DECISION

 

West Shore Home, LLC v. jiang li

Claim Number: FA2404002091876

 

PARTIES

Complainant is West Shore Home, LLC ("Complainant"), represented by Charles A. Hooker of Hooker & Habib, P.C., Pennsylvania, USA. Respondent is jiang li ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <westshorhome.com> and <westshorehom.com>, registered with Sav.com, LLC.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 4, 2024; Forum received payment on April 4, 2024.

 

On April 4, 2024, Sav.com, LLC confirmed by e-mail to Forum that the <westshorhome.com> and <westshorehom.com> domain names are registered with Sav.com, LLC and that Respondent is the current registrant of the names. Sav.com, LLC has verified that Respondent is bound by the Sav.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 April 10, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2024 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@westshorhome.com, postmaster@westshorehom.com. Also on April 10, 2024, 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 May 1, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant uses its WEST SHORE family of marks to promote its home renovation and remodeling services throughout the United States. Complainant has provided home renovation and remodeling services to hundreds of thousands of customers with hundreds of millions of dollars in annual revenue. Complainant has rights in the WEST SHORE HOME marks through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 5,746,115 registered May 7, 2019). The disputed domain names are confusingly similar to Complainant's WEST SHORE HOME mark as they contain the mark in their  entireties and simply misspell the words "SHORE" and "HOME" by omitting the letter "e." 

 

ii) Respondent has no legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent any rights in the WEST SHORE HOME mark.  Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent's websites feature links to third party sites where various services related to home remolding are offered. Respondent likely receives "click-through" fees for each referral.

 

iii) Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain names in order to disrupt Complainant's business and divert customers for commercial gain. Respondent unfairly disrupts Complainant's business by using the disputed domain names for pay-per-click websites with sponsored ads for competing websites. It is highly likely Respondent was aware of Complainant's rights in its WEST SHORE family trademarks, the value of said trademarks and Respondent's business at the time of Respondent's registration of the disputed domain names. The registration of a domain name containing a small typographical error of a trademark may show bad faith registration and use.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain names were registered on November 15, 2021.

 

2. Complainant has established rights in the WEST SHORE HOME mark through its registration with the USPTO (e.g., Reg. No. 5,746,115 registered May 7, 2019).

 

3. The first use in commerce of Complainant's  WEST SHORE family marks dates to July 1, 2007.

 

4. The disputed domain names resolve to websites, which feature links to third party sites where various services related to home remolding are offered.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant claims rights in the WEST SHORE and WEST SHORE HOME marks, inter alia, based upon registration for the mark WEST SHORE HOME with the USPTO (e.g., Reg. No. 5,746,115 registered May 7, 2019). Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). Complainant provides copies of its USPTO registrations for the WEST SHORE and WEST SHORE HOME marks. Therefore, the Panel  finds that Complainant has established rights in the WEST SHORE and WEST SHORE HOME marks under Policy ¶ 4(a)(i). 

 

Next, Complainant argues the disputed domain names <westshorhome.com> and <westshorehom.com> are confusingly similar to Complainant's WEST SHORE HOME mark as they incorporate the mark in their entireties and are differentiated only by the omission of the letter "e" in the words "SHORE" and "HOME" of Complainant's mark and add the ".com" gTLD. The omission or addition of a single letter as well as a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Webster Financial Corporation and Webster Bank, National Association v. Tanya Moulton, FA 2034214 (Forum Apr. 11, 2023) ("When a disputed domain name wholly incorporates another's mark, adding a single letter is insufficient to defeat a finding of confusing similarity."; finding <fwebsteronline.com> domain name confusingly similar to WEBSTER and WEBSTER ONLINE trademarks); ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) ("The Panel finds that the disputed domain name is confusingly similar to Complainant's mark because it differs from Complainant's mark by merely adding the letter 'L' . . . "). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant's WEST SHORE HOME mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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.").

 

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not commonly known by the domains and Complainant has not authorized or licensed to Respondent any rights in the WEST SHORE and WEST SHORE HOME marks. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA 1571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists "Pablo Palermo" as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant's mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) ("The WHOIS lists "Mohamed elkassaby" as registrant of record.  Coupled with Complainant's unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii)."). The unmasked WHOIS information for the disputed domain names lists "jiang li" as the registrant. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain names instead resolve to websites displaying links related to the goods and services associated with Complainant and its competitors. Where a respondent uses a domain to redirect users to competing third-party 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 TGI Friday's of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) ("Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services."). Complainant provides evidence of the disputed domain names resolving to websites featuring third-party links where various services related to home remolding, which are competing with Complainant's business. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 names.

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent unfairly disrupts Complainant's business by using the disputed domain names for pay-per-click websites where various services related to home remolding, which are competing with Complainant's business are offered. The Panel finds that 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) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) ("Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another."); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum Jan. 8, 2018) ("Respondent's hosting of links to Complainant's competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)"). As previously noted, Complainant provides evidence of the disputed domain names' resolving websites displaying third-party links, which are competing with Complainant. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii) or (iv).

 

 

Complainant further argues that Respondent was aware of Complainant's rights in the WEST SHORE and WEST SHORE HOME marks given the fame of Complainant's mark over Complainant's many years of continuous commercial use of its WEST SHORE family of trademarks prior to Respondent's registration of the domain names. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant's rights in the WEST SHORE HOME mark at the time of registering the disputed domain names, and finds that Respondent registered the disputed domains in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <westshorhome.com> and <westshorehom.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: May 3, 2024