Offerpad, Inc. v. Phillip Haynes
Claim Number: FA2008001909553
Complainant is Offerpad, Inc. (“Complainant”), represented by Jeremy Kapteyn of KW Law, LLP, United States. Respondent is Phillip Haynes (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <offerpaddepot.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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 21, 2020; the Forum received payment on August 21, 2020.
On August 24, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <offerpaddepot.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 August 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2020 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@offerpaddepot.com. Also on August 24, 2020, 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 September 13, 2020.
On August 24, 2020, Respondent submitted two sets of e-mails to the Forum replying to the Written Notice of Complaint, Complaint and Annexes, via e-mail which also included the Complainants’ contacts. Though this was received prior to the response and essentially repeat some of the elements of the response, the Panelist deems that it does comply with Supplemental Rule 7 and these may also be considered.
However, on September 17, 2020, Respondent e-mailed the Forum again without any evidence that this correspondence was also submitted to the Complainant. The Panel finds that this e-mail does not comply with Supplemental Rule 7 which states:
If a party requests an additional written submission be considered by the Panel, the additional submission must be sent to Forum along with proof of service on the opposing party(s). Forum will forward all additional submissions to the Panel. It is within the discretion of the Panel to accept or consider additional unsolicited submission(s).
Therefore, the Panelist will not accept or consider that additional unsolicited submission.
On September 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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
Complainant, Offerpad, Inc., provides technology-driven home buying services. Complainant has rights in the OFFERPAD mark based on a registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,735,384, registered on April 23, 2019) and several applications that are still pending review. See Compl. Ex. 1. Additionally, Complainant’s registration states that it has rights in the OFFERPAD mark based on Complainant’s use of the mark in commerce since July 22, 2015. See Compl. Exs. 6-13.
Respondent’s <offerpaddepot.com> domain name was registered on September 17, 2018 and has had 11 distinct ownership records the most recent being on May 6, 2020. See Compl. Ex. 16. The disputed domain name is confusingly similar to Complainant’s mark because it incorporates the entire OFFERPAD mark and simply adds the generic term “depot” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <offerpaddepot.com> domain name. Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use; rather, Respondent uses the disputed domain name divert Internet users to Respondent’s own website, where it offers competing services.
Respondent registered and uses the <offerpaddepot.com> domain name in bad faith. Respondent attempts to attract Internet users to its competing website for commercial gain. Additionally, Respondent registered the disputed domain name no earlier than three years after Complainant began using its mark in commerce. See Compl. Ex. 15. Furthermore, Respondent’s use of false WHOIS information further indicates bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the OFFERPAD mark.
B. Respondent
Respondent, Phillip Haynes, claims the <offerpaddepot.com> domain name was purchased legally. Respondent claims the resolving webpage of the disputed domain name does not resemble Complainant’s website and that Respondent has never pretended to be Complainant. Respondent offers to sell the disputed domain name to Complainant for a minimum of $99,000.
C. Additional Submissions
In the two additional submissions submitted on August 24, 2020, which were accepted by the Panel, Respondent questions the jurisdiction of the FORUM to preside over this matter, claims that he did nothing illegal, “reserve[s] all my right UFC 1-308 without prejudice” and states: “PAY ME 400K FOR THE DOMAIN THEN.”
1. The disputed domain name <offerpaddepot.com> is identical or confusingly similar to a trademark or service mark to which Complainant has rights.
2. The Respondent has not demonstrated any recognized legitimate rights or interests in the disputed domain name namely:
a. Respondent is not making a bona fide offering of goods or services.
b. Respondent is not commonly known by the domain name.
c. Respondent is not making a legitimate noncommercial use of the domain name.
3. The disputed domain name has been registered and used in bad faith.
a. With knowledge of Complainant’s strong trademark, Respondent registered the domain name to take advantage of Complainant’s goodwill and reputation to compete directly with Complainant.
b. Respondent provided false and/or misleading WHOIS information.
c. Respondent demands excessive compensation from Complainant in response to the UDRP Complaint.
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.
Complainant has rights in the OFFERPAD mark per Policy ¶ 4(a)(i) through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the OFFERPAD mark (OFFERPAD – Reg. No. 5,735,384 registered April 23, 2019). See Compl. Ex. 1. Although the registration was not granted until 2019 after the disputed domain name was registered, the application for the OFFERPAD mark was filed in May 2017 and lists a first use date in commerce of the mark OFFERPAD on September 1, 2015 (three years prior to the registration of the disputed domain name).
