DECISION
West Shore Home, LLC v. Aimee Bilous
Claim Number: FA2404002091877
PARTIES
Complainant is West Shore Home, LLC ("Complainant"), represented by Charles A. Hooker of Hooker & Habib, P.C., Pennsylvania, USA. Respondent is Aimee Bilous LaForme ("Respondent"), represented by Steven War of War IP Law PLLC, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westshorehomes.com>, registered with GoDaddy.com, LLC.
PANEL
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.
Bart Van Besien 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, GoDaddy.com, LLC confirmed by e-mail to Forum that the <westshorehomes.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the domain 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 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@westshorehomes.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.
A timely Response was received and determined to be complete on April 30, 2024.
On May 1, 2024, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Bart Van Besien 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
The Complainant states it provides home renovation and remodeling services throughout the United States. The Complainant states it uses its trademarks to promote its services, including through advertising and social media platforms.
The Complainant owns the following trademarks (hereafter the "Trademarks"):
· US Service mark (combined word figurative mark), WEST SHORE HOME, no. 6,400,683, registered on June 29, 2021, first used on January 31, 2018, filed on September 10, 2020, in Nice class 37 ("Home renovation services; Home remodeling services in the nature of the reconstruction and repair of homes");
· US Service mark, WEST SHORE HOME (word mark), no. 5,746,115, registered on May 7, 2019, first used on February 28, 2018, filed on March 16, 2017, in Nice class 37 ("Home renovation services; Home remodeling services in the nature of the reconstruction and repair of homes"); and
· US Service mark (word mark), WEST SHORE, no. 4,968,264, registered on May 31, 2016, first used on July 1, 2010, and filed on October 2, 2015, in Nice class 37 ("Home renovation and remodeling services").
The Complainant states the Trademarks are distinctive because of the Complainant's widescale and continuous use of the Trademarks since July 1, 2007. The Complainant claims that its Trademarks have developed significant and substantial consumer recognition and goodwill.
The Complainant states that it is the owner of the domain name <westshorehome.com>.
The Complainant argues that the disputed domain name is identical and confusingly similar to its Trademarks since the disputed domain name includes the WEST SHORE HOME Trademark and the WEST SHORE Trademark in their entirety, merely adding the letter "S" and the generic Top-Level Domain ".com".
The Complainant states that the Respondent does not have legitimate rights in the disputed domain name. According to the Complainant, the Respondent makes no legitimate noncommercial or fair use of the disputed domain name. The Complainant asserts that the use of the disputed domain name is intended to confuse the public and to suggest a non-existing relationship with, or an approval by, or an affiliation with the Complainant.
The Complainant claims that the disputed domain name was registered and is being used in bad faith, because it has been registered for the purpose for selling, renting, or otherwise transferring the disputed domain name. To substantiate this, the Complainant refers to the header on the website available via the disputed domain name: "** WEB ADDRESS FOR SALE**". The Complainant also claims that the Respondent has made an illegitimate and unfair use of the disputed domain name, with the intent of deceptively routing Internet users to mistakenly access a webpage associated with the disputed domain name in order to confuse the Complainant's customers and/or to profit from the sale of the domain name. The Complainant asserts that "it is highly likely that the Respondent is aware of Complainant's rights in its WEST SHORE family of trademarks, the value of said trademarks and Respondent's business" (notes of the Panel: the Complainant probably means the "Complainant's business" instead of the "Respondent's business"; the Complainant does not mention the time of this "awareness": at the time of registration of the domain name and/or at the time of use?). Finally, the Complainant states that the only purpose of the Respondent's use of the disputed domain name is to trade upon the Complainant's trademark rights and corresponding goodwill and/or to disrupt the Complainant's business and/or to profit from the sale of the domain name.
B. Respondent
The Respondent agrees that the disputed domain name is "similar" to the Trademarks, sufficient to grant standing to bring the Complaint.
The Respondent asserts to have rights or legitimate interests in the disputed domain name at the time of registration and use of the disputed domain name:
· The Respondent underlines that the disputed domain name was registered two years prior to the Complainant's earliest asserted first use of July 1, 2007, and ten years before the Complainant filed its first Trademarks for registration.
· The Respondent registered the domain name after attending a seminar on how to market a small real estate business. At the time, the Respondent was using the name "WEST SHORE HOMES" in association with real estate transactions and real estate services. The Respondent submitted evidence that she mentioned the disputed domain name in her email signature as early as January 22, 2007 (i.e., before the Complainant's asserted first use of July 1, 2007). The Respondent states that this is a bona fide offering of services, and at least a preparation to engage in a bona fide offering of services.
