Houzz Inc. v. Joe Peng / Mac Concierge, Inc.
Claim Number: FA1707001740865
Complainant is Houzz Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Joe Peng / Mac Concierge, Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <freshouzz.com>, <coolhouzz.com>, and <houzz.rocks>, registered with Name.com, Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2017; the Forum received payment on July 20, 2017.
On July 26, 2017, Name.com, Inc. confirmed by e-mail to the Forum that <freshouzz.com>, <coolhouzz.com>, and <houzz.rocks> are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 July 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@freshouzz.com, postmaster@coolhouzz.com, postmaster@houzz.rocks. Also on July 31, 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 August 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Houzz Inc., operates a leading online platform for home remodeling and design. Complainant operates under the HOUZZ mark, and has registered said mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,124,845, registered July 8, 2011), establishing rights. Respondent’s <freshouzz.com>, <coolhouzz.com>, and <houzz.rocks> merely add the terms “fresh” or “cool” and the top-level domains (“TLDs”) “.com” or “.rocks” to the fully incorporated HOUZZ mark, creating confusing similarity under Policy ¶ 4(a)(i).
Respondent has no rights and legitimate interests in <freshouzz.com>, <coolhouzz.com>, and <houzz.rocks>. First, Respondent is not commonly known by any of the domain names. Further, no bona fide offering or legitimate noncommercial/fair use is present because <freshouzz.com> resolves to a competing website offering home décor and design ideas while fully incorporating Complainant’s mark—passing itself off as Complainant; and <coolhouzz.com>, and <houzz.rocks> both resolve to websites featuring a list of competing “related links” which direct Internet users to competitors of Complainant. See Compl., at Attached Ex. 9.
Respondent registered and used <freshouzz.com>, <coolhouzz.com>, and <houzz.rocks> in bad faith. Respondent has registered several domain names that infringe on Complainant’s intellectual property rights, indicating a pattern of bad faith under Policy ¶ 4(b)(ii). Next, Respondent’s inclusion of competing services and hyperlinks impute an intent to confuse Internet users as to the source, sponsorship, affiliation, or endorsement of the website or location in an attempt to commercially gain under Policy ¶ 4(b)(iv). Furthermore, it is clear that Respondent had actual knowledge of Complainant, given Respondent’s registration of several domain names incorporating Complainant’s mark and the use made of them.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Respondent registered the disputed domain names as follows;
<freshouzz.com> May 13, 2016;
<coolhouzz.com> May 6, 2016; and
<houzz.rocks> May 6, 2016.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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 the disputed domain names are each confusingly similar to Complainant’s valid and subsisting trademark, HOUZZ. Complainant has adequately pled it rights and interests in and to this trademark. Respondent arrives at the disputed domain names by merely adding generic words such as “cool” or “fresh” and g TLDs such as “.com” or “.rocks.” This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
In addition, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent is not commonly known by any of the disputed domain names. The WHOIS information does not indicate any connection between Respondent—either through its name or a nickname—and the disputed domain names.
The Panel finds that Respondent has no bona fide offering or legitimate noncommercial/fair use because <freshouzz.com> resolves to a competing website offering home décor and design ideas while fully incorporating Complainant’s mark—passing itself off as Complainant; and <coolhouzz.com>, and <houzz.rocks> both resolve to websites featuring a list of competing “related links” which direct Internet users to competitors of Complainant. See Compl., at Attached Ex. 9. Attempting to pass itself off as Complainant does not indicate rights and legitimate interests for Respondent.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Respondent has registered several domain names that infringe on Complainant’s trademark rights, indicating a pattern of bad faith under Policy ¶ 4(b)(ii). The sheer number of domain names registered and named in a UDRP proceeding may lead to a finding of bad faith. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Like Microsoft, there are three domain names incorporating Complainant’s mark. Consequently, the Panel finds bad faith under Policy ¶ 4(b)(ii).
Furthermore, Respondent’s inclusion of competing services and hyperlinks impute an intent to confuse Internet users as to the source, sponsorship, affiliation, or endorsement of the website or location in an attempt to commercially gain under Policy ¶ 4(b)(iv). The Panel finds that Respondent’s use constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Finally, the Panel finds that Respondent had actual knowledge of Complainant’s trademark and its rights thereto given Respondent’s registration of several domain names incorporating Complainant’s mark and the use made of them.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that <freshouzz.com>, <coolhouzz.com>, and <houzz.rocks> be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: August 24, 2017
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