Harford Property Services, Inc. v. David Breth
Claim Number: FA2307002053653
Complainant is Harford Property Services, Inc. (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is David Breth (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpsmanagementdelaware.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on July 18, 2023; Forum received payment on July 18, 2023.
On July 19, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <hpsmanagementdelaware.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 July 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2023 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@hpsmanagementdelaware.com. Also on July 20, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that it specializes in providing residential, community, and commercial property management services in the United States. Created over a decade ago, Complainant quickly built its reputation for providing high-quality, reliable services to its clients. Thanks to those efforts, Complainant has been named one of the fastest growing community and commercial property management companies servicing Delaware, Maryland, North Carolina, Pennsylvania, South Carolina, and Washington D.C. Complainant’s services offered under the HPS MANAGEMENT brand also represent an unmatched dedication to providing the best property management services through dedicated teams of highly skilled, Community Association Institute certified professionals focused on protecting property values with integrity. Complainant is recognized, and has a stellar reputation, for providing customizable Homeowners Association and Condominium Management Plans. Since its inception, Complainant has used the mark HPS MANAGEMENT and associated distinctive logo; it extensively advertises and promotes its services under the HPS MANAGEMENT mark; it also incorporates the marks in its legitimate domain name, which is <hpsmanagement.com>, registered in 2011. As a result, and through favorable industry acceptance and recognition, the relevant consuming public and trade have come to recognize and identify Complainant as the source of highly quality residential, community, and commercial property management services in connection with its HPS MANAGEMENT mark. Complainant asserts common law rights in the HPS MANAGEMENT mark.
Complainant alleges that the disputed domain name is confusingly similar to its HPS MANAGEMENT mark because it incorporates the mark in its entirety and merely adds the geographic term “Delaware” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in its mark. Respondent does not use the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, the resolving website displays Complainant’s mark and distinctive logo and purports to offer services that compete with those of Complainant. The resolving website also displays Complainant’s legitimate Delaware office phone number and mailing address, and links to Complainant’s legitimate YouTube channel. Thus Respondent attempts to pass off as Complainant. The resolving website further includes a “Get A Fast Hassle-Free Quote” component wherein unsuspecting current, or prospective, customers insert their personal information. This indicates that Respondent registered and is using the disputed domain name as part of an unlawful phishing and/or other fraudulent scheme.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in its HPS MANAGEMENT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has common law rights in the mark HPS MANAGEMENT and uses it to provide residential, community, and commercial property management services.
Complainant’s rights in its mark predate the registration of the disputed domain name.
The disputed domain name was registered in 2023.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website attempts to pass off as Complainant by displaying Complainant’s mark and distinctive logo, Complainant’s legitimate Delaware office phone number and mailing address, and links to Complainant’s legitimate YouTube channel. The resolving website purports to offer services that compete with those of 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts common law rights in its HPS MANAGEMENT mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant registered the domain name <hpsmanagement.com> in 2011, and used it to market and to provide property management services well before the registration of the disputed domain name. Complainant provides sufficient evidence to establish secondary meaning in the mark. Therefore, the Panel finds that Complainant established common law rights in its HPS MANAGEMENT mark, with rights predating the first registration of the disputed domain name.
The disputed domain name incorporates Complainant’s HPS MANAGEMENT mark in its entirety and merely adds the geographic term “Delaware” and the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), adding a gTLD and a geographic term is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Fight Club New York v. (Name Redacted), FA 1836155 (Forum Apr. 26, 2019) (“The Panel accepts that the addition of a geographic term or place name does not alter the underlying trademark or negate the confusing similarity and it does not sufficiently differentiate the disputed domain name from that trademark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “David Breth”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant provides evidence showing that the resolving website purports to offer services that compete with those of Complainant, namely property management services. Where the Respondent uses a domain to redirect users to competing services, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Further, Respondent uses the disputed domain name to pass off as Complainant: the resolving website displays Complainant’s mark and distinctive logo, Complainant’s legitimate Delaware office phone number and mailing address, and links to Complainant’s legitimate YouTube channel. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”); see also Choice Hotels International, Inc. v. Hotel Partners a/k/a eGO Inc., FA 190506 (Forum Oct. 6, 2003) (“Respondent’s attempt to pass itself off as Complainant at the disputed domain name, without authorization or license by Complainant . . . is evidence that Respondent lacks rights or legitimate interests in the disputed domain name”); see also Bloomberg L.P v. Bloomberg Realty (India) Private Limited, FA 1439263 (Forum May 30, 2012) (“Use of a domain name which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services.”). Therefore, for this reason also, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent uses the disputed domain name to engage in phishing. Since, as discussed below, other elements are dispositive for the instant case, the Panel does not need to discuss this allegation.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to redirect consumers to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Further, also as already noted, Respondent uses the disputed domain name to attempt to pass off as Complainant. This can be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith”); see also Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) (“Respondent’s use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”). Therefore the Panel finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Finally, Respondent had actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and distinctive logo, Complainant’s legitimate Delaware office phone number and mailing address, and links to Complainant’s legitimate YouTube channel. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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 Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <hpsmanagementdelaware.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 11, 2023
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