Shea Homes Limited Partnership v. Sam Sobh / Perfumiya LLC
Claim Number: FA1806001789852
Complainant is Shea Homes Limited Partnership (“Complainant”), represented by Robert J. Itri of Milligan Lawless, P.C., Arizona, USA. Respondent is Sam Sobh / Perfumiya LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sheahomesviolations.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2018; the Forum received payment on June 1, 2018.
On June 4, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sheahomesviolations.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2018 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@sheahomesviolations.com. Also on June 8, 2018, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in SHEA HOMES and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark SHEA HOMES in connection with its business as a property developer;
2. Complainant holds, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 3,246,327, registered May 29, 2007 for the trademark;
3. Respondent is a licensed real estate agent working for a business in the State of Arizona;
4. prior to the Complaint there was correspondence between the parties in relation to the potential purchase by Respondent from Complainant of a house in the State of Arizona;
5. the disputed domain name was registered on April 4, 2018;
6. at the time of the Complaint the resolving website stated: “This is the official consumers/buyers complaint’s (sic) website against Shea Homes Vialotions (sic) in the State of Arizona … Parked for Construction”;
7. at the time of this decision the resolving website carried other material described later; and
8. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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."
Preliminary Procedural Issue: Dispute Outside Scope of the Policy
Annexed to the Complaint are copies of email exchanges between the parties regarding disagreement over the conditions of possible sale of a property to Respondent by Complainant. A question arises as to whether the matter involves a contractual dispute outside the proper scope of the Policy. If so the complaint might be denied. However, the evidence suggests that the intention of Respondent in registering the disputed domain name was to create a platform from which it could publicly comment on Complainant’s business practices in the State of Arizona. It is open to Complainant to bring these Administrative Proceedings in good faith in a belief that the domain name registration was abusive and liable to determination under the Policy. The Panel considers it correct to apply the Policy.
Primary Issues
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.[i]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Since Complainant evidences its registration of the trademark with USPTO the Panel finds that it has shown trademark rights. The disputed domain name takes the trademark, to which adds the non-distinctive gTLD, “.com”, and the word “violations”. The Panel finds that the relevant paragraph 4(a)(i) analysis of confusing similarity has been squarely considered by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Jurisprudential Overview 3.0”)[iii] which asks at paragraph 1.13: Is a domain name consisting of a trademark and a negative term (“sucks cases”) confusingly similar to a complainant’s trademark? The consensus viewpoint of UDRP panelists is that
“[a] domain name consisting of a trademark and a negative or pejorative term (such as <[trademark]sucks.com>, …) is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element. The merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements.”
The Panel finds that the disputed domain name is confusingly similar to the trademark for the purposes of the Policy and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information for the domain name registrant, “Sam Sobh / Perfumiya LLC”, does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There has been no bona fide offering of goods or services or legitimate noncommercial or fair use of the domain name. The evidence accompanying the Complaint showed that the disputed domain name resolved to a website under constructions which was to be devoted to alleged “violations” by Complainant in the State of Arizona.
Research by the Panel showed that the resolving website now carries a copy of a so-called “Letter of Concern” dated April 25, 2018 from the Arizona Department of Real Estate to Complainant. The letter states that a complaint brought against Complainant resulted in a formal caution but no disciplinary action. Respondent has added its own narrative to that letter claiming Complainant’s business actions were “a scam” and “fraudulent”, words not used by the Arizona Department of Real Estate.
The Panel finds that Complainant has made a prima facie case. If the evidence is assessed at the date of filing of the Complaint, there has been no use of the disputed domain name and so no bona fide offering of goods or services or legitimate noncommercial or fair use of the name.[v] If the matter is assessed having regard to the current state of the resolving website then the Panel follows the WIPO Jurisprudential Overview 3.0” which asks at paragraph 2.6: : Does a criticism site support respondent rights or legitimate interests? The answer at 2.6.3 is that:
“Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. …”
The Panel finds that Respondent’s use of the domain name is not, on the limited evidence available, “genuinely fair”, making statements that go well past what is said in the Letter of Concern. That conclusion is supported by evidence of Respondent’s pre-Complaint correspondence to Complainant wherein he stated that “I will take it to the furthest levels till I get my house and trust my words (sic).”
The onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a formal Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds, as separate matters, registration and use in bad faith. Respondent clearly targeted Complainant and its trademark at the time it created the domain name. It did so with the stated intention of highlighting alleged “violations”. Its later use of the domain name, already described, adds negative commentary to a letter not previously in the public domain and, on the facts available to the Panel, overstates the conclusion drawn by the regulatory body. The heated pre-Complaint correspondence from Respondent to Complainant appears to be the result of Respondent’s inability to secure a property from Complainant on agreeable terms. There is no evidence before the Panel of third parties adversely affected by any action taken by Complainant or having the same complaint as Respondent[vi]. The Panel takes the view that the public interest factor which might in other circumstances have somehow weighed in favour of a criticism site resolving from the disputed domain name are in this case overshadowed by what seems to have been the intention of Respondent, to publicly “name and shame” Complainant and so exert pressure to Complainant to accede to certain arrangements with Respondent, personally. Whether or not Respondent may have other forms of redress for the perceived wrong is not a matter for this Panel, but in so far as the Policy is concerned, the Panel finds registration and use of the domain name in bad faith.
Complainant has accordingly satisfied the third and final aspect of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sheahomesviolations.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 9, 2018
[i] See, for example, 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); 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.”).
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See http://www.wipo.int/amc/en/domains/search/overview3.0
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”.
[vi] On Panel’s reading of the pre-Complaint correspondence, the likelihood is that the complaint to the Arizona Department of Real Estate was made by Respondent. There is no suggestion that the letter was the consequence of a class of complainants.
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