016, and uses it to operate a website that purports to provide similar products to those offered by Complainant.
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.”).
The Panel finds that Complainant has sufficient rights under Policy ¶ 4(a)(i) in the HOUZZ mark based on its registration with the USPTO. See See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <houzz.website> incorporates the exact HOUZZ mark and merely adds the TLD “website.” The addition of a descriptive TLD does not distinguish the disputed domain name from Complainant’s mark. See Chex Systems, Inc. v. Mark Heinrich, FA 1578916 (Forum Oct. 8, 2014) (finding that “Respondent clearly took advantage of the “.systems” new top-level domain to make a domain name that is effectively identical to the trademark.”). Therefore, the Panel finds that Respondent’s <houzz.website> domain name is identical to Complainant’s HOUZZ mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <houzz.website> domain name and is not authorized to use its HOUZZ mark. The WHOIS information on record lists “Qeq Jr.” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <houzz.website> domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant next argues that Respondent uses the <houzz.website> domain name to offer services and products that compete with Complainant’s business. Using a confusingly similar domain name to offer competing services fails to provide a bona fide offering of goods or services or a legitimate non-commercial fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). The Panel finds that Respondent’s website offers services and products sufficiently similar to Complainant’s interior design products and services, and thus Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use under Policy ¶ 4(c)(i) & (iii).
Complainant further argues that Respondent uses the <houzz.website> domain name in order to pass off as Complainant. Using a complainant’s mark to pass off as the complainant can evince a failure to make a bona fide offering of goods and services or legitimate non-commercial fair use. See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). The Panel notes a screenshot of the resolving page for the disputed domain name, which shows Respondent’s use of Complainant’s HOUZZ mark on the webpage, and finds that Respondent is attempting to pass itself off as Complainant. This is not a use of the disputed domain name in connection with a bona fide offering of goods or services or legitimate non-commercial fair use.
Complainant also argues that Respondent uses the <houzz.website> domain name to engage in a phishing scam. However, Complainant does not offer any specific evidence that Respondent uses the disputed domain name to engage in a phishing scam, and the Panel declines to so find.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent clearly uses the <houzz.website> domain name to attract consumers to its website, which offers services and products that directly compete with Complainant’s business, presumably for profit. The Panel thus finds bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Respondent uses the <houzz.website> domain name in an attempt to pass off as Complainant. The Panel finds that this is further evidence that Respondent registered and uses the disputed domain name in bad faith. See Qatalyst Partners LP v. Devimore, 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).
Complainant argues that Respondent had actual knowledge of Complainant’s HOUZZ mark because Respondent uses Complainant’s marks on the resolving webpage for the <houzz.website> domain name, and offers goods and services in Complainant’s field. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(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 <houzz.website> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 31, 2017
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