national arbitration forum

 

DECISION

 

David B. Hovannisian d/b/a J D Home Rentals v. Manila Industries, Inc.

Claim Number: FA1304001492893

 

PARTIES

Complainant is David B. Hovannisian d/b/a J D Home Rentals (“Complainant”), represented by Thomas V. Miles, California, USA.  Respondent is Manila Industries, Inc. (“Respondent”), represented by Ravi Puri, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jdhomerentals.com>, registered with GODADDY.COM, LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Anne M. Wallace, Q.C. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2013; the National Arbitration Forum received payment on April 3, 2013.

 

On April 4, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <jdhomerentals.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 April 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2013 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@jdhomerentals.com.  Also on April 10, 2013, 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 29, 2013.

 

Complainant submitted an Additional Submission, which was determined to be complete on May 3, 2013.

 

Respondent submitted an Additional Submission, which was determined to be complete on May 8, 2013.

 

Respondent has suggested the Panel should not consider Complainant’s additional submission. However, the Panel finds Complainant’s Additional Submission to be responsive to specific points raised by Respondent in the Response. Therefore, the Panel will consider the Additional Submissions of both Complainant and Respondent in this decision.

 

On May 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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

Complainant submits:

• Complainant has used its business name, JD HOME RENTALS, since 1992. Complainant manages residential properties owned by him or his family partnerships. The name JD HOME RENTALS derives from the first initials of the business’s partners, John Hovannisian and David Hovannisian.
• Complainant owns over 3,500 residential units in central California. Complainant owns common law rights in the JD HOME RENTALS mark since 1992. Complainant also owns trademark rights to the JD HOME RENTALS mark as a result of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,221,415 filed February 16, 2012, registered October 9, 2012). 
• Because Respondent registered the <jdhomerentals.com> domain name, Complainant was unable to reflect its mark in a corresponding domain name, and instead registered a variation of the JD HOME RENTALS mark, at the <jdhomerental.com> domain name.
• Respondent registered the <jdhomerentals.com> domain name, which is identical to Complainant’s JD HOME RENTALS mark. Complainant filed a Fictitious Business Statement (business name) renewal in Fresno County, California, showing a commencement of business date of December 1, 2002. Respondent acquired the domain name during the time Complainant was operating using the business name.
• Respondent has no rights or legitimate interests in the domain name, and has failed to use the domain name in connection with a bona fide offering of goods or services. Respondent, Manila Industries, Inc., is not commonly known by the domain name.
• The <jdhomerentals.com> domain name resolves to a website that consists of an advertising portal that identifies available properties in the Fresno/San Joaquin Valley area, and provides hyperlinks to Complainant’s competitors.
• Respondent registered and is using the <jdhomerentals.com> domain name in bad faith, as shown by its intention to sell the domain name to Complainant or one of Complainant’s competitors for a large monetary sum that exceeds the out-of-pocket costs associated with registering the disputed domain name. Respondent’s continued possession of the <jdhomerentals.com> domain name prevents Complainant from using its JD HOME SERVICES mark in a domain name.

 

B. Respondent

Respondent submits:

