HomeVestors of America, Inc. v. Emily Rose / NCRS
Claim Number: FA1907001850964
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Valeri C. Williams of WILSON ELSER MOSKOWITZ EDELMAN & DICKER, LLP, Texas, USA. Respondent is Emily Rose / NCRS (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ibuyuglyhousesri.com>, registered with NameCheap, Inc..
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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 3, 2019; the Forum received payment on July 3, 2019.
On July 3, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <ibuyuglyhousesri.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2019 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@ibuyuglyhousesri.com. Also on July 16, 2019, 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 August 5, 2019.
Additional Submission filed by the Complainant was received on August 7, 2019.
Additional Submission filed by the Respondent was received on August 12, 2019.
On August 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to its registered trademarks for the WE BUY UGLY HOUSES marks, being likely to cause confusion, to cause mistake, and to deceive as to the affiliation, connection, or association of Respondent with Complainant.
The Complainant claims that is well known for its slogan, “We Buy Ugly Houses,” which was granted as a service mark registration (Reg. No. 2,761,385) by the United States Patent and Trademark Office (“USPTO”) in September 2003.
The Complainant argues that the disputed domain name only differs from its WE BUY UGLY HOUSES marks by the substitution of the pronoun “We” for the pronoun “I” as well as for the addition of the term “ri” at the end of the domain, which would stand for “Rhode Island.”. In this sense, the Complainant alleges that such modifications would not prevent the confusing similarity of the disputed domain name with the Complainant’s registered marks.
In addition, the Complainant alleges that the Respondent does not have a registered trademark for <ibuyuglyhousesri.com> or for the term “I Buy Ugly Houses RI”.
Moreover, the Complainant argues that the disputed domain name should be considered as having been registered in bad faith and used for unlawful purposes considering that Respondent has tried to hide its true identity through a proxy registration service (WhoisGuard, Inc.), notorious for malicious domain name registrations and criminal affiliations.
Accordingly, Complainant claims that the disputed domain name was only registered on April 28, 2018, which would demonstrate Respondent’s intention to mislead customers, or to use the Complainant’s mark and reputation to bolster their own real estate business by misrepresenting an affiliation or association with the Complainant.
Furthermore, the Complainant states that it has tried to contact the Respondent several times, and the fact that the Respondent has failed to respond to such attempts supports the Complainant’s argument that the disputed domain name has been registered and is being used in bad faith.
B. Respondent
The Respondent argues that it does not find that the Complainant is the owner of any registration for the “Ugly House” marks.
The Respondent further alleges that it has never used any of Complainants marks in any way form or fashion nor as a mark of the Respondent.
The Respondent argues that Complainant’s mark THE GOOD THE BAD AND THE UGLY is not original, considering that this particular phrase "The Good The Bad and the Ugly" is a copyrighted protected phrase from the 1966 movie "The Good The Bad and the Ugly.
The Respondent claims that Complainant’s slogan is no different than the common generic phrase "We Buy Houses" which would have been recently declared by a Federal Judge as so common and generic thereby rendering the mark to be cancelled. The Respondent further alleges that its slogan, "I Buy Ugly Houses RI" would not constitute typo squatting.
The Respondent claims that it does have legitimate interest in the disputed domain name considering that such was created purposely to covey in its customers and to distinguish it from large non-local companies.
The Respondent affirms that WhoisGuard, Inc. is a complimentary service automatically provided by Namecheap, Inc. at no cost. Respondent also alleges that Complainant’s attempts to try to reach out to the Respondent is irrelevant to the finding of bad-faith.
Lastly, the Respondent contends that Complainant has failed in meeting its required burden as delineated in Paragraph 4 (a) of the Policy, reason why the complaint should be denied in full and dismissed with prejudice.
C. Additional Submissions
The Complainant argues in its Additional Submission that the Respondent has failed to disprove the ten “Ugly House” marks and its validity before the USPTO, nor did the Respondent disprove its knowledge of the Complainant’s WE BUY UGLY HOUSES marks and its <webuyuglyhouses.com> domain name registration, all prior to the Respondent’s disputed domain name registration.
Moreover, the Complainant alleges that Respondent’s appropriation of Complainant’s mark to lead consumers to competing services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
In addition, the Complainant affirms that it has established prima facie validity and ownership of the WE BUY UGLY HOUSES marks as well as it cites prior panel decisions that have held that minor modifications incorporated in “we buy ugly houses” domain names do not prevent the confusing similarity to Complainant’s marks.
Lastly, the Complainant maintains that Respondent’s citation of the cancellation of the WE BUY HOUSES mark owned by WBH Marketing, Inc. - a third party to this complaint - does not influence the present complaint considering that no court nor the USPTO has concluded that any of Complainant’s WE BUY UGLY HOUSES marks are generic nor that they should be cancelled.
In the Additional Submission filed by the Respondent, the Respondent alleges that it has received 3 (three) different copies of the complaint and that the Additional Submission filed by the Complainant refers to a version of the complaint received before the response filed by the Respondent, reason why Complainant’s Additional Submission should be disregarded by the Panel.
In addition, the Respondent affirms that it did prove all 3 essential elements required to support the retention of the disputed domain name. Moreover, the Respondent affirms that several other competitors to Complainant’s business in Rhode Island use exact or variations of Complainant’s slogan “Buy Ugly Houses”.