Respondent’s <offerpaddepot.com> domain name is identical or confusingly similar to Complainant’s OFFERPAD mark because it incorporates the entire OFFERPAD mark and simply adds the generic term “depot.” The addition of a generic term to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
In fact, in Gene Klein a/k/a Gene Simmons, Gene Simmons Company, and Kiss Catalog, Ltd. V. Darryl Boyd, D2001---0183 (WIPO April 16, 2001), and Sanofi-Aventis v. Mack Tack, D2005-0717 (WIPO August 30, 2005), the two panels specifically found that the addition of the word “depot” to the domain names were found to be confusingly similar to the Complainants’ marks (which did not include the term “depot”).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, 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”).
A Complainant can make its prima facie case by alleging that it has no relationship with respondent and did not authorize respondent to use its trademark. Once those facts are established, the Respondent has the burden to establish that it is either (i) making a bona fide offering of goods or services, (ii) commonly known by the domain name, or (iii) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. See Policy ¶ 4(c)(i) – (iii).
Complainant alleges that Respondent lacks any rights or legitimate interest in the <offerpaddepot.com> domain name because (a) Respondent is not making a bona fide offering of goods or services, (b) Respondent is not commonly known by the domain name; and (c) Respondent is not making a legitimate noncommercial or fair use of the domain name.
a) Respondent is not making a bona fide offering of goods or services
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to divert Internet users to Respondent’s website that offers competing services. The panel agrees with Complainant.
The key words in Policy paragraph 4(c)(i) are “bona-fide offering”, as distinguished from a mere offering. A bona-fide offering implies use by an honest adopter of the mark. See FINAXA Société Anonyme v. Vitalie Popa (WIPO D2004-0873 Dec 19, 2004). As stated in M/s Nalli Cinnasami Chetty v. Nalli’s Silks Sari Centre (WIPO D2009-0664, July 25, 2009), the expression “bona fide” in paragraph 4(c)(i) is sufficient to prevent a Respondent who knowingly adopted a well-known trademark as a domain name from claiming the benefit of mere use or demonstrable preparations to use the domain name in connection with an offering of goods or services prior to notice of a dispute. See also Paule Ka v. Paula Korenek, (WIPO D2003-0453, July 24, 2003).
There is ample evidence in the record describing Complainant’s business offerings and vast marketing and promotional activities in the Respondent’s home state prior to the Respondent’s registration of the Disputed Domain Name. This includes the spending of over $2,000,000 on radio and television advertisements in the Respondent’s home state of Georgia. See Compl. at p.7, and Exs 12-13. In addition, Complainant has submitted significant evidence of unsolicited coverage in national and local media in Georgia prior to the registration of the Disputed Domain Name. The Panel agrees with the Complainant’s assertion that “No Georgia-based realtor or entity engaged in [the type of services Respondent offered through the Disputed Domain Name] could have avoided learning of Complainant and its OFFERPAD Mark before registration of the Disputed Domain Name…” Compl. at p. 7.
Given the above, and without any evidence in the Response to the contrary, the Panel does not believe that Respondent was an honest adopter of the Disputed Domain Name and finds that the Respondent’s registration of the Disputed Domain Name was to divert Internet users and offer competing services. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA2008001907704 (FORUM September 4, 2020) (“It is most improbable that the registrant of the disputed domain name was unaware of Complainant, its App, mark and reputation when the disputed domain name was chosen and registered. The subsequent use of the disputed domain name would indicate that the intention of the registrant was to take predatory advantage of Complainant’s reputation and goodwill and reputation in the SNAP and SNAPCHAT marks.”)
It is well established that the use of a disputed domain name to divert Internet users and offer competing services does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Here, Complainant provides screenshots of the resolving webpage of the disputed domain showing Respondent offers similar services to consumers that directly compete with Complainant’s business. See Compl. Ex. 15.
b) Respondent is not commonly known by the domain name
When a respondent does not submit evidence to support its identity, the WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Buff Exteriors, LLC v. gregg buffington, FA 1691787 (Forum Oct. 17, 2016) (holding that, when a respondent fails to submit additional evidence, the relevant WHOIS record may determine the name by which respondent is commonly known); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information currently lists “Phillip Haynes” as the registrant and Respondent has provided no further information to suggest it is commonly known by the <offerpaddepot.com> domain name. It is also worth noting that according to the report by Domain Tools provided by Complainant, that the WHOIS information went through a number of changes prior to its listing of “Phillip Haynes.” As discussed below, the original Registrant name used in the current registration was “A sinners prayer.”
