Showhomes Management, LLC v. Jan Miller
Claim Number: FA2208002008460
Complainant is Showhomes Management, LLC (“Complainant”), represented by Sheldon H. Klein of LATHROP GPM LLP, District of Columbia, USA. Respondent is Jan Miller (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <showhomesstagingrealtor.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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2022; the Forum received payment on August 15, 2022.
On August 16, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <showhomesstagingrealtor.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 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2022 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@showhomesstagingrealtor.com. Also on August 17, 2022, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 made the following contentions.
Complainant provides a platform to connect agents and homeowners looking to sell residential property. Complainant asserts rights in the SHOWHOMES mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,425,105, registered on May 13, 2008). See Compl. Annex B. Respondent’s <showhomesstagingrealtor.com> domain name is identical or confusingly similar to Complainant’s SHOWHOMES mark as it incorporates the mark in its entirety, only adding the descriptive terms “staging” and “realtor”, along with the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the <showhomesstagingrealtor.com> domain name. Complainant has not authorized or licensed Respondent to use the SHOWHOMES mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent attempts to pass off as associated with Complainant.
Respondent registered and uses the <showhomesstagingrealtor.com> domain name in bad faith. Respondent disrupts Complainant’s business by using a confusingly similar domain name and website. Additionally, Respondent had actual and constructive notice of Complainant’s rights in the SHOWHOMES mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides a platform to connect agents and homeowners looking to sell residential property.
2. Complainant has established its rights in the SHOWHOMES mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,425,105, registered on May 13, 2008).
3. Respondent registered the <showhomesstagingrealtor.com> domain name on May 10, 2019.
4. Respondent has caused the disputed domain name to be used to pass itself off as being associated with 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SHOWHOMES mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,425,105, registered on May 13, 2008). See Compl. Annex B. When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Since Complainant provides evidence of the registration of the SHOWHOMES mark with the USPTO, the Panel finds Complainant has sufficiently established rights in the SHOWHOMES mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SHOWHOMES mark. Complainant argues Respondent’s <showhomesstagingrealtor.com> domain name is identical or confusingly similar to Complainant’s SHOWHOMES mark, as it incorporates the mark in its entirety, only adding the descriptive terms “staging” and “realtor”, as well as the “.com” gTLD. The mere addition of a generic term and gTLD is not enough to differentiate a disputed domain name from a mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel therefore finds the <showhomesstagingrealtor.com> domain name is confusingly similar to Complainant’s SHOWHOMES mark per ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SHOWHOMES mark, adding the generic words “staging” and “realtor” and pretending that the domain name was an official domain name of Complainant, which is false;
(b) Respondent registered the <showhomesstagingrealtor.com> domain name on May 10, 2019;
(c) Respondent has caused the disputed domain name to be used to pass itself off as being associated with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <showhomesstagingrealtor.com> domain name because Respondent is not authorized to use the SHOWHOMES mark, nor is Respondent commonly known by the disputed domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as “Jan Miller” and there is no evidence to suggest Complainant authorized Respondent to use the SHOWHOMES mark. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Although Complainant does not specifically argue this, the Panel finds Respondent does not use the <showhomesstagingrealtor.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent attempts to confuse users about the association between Complainant and Respondent. Using a confusingly similar domain name to host a website that mimics a complainant and offers similar products is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). In this case, the Panel notes screenshots of both Complainant and Respondent’s websites. See Compl. Exs. D and E. The Panel therefore finds Respondent is not using the disputed domain name in compliance with Policy ¶¶ 4(c)(i) and (iii).
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 name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant first contends Respondent registered and uses the <showhomesstagingrealtor.com> domain name in bad faith as Respondent disrupts Complainant’s business, passing itself off as Complainant and offering similar products. Under Policy ¶ 4(b)(iii), using a domain name to offer competing goods and services and create confusion about the association between complainant and respondent indicates bad faith. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Here, the Panel notes screenshots of the resolving website, showing similar services as Complainant, appearing as if associated with Complainant. See Compl. Exs. D and E. Therefore, the Panel finds Respondent is using the domain name in bad faith.
Secondly, Complainant submits Respondent registered the domain name in bad faith as Respondent had actual and constructive notice of Complainant’s rights in the SHOWHOMES mark, evidenced by the fame and notoriety of the mark, as well as Respondent’s use of the mark. Although previous panels have not recognized constructive notice as sufficient for bad faith, actual notice may be determined by looking at the respondent’s use of the mark, along with the mark’s notoriety. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). In this case, Complainant provides evidence of the SHOWHOMES mark’s notoriety, as well as Respondent’s use of the mark to offer similar services. See Compl. Exs. B-D; see also Compl. Ex. E. As the Panel agrees Respondent had actual notice of Complainant’s rights in the mark, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the second of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <showhomesstagingrealtor.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: September 8, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page