• Respondent registered the <jdhomerentals.com> domain name on January 23, 2005, seven years before Complainant filed its trademark registration for the JD HOME RENTALS mark with the USPTO. Complainant did not register its <jdhomerental.com> domain name for several years after Respondent registered the <jdhomerentals.com> domain name. Respondent could not have known of the JD HOME RENTALS mark without searching the “dba” records of the county in which Complainant is located, or the Better Business Bureau records in central California.
• Respondent acquires, develops, and sells generic domain names, and parks the domain names with a parking service. The parked domain names contain sponsored links and search results ads based on what the Internet user types into the address bar of the Internet browser. This manner of webpage parking is done without Respondent’s specific knowledge as to the content displayed, and is a legitimate business model.
• Respondent has rights or legitimate interests in the <jdhomerentals.com> domain name, as it intends to develop the domain name in the future, and it currently uses the domain name to provide sponsored links, which is permitted under the Policy. The disputed domain name displays hyperlinks that are relevant to the generic words contained in the domain name. Respondent registered the domain name without bad faith, and Complainant does not provide evidence to the contrary.
• Complainant fails to show that Respondent had actual knowledge of Complainant’s business when it registered the <jdhomerentals.com> domain name, and Respondent could not have had constructive knowledge, since no trademark, pending or registered, existed at the time the domain name was registered in 2005. The displayed hyperlinks do not offer products or services that compete with Complainant’s marks, as the home rental websites to which they lead do not own and manage the same properties as Complainant. Respondent is not one of Complainant’s competitors and has no intention of attracting Internet users to its website for commercial gain; further there is no likelihood of confusion between Complainant’s mark and the <jdhomerentals.com> domain name.
• Respondent denies that it has a history of cybersquatting.
• Complainant does not provide evidence of common law rights, such as a large volume of sales, large expenditure on advertising, or large volume of public recognition prior to the time of its trademark registration in 2012 or the time of Respondent’s registration of the disputed domain name in 2005. Complainant’s JD HOME RENTALS mark is weak, as the phrase “Home Rentals” is generic, and Complainant cannot claim exclusive rights to that phrase. Complainant brought the current action over eight years after Respondent registered the <jdhomerentals.com> domain name, and before Complainant filed its trademark application with the USPTO.
• Complainant has no evidence that demonstrates Respondent registered the <jdhomerentals.com> domain name primarily for the purpose of selling it to Complainant or his competitors for consideration in excess of the out of pocket costs. Complainant first contacted Respondent with an offer to buy the domain name, and failed to complete the transaction.

 

C. Additional Submissions

In the Additional Submission, Complainant Submits:

• Respondent is a “blatant and habitual cybersquatter,” with more than a decade of adverse decisions by the UDRP. The <jdhomerentals.com> domain name is identical to Complainant’s mark.
• Respondent does not have legitimate rights in the mark, as a result of its use of hyperlinks that redirect users to sponsored websites resulting in compensation to Respondent. Respondent itself did not register the domain name; rather, the WHOIS information shows an unrelated entity registered the domain name in 2005, and Respondent acquired the domain after 2009.
• Respondent’s claim that software design and implementation is to blame for the domain name’s registration is improper and does not release Respondent from a finding of bad faith. Further, Respondent’s attempt to negotiate “very large sums of money” for a sale of the domain name also demonstrates bad faith.
• Complainant’s common law trademark rights in the JD HOME RENTALS mark date back to 1992, and while the mark may contain descriptive terms, the “JD” portion of the mark is distinctive.

 

In the Additional Submission, Respondent submits:

• Complainant’s Additional Submission should be disregarded, and factored into a finding of Reverse Domain Name Hijacking. Complainant’s Additional Submission does not include any newly discovered evidence that was not reasonably available before it filed its Complaint, and attempts to introduce evidence and arguments that should have been addressed in its Complaint. Complainant’s Annex A should be disregarded, as it cites a Google search for Complainant’s business as revealing notoriety dating back more than fifteen years, but fails to include documentary evidence related to the search.
• Complainant’s Annex A is merely hearsay, written by a declarant who was “clearly paid to say whatever Complainant thought would help its case.”
• Complainant’s claim to have a secondary meaning in the JD HOME RENTALS mark fails, as its only evidence is a “self-serving declaration” by the owner of the business. Complainant does not support its claim to common law rights with any significant evidence.
• Respondent has continuously held the registration to the <jdhomerentals.com> domain name since January 23, 2005, contrary to Complainant’s claim. The WHOIS information shows a creation date of January 23, 2005, which was seven years before Complainant filed its trademark application. The name of the initial registrant, “Texas International Property Associates,” was a privacy service associated with the registrar, but Respondent held the registration from the time of the domain name’s creation.
• Respondent is not a habitual cybersquatter, as Complainant contends. Complainant cites an eight year old case to support its argument; however, Respondent holds a large domain name portfolio, but only a “handful” of adverse UDRP decisions against Respondent exist. Respondent reiterates that each of the adverse UDRP decisions was based on circumstances unique to each case and urges the Panel to remain impartial and not consider the inflammatory facts Complainant raises. Complainant’s claim that Respondent has committed prior trademark violations is false, and Respondent “vehemently denies” any such violations. Respondent’s legitimate interest in the <jdhomerentals.com> domain name is shown by the fact that the domain name is built from generic dictionary keywords.
• Respondent did not register the domain name in bad faith, and Complainant fails to submit evidence dated earlier than the domain name’s registration to support its claim. Respondent had no knowledge, actual or constructive, that Complainant’s JD HOME RENTALS mark existed at the time of registration. Complainant’s allegation that Respondent negotiated large sums of money to sell the domain name is an attempt to mislead the Panel, because Complainant first extended the offer to acquire the domain name for $15,000, one month before it filed for the federal trademark application.
  