In addition, Complainant asserts that a search of the Georgia Corporation Division business records revealed the business entity “Home Offer Depot llc” registered with the Georgia Corporations Division on the same day as the registration of the Disputed Domain Name. That record lists the same post office box as Respondent. For this element of the analysis it is important to note that the Respondent’s business entity does not contain the mark OFFERPAD or the Disputed Domain Name. See Compl. Ex. 14.
c) Respondent is not making a legitimate noncommercial use of the domain name
As established above, Respondent is clearly using the Disputed Domain Name in furtherance of a commercial enterprise that offers the same services as those offered by the Complainant. See Compl. Ex. 15. In addition, the Panel also agrees with Complainant that OFFERPAD qualifies as an arbitrary, or at the very least, a suggestive trademark. These marks, unlike those that are merely descriptive or generic, are generally accorded strong protection against infringement. See Merrell Pharmaceuticals Inc. and Aventis Pharma SA. V. Lana Carter, D2004-1041 (WIPO January 25, 2005) (citing 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, chapter 11 (4th 2004). “A corollary is that domain names incorporating such marks belonging to others may be evidence of a deliberate attempt to misappropriate the mark and accompanying goodwill.” Merrell Pharmaceruticals. Therefore, one can reasonably come to the conclusion that the use of OFFERPAD by the Respondent was intended to take advantage of the Complainant’s goodwill and use the extensive marketing and promotion by Complainant of its services to divert users to the Respondent’s website which offers competing services.
For all of the reasons above, the Panel finds that the Respondent does not have rights or legitimate interest in the Disputed Domain Name.
In addition to establishing that the Respondent has no rights or legitimate interests in respect of the domain name, the Complainant must establish Respondent registered and used the domain name in bad faith.
Respondent Registered the Domain Name to Compete With Complainant
Complainant argues that Respondent registered and uses the <offerpaddepot.com> domain name in bad faith because Respondent attempts to attract Internet users to its competing website for commercial gain. Per Policy ¶ 4(b)(iv), the use of a disputed domain name to offer competing goods or services can be evidence of a bad faith attempt to attract users for commercial gain. See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion.
The Panel agrees with Complainant here and finds that Respondent is attempting to commercially benefit from Complainant’s mark that predate any alleged rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Screenshots provided by Complainant of the resolving webpages of the disputed domain clearly show that Respondent does in fact offer competing real estate services. See Compl. Ex. 15.
Furthermore, as stated above, given the vast amount of marketing and promotional activities by Complainant in the Respondent’s home state prior to the registration and use of the disputed domain name, the Panel does not believe that Respondent could have registered the domain name without knowledge of the Complainant’s use of the OFFERPAD mark. The term “offerpad” is not a commonly used term and cannot be found in the dictionary. It is a strong trademark when used in connection with real estate services, and therefore, it is hard to believe that the Respondent was an honest adopter of the Disputed Domain Name.
Respondent Provides False / Misleading WHOIS Information
In addition to the above, evidence provided by Complainant shows that the Respondent registered the disputed domain name listing the owner as “A sinners prayer” in the Registrant Organization field. See Compl. Ex. 16. Complainant alleges that they were unable to identify any entity called “A sinners prayer” registered in the state of Georgia. Complainant further alleges that the Respondent shortly thereafter changed the WHOIS information to reflect the use of a privacy service provided by the Registrar.
As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, Section 3.6, there ”are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith.” The Panel finds that under these set of facts and circumstances, the provision of false WHOIS information initially to register the domain name combined with the later use of a privacy service is a further indicia of bad faith registration and use. See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”).
Respondent’s Demand For Compensation
Finally, evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. This is because many cybersquatters often wait until a trademark owner files a complaint before asking for payment and because panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, Section 3.10. See also CBS Broadcasting, Inc. v. Gaddoor Saidi, D2000-0243 (WIPO June 2, 2000); Lockheed Martin Corporation v. International Fund Processing a/k/a Mark Duff, FA0508000531611 (Forum September 26, 2005).
In this case, upon receiving the Complaint, Respondent on August 24, 2020 e-mailed the Forum stating “They want the domain then they will have to pay me for it. . . . PAY ME 400K FOR THE DOMAIN THEN.” Respondent followed up on its August 24th demand for compensation in its Response filed on September 13, 2020 stating, “In response to offerpads claim if they would like to compensation me for my time and the violation of my rights they are welcomed to purchase the site from me for a minimum price of ninety nine thousand u.s. Dollars.”
The Panel determines that these demands for compensation do not amount to mere settlement discussions, but rather represent a bad faith effort to extort by the Respondent.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <offerpaddepot.com> domain name be TRANSFERRED from Respondent to Complainant
Jeffrey J. Neuman, Panelist
Dated: September 30, 2020
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