· The Respondent argues that when a term has an accepted meaning besides in association with trademark rights, there is a legitimate interest in the term if the term is being used according to its dictionary meaning. The Respondent argues that "WEST SHORE" is a geographical area in which both the Respondent and the Complainant are based. The Respondent states that West Shore is an area of suburbs located to the west of the Susquehanna River outside Harrisburg in the state of Pennsylvania. The Respondent claims to possess a legitimate interest in using the terms "West Shore" and "homes" according to their dictionary meaning, as the Respondent offered real estate services in the West Shore area of Pennsylvania.
The Respondent contends that she has registered and used the disputed domain name in good faith:
· The Respondent argues that there is no bad faith registration since the Respondent registered the disputed domain name before the Complainant accrued any trademark rights, i.e. prior to the Complainant's asserted first use and prior to the Complainant's application and/or registration of the Trademarks.
· The Respondent registered the disputed domain names to provide real estate services. The Respondent communicated the domain name in its email signature to various persons. The Respondent submitted evidence of her Pennsylvania real estate licensure that was valid at the time of registration of the domain name. The Respondent also submitted evidence of advertisements in a newspaper that mentioned the domain name in connection with her legitimate business undertakings. Due to personal circumstances, the Respondent has put her business temporarily on hold.
· The Respondent argues that the evidence regarding the words "WEB ADDRESS FOR SALE" is presented misleadingly by the Complainant. According to the Respondent, the words appear in the header on the tab of the browser, and not in the actual body of the website available via the disputed domain name.
· The Respondent claims to not know how the words "WEB ADDRESS FOR SALE" appeared on the header of her website and does not recall adding this wording to her website. The Respondent assumes this has been done by the Registrar (GoDaddy), since the Registrar reserves this right for parked domains in its terms of use.
· The Respondent emphasizes that there is a lack of evidence by the Complainant (including regarding a purported bad faith offer to sell the domain name to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name). According to the Respondent, the Complainant does not offer any evidence to support a finding of bad faith except for the mere header on the Respondent's website.
The Respondent argues that the Complaint is an attempt at Reverse Domain Name Hijacking:
· The Respondent states that the Complainant has no bona fide basis for commencing this procedure. The Complainant had actual knowledge that it did not have a legitimate claim since the disputed domain name was registered on April 21, 2005, whilst the Complainant claims trademark rights only as from July 1, 2007, and has sought registration for its trademarks only since 2015.
· The Respondent claims that the Complainant knew that the Respondent had a legitimate interest in the disputed domain name. The Complainant knew that the term "West Shore" has a dictionary meaning of referring to the area in which both the Respondent and the Complainant are based.
· The Respondent argues that the Complainant has willfully ignored established Policy precedent. The Complainant knew that the disputed domain name predated the Trademarks. In addition, the Respondent stresses that the Complainant only presents a current screen capture of the Respondent's website, which has nothing to do with a registration in bad faith. The Complainant attempts to circumvent the question of registration in bad faith, by discussing the Complainant's use and the Respondent's current website status. Moreover, the Complainant listed no relevant case law.
· The Respondent is of the opinion that the Complainant has presented misleading evidence to the Panel. The screenshot of the Complainant gives the impression that the words "**WEB ADDRESS FOR SALE**" are part of the website, whereas these words are solely in the tab of the browser.
· The Respondent argues that there was a prior failed attempt to acquire the disputed domain name. The Respondent believes that the Complainant has approached the Respondent to purchase the domain name on November 16, 2022, through the registrar (GoDaddy). The Respondent proposed an amount of 65,000 U.S. Dollars for the disputed domain name (a large sum, but the Respondent was not keen on selling the domain name). There was no reaction on the proposal. The Respondent states it is reasonable to believe that the anonymous buyer was the Complainant. Therefore, the case is a clear attempt at a so-called "Plan B" acquisition.