  

FINDINGS

·        Complainant has common law and registered trade mark rights in the JD HOME RENTALS mark.

·        The disputed domain name, <jdhomerentals.com>, is, but for the removal of the spaces and the addition of the gTLD, identical to the Complainant’s mark.

·        Respondent has no rights or legitimate interest in the disputed domain name.

·        Respondent registered and is using the disputed domain name in bad faith.

 

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.

 

Identical and/or Confusingly Similar

Complainant asserts that it has trademark rights in the JD HOME RENTALS mark pursuant to its USPTO trademark registration (Reg. No. 4,221,415 filed February 16, 2012, registered October 9, 2012). Previous panels have held that a trademark registration with the USPTO secures a complainant’s rights in its claimed mark under the Policy, dating back to the date on which Complainant filed its trademark application. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Complainant has successfully established its rights in the JD HOME RENTALS mark under Policy ¶ 4(a)(i) dating back to February 16, 2012.

 

Complainant claims in its Complaint and its Additional Submission that it has established common law rights in its JD HOME RENTALS mark, as its business under the JD HOME RENTALS name has existed since 1992. Complainant alleges that the Central California Better Business Bureau opened a file for Complainant’s business on February 9, 1993, which establishes the mark’s use by the principal owner since 1992 for the purpose of a home rental business. Complainant alleges in its Additional Submission that it has established a secondary meaning in its mark as a result of “extensive use in commerce and notoriety,” and the fact that its business continues to be a top property management company in the state of California since 1992, with extensive brand recognition. The panel in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), found that the complainant’s common law rights in its mark were established by providing sufficient evidence of continuous use of the mark since 1989 in connection with a car dealership. Complainant’s continuous use of the JD HOME RENTALS mark since 1992 in connection with a home rental business establishes a secondary meaning in the mark sufficient to demonstrate common law rights pursuant to Policy ¶ 4(a)(i). While the words HOME RENTALS may by themselves be generic words, the addition of the term JD make the name distinctive.

 

Complainant argues that the <jdhomerentals.com> domain name is identical to the JD HOME RENTALS mark. The disputed domain name includes Complainant’s mark in its entirety, only omitting the spaces and adding a gTLD. Otherwise, the name is identical. As such, the <jdhomerentals.com> domain name is identical to the JD HOME RENTALS mark for the purposes of Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).

 

While Respondent argues that its registration of the <jdhomerentals.com> domain name predates Complainant’s alleged rights in the mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

 

While Respondent contends that the <jdhomerentals.com> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant alleges that Respondent is not commonly known by the <jdhomerentals.com> domain name. The Panel notes that the WHOIS information associated with the domain name identifies “Manila Industries, Inc.” as the registrant. In Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), the panel concluded that the respondent registered the disputed domain name under the registrant “Ilyoup Paik a/k/a David Sanders,” which did not demonstrate that the respondent was commonly known by the disputed domain name. The WHOIS information in this case also fails to support a finding that Respondent is commonly known by the <jdhomerentals.com> domain name, which demonstrates that Respondent has no rights or legitimate interests in the domain as envisioned by Policy ¶ 4(c)(ii).