The Respondent argues that the Complainant did not tried to directly contact the Respondent, considering that Complainant’s attempt of contacting the Respondent were made through Namecheap, Inc and WhoisGuard, Inc.
The Respondent further cites decision FA0701000904273, in which the Panel found that the Complainant does not own any rights over the “Ugly Houses” term and that the WE BUY UGLY HOUSES is not a strong mark.
At last, the Respondent maintains that Complainant’s WE BUY UGLY HOUSES mark is generic and not distinctive enough and that said mark should have never been allowed to be registered.
The Complainant is a privately-owned real estate franchise company that sells franchises to investors who buy homes in need of repair or homes that owners need to sell more quickly than can be done through a traditional sales arrangement with a realtor.
The Complainant is the owner of several trademark registrations for the We Buy Ugly Houses marks and related marks, such as Reg. No. 2,761,385 which was granted service mark registration by the United States Patent and Trademark Office (“USPTO”) in September 2003.
The Complainant is also the owner of the <webuyuglyhouses.com> domain name since June 4th, 2000.
The disputed domain name was registered on April 28th, 2018. The disputed domain name currently redirects to a real state “local buyers” website, operating in Rhode Island state.
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.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the required rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
The Complainant owns rights related to the WE BUY UGLY HOUSES mark as per registration of the mark with the USPTO (e.g., Reg. No. 2,761,385, registered Sep. 9, 2003). See Compl. Annex C.
Complainant also argues Respondent’s <ibuyuglyhousesri.com> domain name is confusingly similar to the WE BUY UGLY HOUSES mark, as the name incorporates a mark in its entirety, while deleting the pronoun “we” and adding “I” and adding the geographic term “ri” (for Rhode Island). While Complainant does not specifically assert this, the disputed domain name also incorporates a “.com” generic top-level domain (“gTLD”).
The Panel finds that such subtle changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis and, therefore, prevent the confusingly similarity between Complainant’s marks and the Respondent’s disputed domain name. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); Panco Men’s Products, Inc. v. LEN PETERSON / LEONARD L PETERSON, FA 1613409 (Forum May 26, 2015) (finding Respondent’s <genesvitamine.com> domain name is confusingly similar to the GENES VITAMIN E CREME mark pursuant to Policy ¶4(a)(i).).
Although the Respondent argues that Complainant’s marks are generic and that are other several competitors that make use of the “Ugly House” slogan related to its business, the Panel finds that the trademark certificates presented by the Complainant provide enough evidence of the ownership regarding said trademark registrations, which are unequivocally incorporated by the disputed domain name with the subtle change of the pronoun and the addition of the “ri” (for Rhode Island) previously mentioned, which are not enough to prevent the confusing similarity.
Therefore, the Panel finds that the <ibuyuglyhousesri.com> domain name is confusingly similar to the WE BUY UGLY HOUSES mark per Policy ¶ 4(a)(i).
Neither the Complainant nor Respondent make contentions as to Policy ¶ 4(c)(ii).
However, considering that WHOIS information lists the registrant of the <ibuyuglyhousesri.com> domain name as “Emily Rose / NCRS.” In addition, that such information may be used by the Panel when determining whether a respondent is commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The Panel finds that the Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
In spite of having interests in the disputed domain name considering that the Respondent currently uses the disputed domain name to redirect to a website advertising Respondent’s services of realtor in Rhode Island, such use cannot be considered as fair use or legitimate, considering that the use of the disputed domain name is a clear appropriation of Complainant’s registered WE BUY UGLY HOUSES marks, duly registered before the USPTO as previously mentioned.
The Panel notes that Complainant does not make any arguments that would fall under Policy ¶ 4(b). However, considering that the listed scenarios are non-exclusive and merely illustrative, the Panel finds that Respondent’s bad faith is demonstrated by its failure to respond to Complainant’s communications as a result of a proxy service with the <ibuyuglyhousesri.com> domain name.
Use of privacy service in registering a domain name can be evidence of bad faith registration per Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Complainant provides various examples of its communications with Respondent in which Respondent purportedly failed to respond. See Compl. Annexes C-E.
Thus, the Panel finds that the Respondent’s registration of the disputed domain name with false contact information is evidence of its bad faith per Policy ¶ 4(a)(iii).
Moreover, the Panel finds that the disputed domain name was registered and is being used by the Respondent in order to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s WE BUY UGLY HOUSES mark, considering that Complainant’s WE BUY UGLY HOUSES marks have been registered since 2003 and have been for years associated with the Complainant’s services.
In this sense, taking into account that (i) Complainant’s WE BUY UGLY HOUSES mark has been registered since 2003; (ii) Complainant’s domain name <webuyuglyhouses.com> has been registered since 2000; (iii) the fact that Complainant operates in 45 states and is already known to the consumer public by its slogan and registered WE BUY UGLY HOUSES mark, and; (iv) that Respondent registered the disputed domain name only on April 28th, 2018, is that this Panel considers that the Respondent has registered and is using the disputed domain name for commercial gain profiting off of Complainant’s registered marks.
Previous Panels have found that a respondent intended to confuse and attract Internet users in bad faith where a respondent used confusingly similar domains to offer services that competed with a complainant. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a)(iii) 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 <ibuyuglyhousesri.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: August 28, 2019
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