· The Respondent states that the Complaint contains many "baseless" or "mere legal" accusations, without any evidence. For instance, the Complainant states that the use of the disputed domain name is "clearly intended" to confuse the public, and that the Respondent has made an illegitimate, commercial, unfair use of the disputed domain name "with the intent for commercial gain", and that the sole purpose of the registration was to deceptively mislead internet users. The Respondent argues that this is not the case, since "a bare website without any content clearly indicates to the consumer that it is likely that they simply typed the Complainant's domain name wrong". The Complainant conflates this case with cases of real and harmful "typo squatting", in which the consumer is bombarded with advertisements, the risk of viruses or malware, or anything that would benefit a bad faith registrant in a material way. Records from the WhoIs database show that the Complainant's own domain name <westshorehome.com> was registered as late as August 8, 2015, i.e. ten years after the creation of the disputed domain name, making it impossible for the Respondent to commit "typo squatting".
· The Complainant is represented by a counsel and as such should be held to higher scrutiny. The Complainant's council must have known that the disputed domain name was registered before the Trademarks were registered (or in general before any trademark rights of the Complainant), and therefore must have known that the Complaint could not succeed.
FINDINGS
The Respondent was a licensed "Real Estate Salesperson" in Pennsylvania (Mechanicsburg) from July 12, 2002, until May 31, 2010.
The Respondent registered the disputed domain <westshorehomes.com> on April 21, 2005.
The Complainant submitted trademark registration certificates for the following trademarks (hereafter the "Trademarks"):
· US Service mark (combined word figurative mark), WEST SHORE HOME, no. 6,400,683, registered on June 29, 2021, first used on January 31, 2018, filed on September 10, 2020, in Nice class 37 ("Home renovation services; Home remodeling services in the nature of the reconstruction and repair of homes").
· US Service mark, WEST SHORE HOME (word mark), no. 5,746,115, registered on May 7, 2019, first used on February 28, 2018, filed on March 16, 2017, in Nice class 37 ("Home renovation services; Home remodeling services in the nature of the reconstruction and repair of homes").
· US Service mark (word mark), WEST SHORE, no. 4,968,264, registered on May 31, 2016, first used on July 1, 2010, and filed on October 2, 2015, in Nice class 37 ("Home renovation and remodeling services").
From the trademark registration certificates submitted by the Complainant, the Panel notes that the first Trademark mentioned above (no. 6,400,683) is indeed registered in name of the Complainant (West Shore Home, LLC), but that the other two Trademarks mentioned above (no. 5,746,115 and no. 4,968,264) are registered by a distinct company, named West Shore Window & Door, Inc., with an identical address as mentioned on the trademark registration certificate for the first Trademark (no. 6,400,683). From a search in the publicly available trademark databases, the Panel understands that the third Trademark mentioned above (no. 4,968,264) is currently registered in name of the Complainant but that the second Trademark (no. 5,746,115) is still registered with West Shore Window & Door, Inc. (and also that the address of this company has been updated to the address mentioned by the Complainant in its complaint). The Panel presumes that this other company is somehow related to the Complainant (or it might even be the Complainant itself), but, because of a total lack of information about the identity of West Shore Window & Door, Inc., the Panel only takes account of the first and third Trademarks mentioned above (no. 6,400,683 and no. 4,968,264).
The Complainant has shown that it has made effective use of its Trademarks.
The Complainant claims to be the owner of the domain name <westshorehome.com> but did not provide evidence of this claim. The Complainant submitted a screenshot of a website that it operates but no domain name or url is mentioned on the screenshot. It is in fact the Respondent who submitted evidence that the domain name <westshorehome.com> was registered on August 6, 2015 (i.e., more than 10 years after the disputed domain name; the WhoIs data does not mention the Complainant as a registrant, since a privacy service is used).
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.
Identical and/or Confusingly Similar
The first element primarily functions as a standing requirement that is relatively straightforward. In this case, the Respondent acknowledges that the disputed domain name <westshorehomes.com> is "similar" (not "confusingly similar") to the Trademarks of the Respondent.
The disputed domain name incorporates the Complainant's "WEST SHORE" and "WEST SHORE HOME" Trademarks in their entirety, with the addition of the letter "s" and the generic ".com" Top-Level Domain. This addition does not add distinctiveness to the disputed domain name.
When a disputed domain name wholly incorporates a trademark, the addition of a mere descriptive word such as "HOME" or a single letter such as "s", does not prevent the finding of confusing similarity (see f.e. J.R. Simplot Company v. De Marshal, FA 2092797 (Forum May 7, 2024) (<simplotgrower.com>); Blackstone TM L.L.C. v. Walker Blakney, FA 2092978 (Forum May 7, 2024); Freestone Capital Management, LLC v. Paul Attwood, FA 2078420 (Forum Jan. 31, 2024); Cadence Design Systems, Inc. v. James Vada, FA 2068948 (Forum Nov. 25, 2023)).