 

Complainant makes the contention in its Complaint and Additional Submission that Respondent has not used the <jdhomerentals.com> domain name in connection with a bona fide offering of goods or services, as the resolving website leads to a webpage that links Internet users to competitors who rent homes in the Fresno and San Joaquin Valley area. Complainant claims that Respondent uses the domain name as an advertising portal that “specifically identifies the availability of properties” in the same area and displays links to Complainant’s competitors. Respondent’s use of the resolving website to establish an advertising portal that contains links to Complainant’s competitors does not demonstrate 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

Complainant has met the initial burden to show lack of rights or legitimate interests. The burden shifts to Respondent.

 

Respondent says it uses the disputed domain name to sponsor links to websites renting homes which directly relate to the key words “home rentals” incorporated into the domain name. The Panel notes the domain also includes the distinctive term JD. The Panel has already found the operation of a pay-per-click website at a confusingly similar domain name does not establish a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

Respondent contents it is in the business of acquiring, developing and selling generic domain names. The words “home” and “rentals” may be generic on their own or even when combined into the phrase “home rentals”, but when JD HOME RENTALS is used, the phrase is no longer generic. Respondent contends that it intended to build out of the disputed domain name a focus on home rentals within the city of John Day, Oregon as well as other cities with the initials “JD”. There is no evidence whatsoever before the Panel to suggest this was Respondent’s intention. While re-selling generic domain names can be a bona fide offering of goods or services, this case does not involve a generic domain name. Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues in its Complaint and Additional Submission that Respondent registered the <jdhomerentals.com> domain name for the purpose of selling it to Complainant for a sum in excess of the out of pocket costs related to registering the domain name. Complainant provides evidence of a screenshot from the resolving website that displays a query box advertising the opportunity to purchase the domain name. Additionally, Complainant contends that Respondent rejected an offer from Complainant to purchase the domain name for a price no higher than $1,000. The panel in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), stated that the respondent’s use of the domain name was in bad faith, as respondent offered to sell the domain name for valuable consideration in excess of out-of-pocket costs.

 

The material before me, some of which was submitted by Respondent, shows Complainant and Respondend had several communications, both directly and through GoDaddy, about the possible transfer of the disputed domain name to Complainant. While at one point it appeared Complainant was prepared to pay $15,000 for the name, this turned out to be an error in communication which was clarified by GoDaddy. In the material, there are communications from Respondent at different times suggesting Respondent would sell the disputed domain name for various amounts including $20,000, $15,000 and $8,500. Respondent has not denied this and indeed much of this information is found in documents submitted by Respondent.

 

Respondent’s offering the domain name for sale and requesting a sum in excess of the domain name’s registration costs, when viewed in light of all the circumstances, shows Respondent registered and uses the <jdhomerentals.com> domain name in bad faith under Policy ¶ 4(b)(i).

 

Complainant contends Respondent prevents Complainant from reflecting his mark in a corresponding domain name, and argues in its Complaint and Additional Submission that there are a number of similar UDRP complaints against Respondent, establishing a pattern of registering domain names containing marks held by other entities. See Everest Nutrition, Inc. v. Manila Indus., Inc., FA1313264 (Nat. Arb. Forum April 20, 2010); see also Niagara Parks Comm’n v. Whoisprotections.cc/Manila Indus., Domain Admin., D2009-1209 (WIPO February 11, 2009).

 

Complainant has identified at least 27 UDRP decisions, having Respondent as the Respondent, involving numerous domain names where Panels have found in favour of Complainants and ordered transfer of disputed domain names. These cases show Respondent has engaged in a pattern of registering domain names incorporating marks belonging to other entities sufficient to show Respondent is engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings are sufficient evidence of a pattern of bad faith registrations).

 

Reverse Domain Name Hijacking

Respondent alleges Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends Complainant is attempting to deprive Respondent, the rightful registered holder of the <jdhomerentals.com> domain name, of its rights to use the disputed domain name.

 

Complainant has satisfied all three elements for a claim under the UDRP. Complainant is not engaged in reverse domain name hijacking.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

 

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <jdhomerentals.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Anne M. Wallace, Q.C., Panelist

Dated:  May 19, 2013