CareFree Homes II, L.P. v. Worldwide Media, Inc. / Domain Administrator
Claim Number: FA1010001351494
Complainant is CareFree Homes II, L.P. (“Complainant”), represented by R. Wayne Pritchard, Texas, USA. Respondent is Worldwide Media, Inc. / Domain Administrator (“Respondent”), represented by Howard M Neu of Law Office of Howard M. Neu, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carefreehomes.com>, registered with HOMESTEAD LIMITED d/b/a NAMEVAULT.COM.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Sir Ian Barker, Ms. Anne Wallace QC and Hon. Karl V. Fink (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2010; the National Arbitration Forum received payment on October 25, 2010.
On October 11, 2010, HOMESTEAD LIMITED d/b/a NAMEVAULT.COM confirmed by e-mail to the National Arbitration Forum that the <carefreehomes.com> domain name is registered with HOMESTEAD LIMITED d/b/a NAMEVAULT.COM and that Respondent is the current registrant of the name. HOMESTEAD LIMITED d/b/a NAMEVAULT.COM has verified that Respondent is bound by the HOMESTEAD LIMITED d/b/a NAMEVAULT.COM 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 November 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2010 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@carefreehomes.com. Also on November 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 November 23, 2010.
On November 29, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker (Chair), Ms. Anne Wallace QC and Hon. Karl V. Fink (Ret.) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is a Texas corporation originally called Carefree Homes Inc. incorporated on January 8, 1991 which now operates under the name of Carefree Homes II, LP.
The Complainant has operated for some 10 years on the Internet under a variety of domain names which all included the name CareFree Homes. The Complainant has been recognised as the top builder in several national publications and has received a number of awards. It has advertised on a local cable company which reaches all of west Texas and southern New Mexico.
The Complainant does not own any registered trademarks but asserts a common law trademark in the name CAREFREE HOMES.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s website contains a photograph of a south-western style home which is the same style of home as the Complainant has been building for 20 years. The Respondent’s website has a link which says that “the domain name carefree homes.com is for sale”.
The Respondent’s website exists for the purpose of referring visitors to other websites to hyperlinks which is a well known revenue-generating business model known as “click through”. The Respondent displays the Complainant’s mark in the disputed domain name without the Complainant’s permission.
When the Respondent obtained registration of the disputed domain name, the Complainant had been using the trading name for 10 years. It is incredulous for the Respondent, a well known dealer in domain names, to suggest it did not know of the Complainant or its rights in the mark. By using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain links to other websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Accordingly, the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent registered the disputed domain name on November 20, 2000. The sole owner of the Respondent – a Mr. Michael Berkens – had no knowledge of the Complainant’s common law mark and has never been to El Paso, Texas where the Complainant is domiciled. The only registered trademark in the United States which used the words Carefree Homes (“CAREFREE PATIO AND TWIN HOMES”) was not registered by the Complainant and was abandoned in February 2008.
The Respondent has continuously parked the disputed domain name with a reputable aggregator and has consistently used it to refer Internet users to websites about home decorating décor and design. The Respondent’s website has no mention of the Complainant’s business in El Paso, Texas but has links to various other websites catering for home decorating. There are millions of domains parked with aggregators and monetizors throughout the world, some of which are public companies the shares of which are traded on stock markets.
The Complainant’s website reflects no trademark or usage. There are a number of other websites which legitimately use the term CAREFREE HOMES, some of which are for businesses established longer than the Complainant’s. There are websites for “Carefree Homes” in Massachusett s, Utah and Kentucky.
The Complainant cannot establish that the disputed domain name was registered or is being used in bad faith. The term “Carefree Homes” is a common term used to reflect its common meaning and the Respondent was free to register a domain reflecting those common terms.
The Complainant must show that the words “carefree homes” have acquired a secondary meaning associated solely with the Complainant’s product. A case cited by the Complainant, Traditional Medicinals, Inc. v. Worldwide Media, Inc., FA 1247728 (Nat. Arb. Forum April 7, 2009), differs from the present in that the respondent sued the complainant in that case after the decision under the Policy had been issued: the parties then entered a consent judgment. The court specifically found that the UDRP decision had been negated and that the present Respondent had registered the domain name in issue in good faith and that the registration had nothing to do with the then complainant’s trademarks.
In many decided cases both NAF and WIPO Panels have declared that the use of a domain name through a “pay-per-click” aggregator does not necessarily create a likelihood of confusion with the Complainant’s mark. Domain names descriptively used solely in connection with PPC advertising, keyed to a descriptive meaning of a domain name, can constitute a legitimate interest for the purpose of the Policy.