The disputed domain name also consists of the generic ".com" Top-Level Domain (gTLD). The addition of this gTLD does not add distinctiveness to the disputed domain name. It is well established that the gTLD may be disregarded when it comes to considering whether a domain name is confusingly similar to a trademark to which the Complainant has rights (see f.e. Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA 1254682 (Forum May 14, 2009)).
The Panel concludes that the disputed domain name is confusingly similar to the Trademarks of the Complainant under the first element of paragraph 4(a) of the Policy.
Rights or Legitimate Interests
The overall burden of proof lies on the Complainant, but when a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of proof shifts to the Respondent. Following this shift, the Respondent must come forward with relevant evidence that demonstrates its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied the second element.
The Panel holds that the Complainant has not established a prima facie case in support of its arguments that the Respondent lacks rights and legitimate interests in the disputed domain name, under Policy paragraph 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24. 2006).
First, the Complainant argues that the use of the disputed domain name is clearly intended to confuse the public or to suggest a non-existing relationship with the Complainant.
The Panel notes that the disputed domain name was registered on April 21, 2005. This is more than 2 years before the alleged first use of the Trademarks by the Complainant (i.e., July 1, 2007, as claimed but not substantiated by the Complainant), and more than 5 years before the Complainant's registered first use of the Trademarks (i.e., October 2, 2015, according to the trademark certificates submitted by the Complainant). Also, the disputed domain name was registered more than 5 years before the Complainant's own domain name registration (i.e., August 6, 2015; the Panel emphasizes that the WhoIs records do not even mention the Complainant as a registrant since a privacy service was used).
Given the timeline of the facts of this case, it is implausible that the Respondent would have registered the disputed domain name to confuse the public or to suggest a relationship with the Complainant.
In light of the above, the arguments of the Complainant in the sense that "it is highly likely that the Respondent is aware of Complainant's rights in its WEST SHORE family of trademarks" are highly inappropriate.
Second, the Complainant argues that the Respondent is making an illegitimate, commercial, unfair use of the disputed domain name, "with the intent for commercial gain and/or who are otherwise searching for Complainant on the Internet and/or toward the offer of sale of the Domain Name" (sic). The Complainant also states that the sole purpose of the Respondent's registration of the domain name is to deceptively route Internet users who mistakenly mistype the Complainant's <westshorehome.com> or are otherwise searching for the Complainant on the Internet to the Respondent's website and/or to profit from the sale of the disputed domain name.
The Complainant did not provide the Panel with any further explanation, argumentation, or evidence in what sense the use of the domain name by the Respondent would be illegitimate, commercial, or unfair. The Panel emphasizes that the selling of a domain name is not per se an unfair use.
Third, the Complainant states that the sole purpose of the Respondent's registration of the disputed domain name is to deceptively route Internet users who mistakenly type the domain name as a typo of the Complainant's <westshorehome.com> domain name in order to confuse the Complainant's customers and/or to profit from the sale of the domain name. However, as already mentioned above, the registration date of the disputed domain name is more than 10 years before the registration date of the <westshorehome.com> of which the Complainant claims to be the owner.
Fourth, the Complainant argues that the Respondent cannot have legitimately chosen the disputed domain name because of the Complainant's established WEST SHORE family of Trademarks. Here, the Panel emphasizes again that the disputed domain name was registered before any use or registration of the Trademarks by the Complainant and before any accrual of trademark rights by the Complainant.
Fifth, the terms "WEST SHORE" indeed refer to the geographical area where both the Respondent and the Complainant are located (i.e., a group of suburbs of Harrisburg, Pennsylvania), and the term "HOMES" refers to services related to houses. The Panel derives from the real estate license of the Respondent, as well as from the earlier emails by the Respondent at the time of the registration of the disputed domain name and thereafter, that the Respondent registered the disputed domain name with the legitimate intention to provide real estate services. In other words, the Panel concludes that the Respondent was using the term "WEST SHORE HOMES" in its dictionary meaning referring to the geographical area in Pennsylvania where the Respondent was located, specifically in relation to real estate services.
Sixth, the fact that the Respondent was not authorized to use the WEST SHORE Trademarks of the Complainant does not automatically imply a lack of rights or legitimate interests. As stated above, there is no evidence that the Complainant had registered or non-registered trademark rights at the time of registration of the domain name.
