HomeVestors of America, Inc. v. COLBY SCHWARTZ
Claim Number: FA1809001809697
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Valeri C. Williams of WILSON ELSER MOSKOWITZ EDELMAN & DICKER, LLP, Texas, USA. Respondent is COLBY SCHWARTZ (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homevastors.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2018; the Forum received payment on September 28, 2018.
On September 28, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homevastors.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 October 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@homevastors.com. Also on October 1, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, HomeVestors of America, Inc., is a privately owned real estate
franchise company. Complainant has rights in the HOMEVESTORS mark based upon the registration with the United States Patent Office (“USPTO”) (e.g., Reg. No. 2,402,260, registered Nov. 7, 2000). See Amend. Compl. Ex. G. Respondent’s <homevastors.com> is confusingly similar to Complainant’s mark as Respondent incorporates the entire HOMEVESTORS mark, merely replaces the letter “e” for the letter “a” and appends the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <homevastors.com> domain name. Respondent is not licensed or authorized to use Complainant’s HOMEVESTORS mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <homevastors.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name. In addition, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent, phishing scheme.
Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business by impersonating Complainant as part of an email phishing scheme. Additionally, Respondent fails to make an active use of the disputed domain name. Moreover, Respondent used a privacy service to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States privately owned real estate franchise company.
2. Complainant has established its trademark rights in the HOMEVESTORS mark based upon the registration with the United States Patent Office (“USPTO”) (e.g., Reg. No. 2,402,260, registered Nov. 7, 2000).
3. Respondent registered the <homevastors.com> domain name on September 18, 2018.
4. Respondent has not made a legitimate active use of the disputed domain name but has used it to impersonate Complainant in furtherance of a fraudulent, phishing scheme.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the HOMEVESTORS mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i). Complainant provides copies of its’ USPTO registrations for the HOMEVESTORS mark (e.g., Reg. No. 2,402,260, registered Nov. 7, 2000). See Amend. Compl. Ex. G. Therefore, the Panel finds that Complainant has rights in the HOMEVESTORS mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HOMEVESTORS mark. Complainant submits that the <homevastors.com> domain name is confusingly similar to the HOMEVESTORS mark as it contains the HOMEVESTORS mark in its entirety, merely replacing the second letter “e” in the trademark with the letter “a” and adding the “.com” gTLD. Misspelling of a complainant’s mark, either by adding or removing letters, and adding a gTLD dies not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <homevastors.com> domain name is confusingly similar to Complainant’s HOMEVESTORS mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HOMEVESTORS trademark and to use it in its domain name, replacing the second letter “e” in the trademark with the letter “a” , which does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <homevastors.com> domain name on September 18, 2018;
(c) Respondent has not made a legitimate active use of the disputed domain name but has used it to impersonate Complainant in furtherance of a fraudulent, phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <homevastors.com> domain name as Respondent is not authorized to use Complainant’s HOMEVESTORS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See 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). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of this proceeding. See Amend. Compl. Ex. B. As a result, the Panel notes that the WHOIS information of record identifies registrant as “Colby Schwartz” See Amend. Compl. Ex. J. Furthermore, there is no evidence in the record to suggest Respondent was authorized to use Complainant’s HOMEVESTORS mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;
(f) Complainant argues that Respondent is not using the <homevastors.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant provides screenshots of the disputed domain name which resolves to an inactive webpage which currently features an “Error” notice. See Amend. Compl. Ex. I. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant submits Respondent attempts to impersonate Complainant as part of a fraudulent scheme. Use of an email address associated with the disputed domain name to pass off as a complainant in furtherance of phishing is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant claims Respondent uses an email address associated with the disputed domain name to impersonate Complainant and sends phishing e-mails to Complainant’s customers that are designed to solicit payment information under false pretenses. Complainant provides emails (dated Sep. 24, 2018) sent to Respondent concerning this alleged phishing scheme. See Amend. Compl. Ex. C. Thus, the Panel agrees that Respondent’s use of the domain name indicates it lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <homevastors.com> domain name in bad faith. Complainant submits Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Complainant submits Respondent uses an email address associated with the disputed domain name to impersonate Complainant and send phishing e-mails to Complainant’s customers, presumably designed to solicit information under false pretenses. Complainant provides emails it sent to Respondent regarding the fraudulent email scheme. See Amend. Compl. Ex. C. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant submits that Respondent fails to make an active use and is passively holding the domain name. Failure to make an active use a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) Complainant provides screenshots showing the disputed domain name resolves to an inactive website which currently features an “Error” notice. See Amend. Compl. Ex. I. Therefore, Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the HOMEVESTORS mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homevastors.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 28, 2018
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