The words “carefree” and “homes” are generic and direct users to websites that feature homes that require little care.
There is no evidence that the Respondent has used the Complainant’s alleged common law trademark to confuse users or profit from words being used in a generic sense which have been so used for years.
The Respondent seeks a declaration of reverse domain name hijacking against the Complainant.
FINDINGS
The Complainant has not proved that it has a mark in which it has rights.
DISCUSSION
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.
Although the Complainant does not own a registered trademark, it could still rely on a common law trademark to prove that it has rights in a mark allegedly being infringed by the disputed domain name.
The evidence offered by the Complainant falls far short of the fairly high standard for establishing a common law mark. The fact that it had a presence on the Internet over the past 10 years under various domain names which include the name CAREFREE HOMES is not enough. The submitted print publications and flyers of advertisements used to promote its business, the fact that it is the recipient of building awards and that it has advertised through cable TV do not provide sufficient evidence of a common law mark.
It was said in Weatherford Int’l, Inc. v Wells, FA153626 (Nat. Arb. Forum May 19, 2003): “simply operating under a business name does not per se constitute secondary source identification sufficient to warrant a finding of common law rights in the mark”.
Moreover, the Overview of WIPO Panel Views on Selected UDRP questions at paragraph 1.7 puts the test thus:
“The complaint must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes links and amount of sales under the mark and the nature of extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may exist only in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even where the complainant is based in a civil law jurisdiction”
Various Panels under the Policy, both NAF and WIPO, have accepted these criteria.
The fact that the words of the disputed domain name are generic operates against a finding of their having acquired a secondary meaning. The fact that there are similar operations in at least three other states, as identified by the Respondent, all operating under the name “Carefree Homes” further diminishes the Complainant’s case.
In the Panel’s view, the Complainant has not satisfied Paragraph 4(a)(i) of the Policy because it has failed to establish rights in any mark.
Accordingly, the Panel declines to analyse the other two elements of the Policy. See Creative Curb v. Edgetech Int’l Pty. Ltd., FA 116765, (Nat. Arb. Forum September 20, 2002) and Hugo Daniel Bearbaca Beginha v. Whois, FA 836538 (Nat. Arb. Forum December 28, 2006).
However, the Panel observes that even if it had proceeded to consider the other limbs of Paragraph 4(a), the Complainant would have failed on the third limb. There is insufficient evidence to enable the Panel to infer that the disputed domain name was registered 10 years ago by the Complainant in bad faith.
This is another case where a complainant has slept on its rights. It would be extremely difficult to infer, after 10 years of inaction by the Complainant, that a respondent registering a domain name 10 years previously consisting of two generic words would know of their use by a company then operating in a small way in another state some distance away.
The Complainant fails to appreciate the need to show that the reputation of the mark was such in the year 2000 that the Respondent should have known about its alleged common law mark at the date of registration of the disputed domain name.
The equitable doctrine of laches need play no part in this Panel’s assessment. Nevertheless, the longer a complainant defers the seeking of relief under the Policy, the more difficult it is to prove bad faith registration.
In New York Times Co. v. Name Admin., Inc. (BVI) FA 1349045 (Nat. Arb. Forum November 17, 2010), a three-person panel held that laches could provide a defense.
The Panel does not need to consider whether it agrees with that decision since it is quite clear that the Complainant has not established any common law mark.
The Respondent claims that the Complainant has acted in bad faith by initiating this dispute and that it should have known that it was unable to prove that the Respondent lacked legitimate rights or interests. In Labrada Body Bldg. Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) the complainant was held guilty of reverse domain name hijacking where it used “the Policy as a tool to simple wrest the disputed domain name, in spite of its knowledge that the complainant was not entitled to that name and hence had no colourable claim under the Policy”.
As against that, not every complainant who fails to satisfy the burden under the Policy should receive a finding of reverse domain name hijacking. There should normally be some evidence or inference of bad faith on the complainant’s part.
In the present circumstances, despite the lack of a trademark, the inordinate delay by the Complainant and the fact that the disputed domain name consists of generic terms, the Panel is not prepared to accept that the Complainant acted in bad faith. It declines to make a finding of reverse domain name hijacking.
DECISION
The Complainant having failed to etablish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <carefreehomes.com> domain name REMAIN WITH Respondent.
Respondent’s application for a declaration of reverse domain name hijacking against the Complainant is declined.
Hon. Sir Ian Barker
Presiding Panelist
Ms Anne Wallace QC Hon. Karl V. Fink (Ret.)
Panelist Panelist
Dated: December 7, 2010
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