Taking all the above elements into account, the Panel concludes that the Complainant did not show that the Respondent has no rights or legitimate interests in respect of the disputed domain name under the second element of paragraph 4(a) of the Policy.
Registration and Use in Bad Faith
In view of the Panel's finding that the Complainant failed to establish the second element of Paragraph 4(a) of the Policy, the Panel does not need to consider the Complainant's assertions that the Respondent registered and used the disputed domain name in bad faith. Nevertheless, the Panel will state for the record its conclusions on the third element of Paragraph 4(a) of the Policy as well.
First, as a general remark, the Panel finds that one should not lightly conclude that a respondent registered and/or used a domain name in bad faith.
Second, as concerns the chronology of the case, the Panel notes that the Respondent registered the disputed domain name on April 21, 2005.
The Complainant claims to have used its Trademarks since July 1, 2007. The Complainant did not provide evidence of this claim, but this date is in each case later than the registration date of the disputed domain name. The Complainant provided evidence that it registered its US Service mark "WEST SHORE", no. 4,968,264, on May 31, 2016, and used this trademark for the first time on July 1, 2010.
Either way, the registration of the disputed domain name by the Respondent predates the Complainant's accrual of trademark rights with at least 2 years and predates the Complainant's registration of the Trademarks with at least 10 years. The finding that the Respondent has registered the disputed domain name before the use and registration of the Trademarks by the Complainant, precludes bad faith registration or bad faith use by the Respondent. (see JoshCo Group, LLC d/b/a Veteran Benefits Guide v. Domain Administrator / DOT CORNER WEB SERVICES, FA 2046327 (Forum June 22, 2023); Clean Slate Credit Solutions v. Jake Rustenhoven, FA 1924095 (Forum Jan. 8, 2021); JumpCloud, Inc. v. Peter Irion / SCS LLC, FA 1914971 (Forum Nov. 27, 2020); Molina Healthcare, Incl. v. Oleksandr Korhun, FA 1375064 (Forum Mar. 20, 2011)).
Also, it seems that the Complainant was not even registered as a company at the time of registration of the disputed domain name. Indeed, from the limited research by the Panel in publicly accessible official company registers and on the Complainant's own LinkedIn page (in line with the general powers of the Panel to undertake limited factual research in matters of public record, as articulated in paragraph 10 of the Rules), it appears that the Complainant was only incorporated in 2006, i.e. a year after the Respondent's registration of the disputed domain name.
Third, the Respondent argued that she acquired the disputed domain name for delivering real estate services under the name "WEST SHORE HOMES", a name that refers to the geographic area where she was located. The Respondent submitted evidence that she used the domain name in her email signature, that she used the name in newspaper advertisements, that she had a real estate license, etc. In sum, the Respondent showed that she made at least preparations to use the domain name in connection with a bona fide offering of services. The explanation and the evidence provided by the Respondent counter the Complainant's arguments of bad faith registration and/or use.
Fourth, while the non-use of a domain name for a long period can be an element indicating bad faith (in combination with other elements), the Complainant did not even provide any evidence that the domain name has been left unused since a long period. For instance, the Complainant did not submit any evidence of historical webpages linked to the domain name. The Respondent explained that she temporarily put her business (and her website) on hold, due to personal circumstances, and the Panel has no reason to consider this as a factor of bad faith.
Fifth, the use of the words "WEB ADDRESS FOR SALE" does not constitute in itself a proof of bad faith.
Sixth, the Panel finds that the Complainant did not provide sufficient convincing argumentation or evidence that any of the circumstances of paragraph 4(b) of the Policy (or any other circumstances of bad faith at registration and during use of the disputed domain name) are present.
The Panel emphasizes that the burden of proof under the third prong of Paragraph 4(a) of the Policy is with the Complainant.
Taking the above into account, the Panel concludes that the Complainant failed to establish the registration and use of the disputed domain name in bad faith under the third element of Paragraph 4(a) of the Policy.
Reverse Domain Name Hijacking
Finally, the Panel finds that the Complaint was not brought in bad faith and does not constitute an abuse of the administrative procedure. Lack of success of a complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. The Panel refers in particular to the fact that the Complainant prevailed on the first element of Paragraph 4(a) of the Policy and to the fact that the Complainant did probably not know all relevant elements of fact because of the Respondent's initial use of a privacy service for the WhoIs registration of the domain name.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ordered that the <westshorehomes.com> domain name REMAIN WITH Respondent.
__________________________________________________________________
Bart Van Besien, Panelist
Dated: May 15, 2024
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page